[Indexed As: Healy v. Kuhlen]
[Indexed As: DVDNEWS.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO . D2000-0698
Commenced: August 18, 2000
Judgment: August 24, 2000
Presiding Panelist: Alan L. Limbury
Domain Name - Domain Name Dispute Resolution Policy - U.S. Trademark
- Identical - Confusingly Similar - Bad Faith Use - Demonstrable Preparations
for Use of Domain Name - Perfunctory Preparations Sufficient - Web site
Not Developed -Valuable Consideration in Excess of Out of Pocket Costs.
Complainant owned U.S. Trademark DVD NEWS and registered the domain
name DVDNEWS.NET. Complainant published a newsletter with that name.
Respondent registered disputed domain name in the name of his employer
one year before Complainant registered the Trademark. Two years after
the registration of the trademark, Respondent left his job and the employer
transferred the disputed name to him. Respondent offered the disputed
name, and many other DVD related names, for sale for valuable consideration
in excess of out of pocket expenses. Respondent made preparations
for use of the domain name before the first commercial use of the mark
and before notice of the claim.
Held, Name Not Transferred to the Complainant.
The domain name is virtually identical to Complainants Trade Mark.
Perfunctory preparations for use of the domain name are sufficient to establish
bona fides use of the domain name. The fact that Respondents registration
of the domain name prevents the complainant from using the domain name
corresponding to her registered trademark for her Internet services cannot
not amount to bad faith under the Policy unless Respondent is shown to
have engaged in a pattern of such conduct. There is no such evidence
here. Respondents registration of the domain name effectively predates
Complainants registration and use of the trademark DVD NEWS. No
question of constructive notice of a registered mark under 17 U.S.C. §
1072 arises.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Cases referred to
---
Panel Decisions referred to
Ellenbogen v. Pearson, Case No. D00-0001 (WIPO February 17, 2000).
J. Crew Intl, Inc. v. crew.com, Case No. D2000-0054 (WIPO April 20,
2000).
Lumena s-ka so.o. v. Express Ventures Ltd., FA00030000094375 (Nat.
Arb. Forum).
Royal Bank of Canada v. Xross, AF-0133 (eResolution).
Shirmax Retail Ltd. v. CES Marketing Group, Inc., AF-0104 (eResolution).
Limbury, Panelist: -
This is an administrative proceeding pursuant to the Uniform Domain
Name Dispute Resolution Policy ("the Policy") of the Internet Corporation
for Assigned Names and Numbers ("ICANN"), in accordance with the ICANN
Rules for the Policy ("the Rules") and the Supplemental Rules for the Policy
("the Supplemental Rules") of the WIPO Arbitration and Mediation Center
("the Center").
1. The Parties
The complainant is Maureen A. Healy, doing business as Corbell Publishing,
of 4676 Admiralty Way, Marina Del Rey, California, United States of America.
The respondent is Andreas Kuhlen of Rue du Clos 14, Geneva CH-1208, Switzerland.
2. The Domain Name and Registrar
The disputed domain is dvdnews.com and the registrar is Network Solutions
Inc., of Herndon, Virginia, USA.
3. Procedural History
The complaint was received by the Center in hard copy on June 29, 2000,
and acknowledged on July 3, 2000, when registration details were sought
from the registrar. On July 5, 2000, a hard copy of the complaint was received
from the complainant, registration details were confirmed by the registrar
and the Center satisfied itself that the complainant had complied with
all formal requirements, including payment of the prescribed fee.
On July 6, 2000, the Center acknowledged receipt of the email copy
of the complaint, formally notified the respondent by post/courier, fax
and email of the complaint and of the commencement of this administrative
proceeding and sent copies to the complainant, the registrar and ICANN.
The respondent sought and, with the complainants consent, obtained
an extension of time to file the response. The Center extended time initially
until August 6, 2000, (a Sunday) and subsequently until August 7, 2000.
The response was received on August 3, 2000, and acknowledged by the Center
on August 4, 2000.
On August 16, 2000, the complainant lodged a reply and requested the
panel to exercise its discretion to consider it. On August 21, 2000, the
respondent lodged a "Reply to Complainants Reply to Respondents Response"
and asked that, if the panel should consider taking into account the complainants
reply, the panel should also consider the respondents reply to it. The
Center acknowledged both documents noting that such further submissions
are not envisaged by the Uniform Dispute Resolution Procedure and Rules
and do not form part of the official case file. The Center said they would
be sent to the panel and it was in the discretion of the panel whether
to take them into account.
On August 17, 2000, the Center invited Alan L. Limbury to serve as
panelist. On August 18, 2000, Mr. Limbury submitted a Statement of Acceptance
and Declaration of Impartiality and Independence and the Center transmitted
the case file to the panel and notified the parties of the projected decision
date of August 31, 2000.
The language of the proceeding was English.
The panel is satisfied that the complaint was filed in accordance with
the requirements of the Rules and Supplemental Rules; payment was properly
made; the panel agrees with the Centers assessment concerning the complaints
compliance with the formal requirements; the complaint was properly notified
in accordance with paragraph 2(a) of the Rules; the response was filed
within the time that had been properly extended and the administrative
panel was properly constituted.
The panel takes into account the complainants reply because it deals
with matter raised in the response which could not have been addressed
in the complaint. The panel does not take into account the respondents
response to the complainants reply because it either repeats the response
or raises matters which should have been put in the response to the complaint.
4. Factual Background (uncontested facts)
Since March 1997, the complainant has published to the home video industry,
primarily in the United States) a newsletter called DVD NEWS. It has approximately
2,000 readers each week. Over 175,000 copies have been sold. It has an
annual subscription base of over 200 persons and businesses. Initially
available in print, as of March 1999, DVD NEWS also became available online
to subscribers and has over 50 online subscriptions.
The complainant has expended substantial sums in advertising and promoting
its services under the DVD NEWS mark. In addition, she is the owner of
the domain name dvdnews.net and is currently in the process of developing
a website at that location devoted to advertising and promoting DVD NEWS.
The complainant is the owner of the US service mark Registration No.
2,124,483 for DVD NEWS for "newsletters devoted to the home video industry"
on the supplemental register of the United States Patent and Trademark
Office. This mark was registered on December 23, 1997. The certificate
of registration shows the first use in commerce as March 10, 1997. [The
certificate also shows "First use 3-10-0977". In the absence of any evidence
to support this, the panel takes the entry to be a misprint].
The respondent registered the disputed domain name dvdnews.com on December
2, 1996, in the name of his then employer, Quaestus, of Route de Malagnou
38A, Geneva, GE CH-1208. The respondent was the administrative, technical
and billing contact. It appears the respondent was allowed by Quaestus
to use its DNS servers in connection with the domain name.
In like manner the respondent also registered the domain names dvdmarket.com
on November 29, 1996, and dvdindex.com on January 23, 1997.
In March 1997, the respondent created a document entitled DVD Web Sites
Strategy as part of a DVD Web Site Project. This envisaged use of the domain
names mentioned on a list later sent to the complainants attorneys as
participating in a "DVD Web", "where DVD information and DVD news and different
services will be aggregated to form a central community around the evolving
DVD".
Updates at December 23, 1996, March 25, 1997, and July 18, 1998 of
the dvdnews.com homepage show the respondent worked on the idea of using
the site to offer free DVD news for consumers and linking the site to dvdindex.com
and dvdmarket.com. Each version carries the tag "dvdnews.com - by Andreas
Kuhlen - All Rights Reserved" and uses the email address [email protected].
In September 1999, the respondent quit his job with Quaestus in order
to participate in a full-time MBA course offered by the University of the
West of England at Bristol. As a consequence, late in 1999, the respondent
and Quaestus entered into Network Solutions Registrant Name Change Agreement,
(which recited that the respondent had applied to Network Solutions for
registration) as a consequence of which the respondent replaced Quaestus
as the registrant of the disputed domain name. It appears similar arrangements
were made with respect to the other domain names the respondent had registered
in the name of Quaestus.
Also in consequence of quitting his job with Quaestus, the respondent
had to find another domain name server. He chose to use the DNS server
of GreatDomains.com, which describes itself as "The Internets Marketplace
for Domain Names and Websites".
The complainant discovered the respondents registration of the disputed
domain name, which appeared from Network Solutions Whois database to have
been registered by the respondent on February 5, 2000, and became aware
that GreatDomains.com was offering the domain name for sale on its web
site, with a listed price of $26,800.
The complainant, through her attorneys, offered to buy the domain name
for $500.00. On April 3, 2000, the respondent replied:
"Thank you for your interest in dvdnews.com.
However, your client would need to add two more zeros for a transfer.
I have other dvd-related domains that are less expensive, like dvdmarket.com.
If you wish I can send you a list"
That list, which the respondent sent to the complainants attorneys,
showed an "indicative minimum price in US dollars" of $47,800 for dvdnews.com
and that, as of April 17, 2000, it was for sale subject to a pending offer.
The list included dvdindex.com at $4,800 as available for sale and dvdmarket.com
at $26,750 as subject to a pending offer. Other names listed for sale were
dvd4barter.com, dvdagent.com, dvdalert.com, dvdbarter.com and dvdrating.com.
5. Parties Contentions (selected and abbreviated)
A. Complainant
The respondent registered the domain name on February 5, 2000, long
after the complainant had established trademark rights in and registered
the mark DVD NEWS.
Identity or confusing similarity
The domain name dvdnews.com is virtually identical to the complainants
registered mark DVD NEWS. Indeed, as blank spaces cannot be used in a domain
name, there is no other form in which to use the mark DVD NEWS for a corresponding
domain name.
Illegitimacy
The respondent has not used the domain name for any purpose other than
to auction it for sale to the highest bidder. Indeed, he has registered
multiple domain names solely for this purpose -- a practice known as speculation
in domain names. This tribunal has already found that such practice does
not constitute legitimate interest or use in a domain name, and, in fact,
constitutes abusive registration. See e.g., J. Crew Intl, Inc. v. crew.com,
Case No. D2000-0054 (April 20, 2000). The respondent is not otherwise using
the domain name in connection with an active website, nor, upon information
and belief, does he have any demonstrable plan for the bona fide use of
the domain name.
Bad faith
It is also clear that the respondent has registered and is using the
domain name in bad faith. Listing a domain name for sale through a domain
name broker for the purpose of selling it for valuable consideration in
excess of out-of-pocket costs supports a finding of bad faith use. See
e.g., Ellenbogen v. Pearson, Case No. D00-0001 (February 17, 2000). Moreover,
the fact that the respondent has engaged in the practice of speculating
in domain names, as evidenced by his offers to sell various domain names
for sums substantially in excess of the costs associated with registering
such domains, also shows his bad faith registration and use of the domain
name. See e.g., J. Crew Intl, Inc., supra.
In addition, the fact that the respondents registration of the domain
name prevents the complainant from using the domain name corresponding
to her registered trademark for her internet services also supports a finding
of bad faith. See e.g., J. Crew Intl, Inc., supra.
The respondent should also be charged with bad faith since his registration
of the domain name postdates the complainants registration and use of
the trademark DVD NEWS. U.S. trademark law provides that a person is charged
with constructive notice of a registered mark. See 17 U.S.C. § 1072.
B. Respondent
The respondent registered dvdnews.com on December 2, 1996, not on February
5, 2000, as claimed by the complainant.
The respondent also registered dvdmarket.com and dvdindex.com in order
to establish informative and commercial offerings around the DVD. The respondent
registered the three domain names initially under the company name "Quaestus",
at which he was allowed to use the DNS servers and he used the Quaestus
web server to host some pages under these domains at intervals from 1996
to 1999. The respondent anticipated that DVD would have a substantial impact
on the consumer market, but preferred to wait until DVD would hit the mainstream
market to dedicate more effort in the building of the DVD webs.
The respondent chose to take the web pages offline during the time
of his studies and temporarily to use the DNS server of Greatdomains.com,
which is provided at no cost. The primary reason for listing the domains
on Greatdomains.com was for taking advantage of this free DNS parking until
the respondent finished his MBA course and would have the time necessary
to develop his vision of a one-stop destination for DVDs on the Web consisting
of information and services offered through dvdmarket.com, dvdnews.com,
and dvdindex.com.
The respondent refused the complainants offer of March 29, 2000, to
purchase the disputed domain name for $500 with an ironic undertone, stating
that "their client would need to add two more zeros" to that sum for a
transfer. The respondent did not intend to bargain about a price, because
it was not the respondents primary intention to sell dvdnews.com. Instead,
upon request by the complainants attorneys, on April 17, 2000, he sent
a list of 7 other DVD-related domains, which he had registered with the
intent of combining them with the services to be offered at dvdmarket.com,
dvdnews.com, and dvdindex.com.
After studying e-commerce and marketing related issues more deeply
in the course of the MBA programme, the respondent felt that it might be
a better business strategy to concentrate on the three core domains (dvdmarket.com,
dvdnews.com, and dvdindex.com), because this would help to build brand
awareness with future customers. Thus the respondent was disposed to offer
the other DVD-related domains for sale. Procter and Gamble has changed
its branding strategy in a similar way, offering nearly 100 of generic
domain names for sale at Greatdomains.com at the end of June 2000.
Identity or confusing similarity
The respondent acknowledges that the domain dvdnews.com is virtually
identical to the mark the complainant registered. As exemplified by similar
cases (e.g. case number AF-0283, by e-Resolution.ca, on newportnews.com,)
use of a domain name that does not confuse customers of the complainant
when seeing the domain name used in conjunction with the actual web site
does not constitute trademark infringement. This is clearly the case with
dvdnews.com, which the complainant plans to use solely for a newsletter
devoted to the home video industry, whereas the respondents use is closer
to the generic meaning of the domain; providing news about DVDs.
The complainants claim to have exclusive rights to use the term dvdnews
in its domain name is doubtful. The domain dvdnews is merely descriptive
of "news about DVDs". The term dvdnews is generic.
Illegitimacy
It is not true that the respondent has not used the domain name for
a legitimate purpose. After registering the domain on December 2, 1996,
the respondent made several online trials with the domain dvdnews.com.
The respondent had anticipated that DVD would have a substantial impact
on the consumer market, but preferred to wait for a good timing to dedicate
more resources to building the DVD online presence, as outlined in the
respondents DVD Web site strategy. The dvdnews.com site had active DNS
entries on February 13, 1997. The homepage of dvdnews.com in December 1996,
March 1997, and July 1998, demonstrates the respondents bona fide use of
the domain name prior to the complainants registration of its mark. The
respondent has never engaged in the practice of cybersquatting. The total
of eight domain names he had registered are all of generic nature and related
to the DVD theme. The primary reason for their registration was creating
a "web of DVD sites" or a DVD community.
Bad faith
The respondent has not registered and used the domain name in bad faith.
The respondent registered and used the domain name long before (December
2, 1996) the complainant registered her word mark with the United States
Patent and Trademark Office (December 23, 1997)!
It was the complainant who approached the respondent to ask for a sale
of the domain name on March 29, 2000. The primary reason for temporarily
using Greatdomains.com was for keeping active DNS entries for the domains,
a service which is provided free at Greatdomains.com. With the insight
gained during the MBA course, the respondent felt that it might be a better
business strategy to concentrate on the three core domains (dvdmarket.com,
dvdnews.com, and dvdindex.com), because this would help to build brand
awareness with future customers. This is why he was disposed to offer some
of the other DVD-related domains for sale. By featuring these DVD-related
domains on Greatdomains.com the respondent had also hoped that he could
get in touch with other people involved in DVD web projects in order to
explore mutual opportunities for cooperation (portal, linking strategy,
etc.). The primary use of Greatdomains.com was never to sell domain names
for sums substantially in excess of the registration costs. Currently,
the respondent is searching for a new provider to host the web pages for
his DVD domains.
The domain name was not registered in order to prevent the complainant
from reflecting the mark in a corresponding domain name, since the respondent
registered the domain prior to the complainants first commercial use or
registration of its mark.
The respondent is not a competitor of the complainant because the respondents
prior and intended use of the domain is based on business model targeting
the general public interested in DVDs, not solely the home video industry
(the complainants target audience), and even after the complainant launched
her publication DVD NEWS the respondent has never attempted to cause any
confusion with the complainants publications, in fact he was not even
aware of their existence.
The domain name was not registered by the respondent in an intentional
attempt to attract, for commercial gain, Internet users to the respondents
web site or other on-line location, because neither the complainants publication
nor their service mark existed at the time of the registration!
Complainants reply
Contrary to the respondents claims, the respondent did not use the
domain name in connection with any bona fide offering of goods or services
prior to the complainants use or registration of DVD NEWS. Indeed, the
respondents website was "under construction" from December 1996 to March
1997. Accordingly, the respondent was not actually offering any goods or
services at his website during that time. In fact, the respondent does
not appear to have used the domain name in connection with any goods or
services until July 1998 -- long after the complainant had begun using
the DVD NEWS mark (i.e., March 10, 1997). Moreover, it is questionable
whether the respondent ever actually used the domain name in connection
with any bona fide offering of goods or services as he does not provide
any specimens, sales figures or other evidence showing use of the mark
in commerce.
The respondents claim that he was only "parking" the domain name at
the website GREATDOMAIN.COM to take advantage of their free DNS server
and that his demand for $50,000 for the domain name was an "ironic" gesture
"because "it was not [his] primary intention to sell [domain name]" is
also disingenuous. The respondent was auctioning the domain name for sale
at Great Domains.COM for $26,800. Moreover, the respondent sent the complainants
attorneys a list of domain names that he was selling, which included DVDNEWS.COM
as well as other "DVD" domains names. As of April 17, 2000, the respondent
was offering the domain name for sale for nearly $48,000! The other domain
names on the list were being offered by the respondent for between $4,000
to $26,750. It is beyond dispute that these sums are substantially in excess
of the costs incurred by the respondent in registering these domain names.
The complainants registration belies the respondents claims that
DVD NEWS is generic and/or descriptive since generic terms are not registrable.
Moreover, due to substantial advertising, promotion and sales, DVD NEWS
has acquired secondary meaning and has come to be associated in the minds
of a substantial portion of the consuming public with the source of the
DVD NEWS newsletter, i.e., the complainant. Accordingly, any use of the
domain name -- which, as the respondent concedes, is identical to the complainants
mark -- in connection with providing news about DVDs is likely to cause
confusion among the consuming public as to the source of the respondents
goods and/or services.
6. Discussion and Findings
To qualify for cancellation or transfer, a complainant must prove each
element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to
a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect
of the domain name; and
(iii) the disputed domain name has been registered and is being used
in bad faith.
Identity or confusing similarity
The domain name dvdnews.com is virtually identical to the complainants
registered service mark DVD NEWS. This has been held in numerous cases
to be sufficient for the purposes of paragraph 4(a)(i) of the Policy.
Illegitimacy
The complainant has the onus of proof an all issues. Paragraph 4(c)
of the Policy sets out, without limitation, circumstances which, if proved,
establish the registrants rights or legitimate interests to the disputed
domain name. The respondent relies on the circumstances specified in sub-paragraph
4(c)(i):
"(i) before any notice to you of the dispute, your use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain
name in connection with a bona fide offering of goods or services;"
Even perfunctory preparations have been held to suffice for this purpose:
Shirmax Retail Ltd. v. CES Marketing Group, Inc., AF-0104; Lumena s-ka
so.o. v. Express Ventures Ltd., FA00030000094375 and Royal Bank of Canada
v. Xross, AF-0133.
Before the respondent had notice of this dispute (in July 2000) he
registered the disputed domain name. It was initially registered by the
respondent in December 1996, in the name of his then employer and subsequently
transferred to him in late 1999/early 2000. In her reply, the complainant
acknowledged that between December 1996 and March 1997 (while still registered
in the name of Quaestus) the website was that of the respondent.
Between December 1996 and July 1998, the respondent made preparations
to use the domain name in connection with a proposed offering of services
involving the provision of information about DVD. Some of these preparations
took place before the complainants first use in commerce (in March 1997)
of the trademark which it subsequently registered. Some preparations took
place after that first trade mark use. All took place before notice to
the respondent of this dispute. The panel finds all of these preparations
to have been in good faith.
Accordingly the complainant has failed to establish element 4(a)(ii).
Bad faith
The panel does not accept the respondents assertion that his business
strategy was to concentrate on the three core domains (dvdmarket.com, dvdnews.com,
and dvdindex.com), to help to build brand awareness with future customers
because the assertion is inconsistent with all three of those names appearing
on the list of names available for sale which he gave to the complainant.
The respondent offered to sell the disputed domain name to the complainant
for an amount vastly in excess of registration costs, by responding as
he did to the complainants offer of $500 (the respondents conduct is
to be considered objectively and not by reference to his professed ironic
intent) and by including the disputed domain name on the list of names
available for sale that he sent to the complainant. But these offers took
place years after registration of the disputed domain name. Likewise, by
listing the disputed domain name with GreatDomains.com, the respondent
offered the name for sale to anyone. But this also took place years after
first registration.
Paragraph 4(b)(i) of the Policy provides it is evidence of bad faith
registration and use if there is proved registration primarily for the
purpose of profiting from sale, rent or transfer at a profit to the trademark
owner or its competitor. An offer, subsequent to registration, to sell
at a profit may evidence registration for that purpose. But no such finding
is appropriate in the circumstances of this case, where absence of legitimate
interest is not shown and registration took place years before the first
use in commerce of the complainants trademark and years before the first
offering for sale of the domain name.
The panel respectfully declines to find this case to be on all fours
with Ellenbogan v. Pearson (D00-0001) where the domain name was registered
3 ½ years before first use of the mark and was listed (it is not
clear how soon after registration) on GreatDomains.com. Although no response
was filed, the respondent made it clear he wished to be rid of any association
with the name and had been trying to get rid of it for over a year. The
panels finding of bad faith registration facilitated an outcome desired
by both parties.
The fact that the respondents registration of the domain name prevents
the complainant from using the domain name corresponding to her registered
trademark for her Internet services cannot not amount to bad faith under
the Policy unless the respondent is shown to have engaged in a pattern
of such conduct. There is no such evidence here.
The respondents registration of the domain name effectively predates
the complainants registration and use of the trademark DVD NEWS. No question
of constructive notice of a registered mark under 17 U.S.C. § 1072
arises.
The complainant has failed to establish bad faith registration and
use.
7. Decision
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the
complaint is rejected.
[Indexed As: Healy v. Kuhlen]
[Indexed As: DVDNEWS.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO . D2000-0698
Commenced: August 18, 2000
Judgment: August 24, 2000
Presiding Panelist: Alan L. Limbury
Domain Name - Domain Name Dispute Resolution Policy - U.S. Trademark
- Identical - Confusingly Similar - Bad Faith Use - Demonstrable Preparations
for Use of Domain Name - Perfunctory Preparations Sufficient - Web site
Not Developed -Valuable Consideration in Excess of Out of Pocket Costs.
Complainant owned U.S. Trademark DVD NEWS and registered the domain
name DVDNEWS.NET. Complainant published a newsletter with that name.
Respondent registered disputed domain name in the name of his employer
one year before Complainant registered the Trademark. Two years after
the registration of the trademark, Respondent left his job and the employer
transferred the disputed name to him. Respondent offered the disputed
name, and many other DVD related names, for sale for valuable consideration
in excess of out of pocket expenses. Respondent made preparations
for use of the domain name before the first commercial use of the mark
and before notice of the claim.
Held, Name Not Transferred to the Complainant.
The domain name is virtually identical to Complainants Trade Mark.
Perfunctory preparations for use of the domain name are sufficient to establish
bona fides use of the domain name. The fact that Respondents registration
of the domain name prevents the complainant from using the domain name
corresponding to her registered trademark for her Internet services cannot
not amount to bad faith under the Policy unless Respondent is shown to
have engaged in a pattern of such conduct. There is no such evidence
here. Respondents registration of the domain name effectively predates
Complainants registration and use of the trademark DVD NEWS. No
question of constructive notice of a registered mark under 17 U.S.C. §
1072 arises.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Cases referred to
---
Panel Decisions referred to
Ellenbogen v. Pearson, Case No. D00-0001 (WIPO February 17, 2000).
J. Crew Intl, Inc. v. crew.com, Case No. D2000-0054 (WIPO April 20,
2000).
Lumena s-ka so.o. v. Express Ventures Ltd., FA00030000094375 (Nat.
Arb. Forum).
Royal Bank of Canada v. Xross, AF-0133 (eResolution).
Shirmax Retail Ltd. v. CES Marketing Group, Inc., AF-0104 (eResolution).
Limbury, Panelist: -
This is an administrative proceeding pursuant to the Uniform Domain
Name Dispute Resolution Policy ("the Policy") of the Internet Corporation
for Assigned Names and Numbers ("ICANN"), in accordance with the ICANN
Rules for the Policy ("the Rules") and the Supplemental Rules for the Policy
("the Supplemental Rules") of the WIPO Arbitration and Mediation Center
("the Center").
1. The Parties
The complainant is Maureen A. Healy, doing business as Corbell Publishing,
of 4676 Admiralty Way, Marina Del Rey, California, United States of America.
The respondent is Andreas Kuhlen of Rue du Clos 14, Geneva CH-1208, Switzerland.
2. The Domain Name and Registrar
The disputed domain is dvdnews.com and the registrar is Network Solutions
Inc., of Herndon, Virginia, USA.
3. Procedural History
The complaint was received by the Center in hard copy on June 29, 2000,
and acknowledged on July 3, 2000, when registration details were sought
from the registrar. On July 5, 2000, a hard copy of the complaint was received
from the complainant, registration details were confirmed by the registrar
and the Center satisfied itself that the complainant had complied with
all formal requirements, including payment of the prescribed fee.
On July 6, 2000, the Center acknowledged receipt of the email copy
of the complaint, formally notified the respondent by post/courier, fax
and email of the complaint and of the commencement of this administrative
proceeding and sent copies to the complainant, the registrar and ICANN.
The respondent sought and, with the complainants consent, obtained
an extension of time to file the response. The Center extended time initially
until August 6, 2000, (a Sunday) and subsequently until August 7, 2000.
The response was received on August 3, 2000, and acknowledged by the Center
on August 4, 2000.
On August 16, 2000, the complainant lodged a reply and requested the
panel to exercise its discretion to consider it. On August 21, 2000, the
respondent lodged a "Reply to Complainants Reply to Respondents Response"
and asked that, if the panel should consider taking into account the complainants
reply, the panel should also consider the respondents reply to it. The
Center acknowledged both documents noting that such further submissions
are not envisaged by the Uniform Dispute Resolution Procedure and Rules
and do not form part of the official case file. The Center said they would
be sent to the panel and it was in the discretion of the panel whether
to take them into account.
On August 17, 2000, the Center invited Alan L. Limbury to serve as
panelist. On August 18, 2000, Mr. Limbury submitted a Statement of Acceptance
and Declaration of Impartiality and Independence and the Center transmitted
the case file to the panel and notified the parties of the projected decision
date of August 31, 2000.
The language of the proceeding was English.
The panel is satisfied that the complaint was filed in accordance with
the requirements of the Rules and Supplemental Rules; payment was properly
made; the panel agrees with the Centers assessment concerning the complaints
compliance with the formal requirements; the complaint was properly notified
in accordance with paragraph 2(a) of the Rules; the response was filed
within the time that had been properly extended and the administrative
panel was properly constituted.
The panel takes into account the complainants reply because it deals
with matter raised in the response which could not have been addressed
in the complaint. The panel does not take into account the respondents
response to the complainants reply because it either repeats the response
or raises matters which should have been put in the response to the complaint.
4. Factual Background (uncontested facts)
Since March 1997, the complainant has published to the home video industry,
primarily in the United States) a newsletter called DVD NEWS. It has approximately
2,000 readers each week. Over 175,000 copies have been sold. It has an
annual subscription base of over 200 persons and businesses. Initially
available in print, as of March 1999, DVD NEWS also became available online
to subscribers and has over 50 online subscriptions.
The complainant has expended substantial sums in advertising and promoting
its services under the DVD NEWS mark. In addition, she is the owner of
the domain name dvdnews.net and is currently in the process of developing
a website at that location devoted to advertising and promoting DVD NEWS.
The complainant is the owner of the US service mark Registration No.
2,124,483 for DVD NEWS for "newsletters devoted to the home video industry"
on the supplemental register of the United States Patent and Trademark
Office. This mark was registered on December 23, 1997. The certificate
of registration shows the first use in commerce as March 10, 1997. [The
certificate also shows "First use 3-10-0977". In the absence of any evidence
to support this, the panel takes the entry to be a misprint].
The respondent registered the disputed domain name dvdnews.com on December
2, 1996, in the name of his then employer, Quaestus, of Route de Malagnou
38A, Geneva, GE CH-1208. The respondent was the administrative, technical
and billing contact. It appears the respondent was allowed by Quaestus
to use its DNS servers in connection with the domain name.
In like manner the respondent also registered the domain names dvdmarket.com
on November 29, 1996, and dvdindex.com on January 23, 1997.
In March 1997, the respondent created a document entitled DVD Web Sites
Strategy as part of a DVD Web Site Project. This envisaged use of the domain
names mentioned on a list later sent to the complainants attorneys as
participating in a "DVD Web", "where DVD information and DVD news and different
services will be aggregated to form a central community around the evolving
DVD".
Updates at December 23, 1996, March 25, 1997, and July 18, 1998 of
the dvdnews.com homepage show the respondent worked on the idea of using
the site to offer free DVD news for consumers and linking the site to dvdindex.com
and dvdmarket.com. Each version carries the tag "dvdnews.com - by Andreas
Kuhlen - All Rights Reserved" and uses the email address [email protected].
In September 1999, the respondent quit his job with Quaestus in order
to participate in a full-time MBA course offered by the University of the
West of England at Bristol. As a consequence, late in 1999, the respondent
and Quaestus entered into Network Solutions Registrant Name Change Agreement,
(which recited that the respondent had applied to Network Solutions for
registration) as a consequence of which the respondent replaced Quaestus
as the registrant of the disputed domain name. It appears similar arrangements
were made with respect to the other domain names the respondent had registered
in the name of Quaestus.
Also in consequence of quitting his job with Quaestus, the respondent
had to find another domain name server. He chose to use the DNS server
of GreatDomains.com, which describes itself as "The Internets Marketplace
for Domain Names and Websites".
The complainant discovered the respondents registration of the disputed
domain name, which appeared from Network Solutions Whois database to have
been registered by the respondent on February 5, 2000, and became aware
that GreatDomains.com was offering the domain name for sale on its web
site, with a listed price of $26,800.
The complainant, through her attorneys, offered to buy the domain name
for $500.00. On April 3, 2000, the respondent replied:
"Thank you for your interest in dvdnews.com.
However, your client would need to add two more zeros for a transfer.
I have other dvd-related domains that are less expensive, like dvdmarket.com.
If you wish I can send you a list"
That list, which the respondent sent to the complainants attorneys,
showed an "indicative minimum price in US dollars" of $47,800 for dvdnews.com
and that, as of April 17, 2000, it was for sale subject to a pending offer.
The list included dvdindex.com at $4,800 as available for sale and dvdmarket.com
at $26,750 as subject to a pending offer. Other names listed for sale were
dvd4barter.com, dvdagent.com, dvdalert.com, dvdbarter.com and dvdrating.com.
5. Parties Contentions (selected and abbreviated)
A. Complainant
The respondent registered the domain name on February 5, 2000, long
after the complainant had established trademark rights in and registered
the mark DVD NEWS.
Identity or confusing similarity
The domain name dvdnews.com is virtually identical to the complainants
registered mark DVD NEWS. Indeed, as blank spaces cannot be used in a domain
name, there is no other form in which to use the mark DVD NEWS for a corresponding
domain name.
Illegitimacy
The respondent has not used the domain name for any purpose other than
to auction it for sale to the highest bidder. Indeed, he has registered
multiple domain names solely for this purpose -- a practice known as speculation
in domain names. This tribunal has already found that such practice does
not constitute legitimate interest or use in a domain name, and, in fact,
constitutes abusive registration. See e.g., J. Crew Intl, Inc. v. crew.com,
Case No. D2000-0054 (April 20, 2000). The respondent is not otherwise using
the domain name in connection with an active website, nor, upon information
and belief, does he have any demonstrable plan for the bona fide use of
the domain name.
Bad faith
It is also clear that the respondent has registered and is using the
domain name in bad faith. Listing a domain name for sale through a domain
name broker for the purpose of selling it for valuable consideration in
excess of out-of-pocket costs supports a finding of bad faith use. See
e.g., Ellenbogen v. Pearson, Case No. D00-0001 (February 17, 2000). Moreover,
the fact that the respondent has engaged in the practice of speculating
in domain names, as evidenced by his offers to sell various domain names
for sums substantially in excess of the costs associated with registering
such domains, also shows his bad faith registration and use of the domain
name. See e.g., J. Crew Intl, Inc., supra.
In addition, the fact that the respondents registration of the domain
name prevents the complainant from using the domain name corresponding
to her registered trademark for her internet services also supports a finding
of bad faith. See e.g., J. Crew Intl, Inc., supra.
The respondent should also be charged with bad faith since his registration
of the domain name postdates the complainants registration and use of
the trademark DVD NEWS. U.S. trademark law provides that a person is charged
with constructive notice of a registered mark. See 17 U.S.C. § 1072.
B. Respondent
The respondent registered dvdnews.com on December 2, 1996, not on February
5, 2000, as claimed by the complainant.
The respondent also registered dvdmarket.com and dvdindex.com in order
to establish informative and commercial offerings around the DVD. The respondent
registered the three domain names initially under the company name "Quaestus",
at which he was allowed to use the DNS servers and he used the Quaestus
web server to host some pages under these domains at intervals from 1996
to 1999. The respondent anticipated that DVD would have a substantial impact
on the consumer market, but preferred to wait until DVD would hit the mainstream
market to dedicate more effort in the building of the DVD webs.
The respondent chose to take the web pages offline during the time
of his studies and temporarily to use the DNS server of Greatdomains.com,
which is provided at no cost. The primary reason for listing the domains
on Greatdomains.com was for taking advantage of this free DNS parking until
the respondent finished his MBA course and would have the time necessary
to develop his vision of a one-stop destination for DVDs on the Web consisting
of information and services offered through dvdmarket.com, dvdnews.com,
and dvdindex.com.
The respondent refused the complainants offer of March 29, 2000, to
purchase the disputed domain name for $500 with an ironic undertone, stating
that "their client would need to add two more zeros" to that sum for a
transfer. The respondent did not intend to bargain about a price, because
it was not the respondents primary intention to sell dvdnews.com. Instead,
upon request by the complainants attorneys, on April 17, 2000, he sent
a list of 7 other DVD-related domains, which he had registered with the
intent of combining them with the services to be offered at dvdmarket.com,
dvdnews.com, and dvdindex.com.
After studying e-commerce and marketing related issues more deeply
in the course of the MBA programme, the respondent felt that it might be
a better business strategy to concentrate on the three core domains (dvdmarket.com,
dvdnews.com, and dvdindex.com), because this would help to build brand
awareness with future customers. Thus the respondent was disposed to offer
the other DVD-related domains for sale. Procter and Gamble has changed
its branding strategy in a similar way, offering nearly 100 of generic
domain names for sale at Greatdomains.com at the end of June 2000.
Identity or confusing similarity
The respondent acknowledges that the domain dvdnews.com is virtually
identical to the mark the complainant registered. As exemplified by similar
cases (e.g. case number AF-0283, by e-Resolution.ca, on newportnews.com,)
use of a domain name that does not confuse customers of the complainant
when seeing the domain name used in conjunction with the actual web site
does not constitute trademark infringement. This is clearly the case with
dvdnews.com, which the complainant plans to use solely for a newsletter
devoted to the home video industry, whereas the respondents use is closer
to the generic meaning of the domain; providing news about DVDs.
The complainants claim to have exclusive rights to use the term dvdnews
in its domain name is doubtful. The domain dvdnews is merely descriptive
of "news about DVDs". The term dvdnews is generic.
Illegitimacy
It is not true that the respondent has not used the domain name for
a legitimate purpose. After registering the domain on December 2, 1996,
the respondent made several online trials with the domain dvdnews.com.
The respondent had anticipated that DVD would have a substantial impact
on the consumer market, but preferred to wait for a good timing to dedicate
more resources to building the DVD online presence, as outlined in the
respondents DVD Web site strategy. The dvdnews.com site had active DNS
entries on February 13, 1997. The homepage of dvdnews.com in December 1996,
March 1997, and July 1998, demonstrates the respondents bona fide use of
the domain name prior to the complainants registration of its mark. The
respondent has never engaged in the practice of cybersquatting. The total
of eight domain names he had registered are all of generic nature and related
to the DVD theme. The primary reason for their registration was creating
a "web of DVD sites" or a DVD community.
Bad faith
The respondent has not registered and used the domain name in bad faith.
The respondent registered and used the domain name long before (December
2, 1996) the complainant registered her word mark with the United States
Patent and Trademark Office (December 23, 1997)!
It was the complainant who approached the respondent to ask for a sale
of the domain name on March 29, 2000. The primary reason for temporarily
using Greatdomains.com was for keeping active DNS entries for the domains,
a service which is provided free at Greatdomains.com. With the insight
gained during the MBA course, the respondent felt that it might be a better
business strategy to concentrate on the three core domains (dvdmarket.com,
dvdnews.com, and dvdindex.com), because this would help to build brand
awareness with future customers. This is why he was disposed to offer some
of the other DVD-related domains for sale. By featuring these DVD-related
domains on Greatdomains.com the respondent had also hoped that he could
get in touch with other people involved in DVD web projects in order to
explore mutual opportunities for cooperation (portal, linking strategy,
etc.). The primary use of Greatdomains.com was never to sell domain names
for sums substantially in excess of the registration costs. Currently,
the respondent is searching for a new provider to host the web pages for
his DVD domains.
The domain name was not registered in order to prevent the complainant
from reflecting the mark in a corresponding domain name, since the respondent
registered the domain prior to the complainants first commercial use or
registration of its mark.
The respondent is not a competitor of the complainant because the respondents
prior and intended use of the domain is based on business model targeting
the general public interested in DVDs, not solely the home video industry
(the complainants target audience), and even after the complainant launched
her publication DVD NEWS the respondent has never attempted to cause any
confusion with the complainants publications, in fact he was not even
aware of their existence.
The domain name was not registered by the respondent in an intentional
attempt to attract, for commercial gain, Internet users to the respondents
web site or other on-line location, because neither the complainants publication
nor their service mark existed at the time of the registration!
Complainants reply
Contrary to the respondents claims, the respondent did not use the
domain name in connection with any bona fide offering of goods or services
prior to the complainants use or registration of DVD NEWS. Indeed, the
respondents website was "under construction" from December 1996 to March
1997. Accordingly, the respondent was not actually offering any goods or
services at his website during that time. In fact, the respondent does
not appear to have used the domain name in connection with any goods or
services until July 1998 -- long after the complainant had begun using
the DVD NEWS mark (i.e., March 10, 1997). Moreover, it is questionable
whether the respondent ever actually used the domain name in connection
with any bona fide offering of goods or services as he does not provide
any specimens, sales figures or other evidence showing use of the mark
in commerce.
The respondents claim that he was only "parking" the domain name at
the website GREATDOMAIN.COM to take advantage of their free DNS server
and that his demand for $50,000 for the domain name was an "ironic" gesture
"because "it was not [his] primary intention to sell [domain name]" is
also disingenuous. The respondent was auctioning the domain name for sale
at Great Domains.COM for $26,800. Moreover, the respondent sent the complainants
attorneys a list of domain names that he was selling, which included DVDNEWS.COM
as well as other "DVD" domains names. As of April 17, 2000, the respondent
was offering the domain name for sale for nearly $48,000! The other domain
names on the list were being offered by the respondent for between $4,000
to $26,750. It is beyond dispute that these sums are substantially in excess
of the costs incurred by the respondent in registering these domain names.
The complainants registration belies the respondents claims that
DVD NEWS is generic and/or descriptive since generic terms are not registrable.
Moreover, due to substantial advertising, promotion and sales, DVD NEWS
has acquired secondary meaning and has come to be associated in the minds
of a substantial portion of the consuming public with the source of the
DVD NEWS newsletter, i.e., the complainant. Accordingly, any use of the
domain name -- which, as the respondent concedes, is identical to the complainants
mark -- in connection with providing news about DVDs is likely to cause
confusion among the consuming public as to the source of the respondents
goods and/or services.
6. Discussion and Findings
To qualify for cancellation or transfer, a complainant must prove each
element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to
a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect
of the domain name; and
(iii) the disputed domain name has been registered and is being used
in bad faith.
Identity or confusing similarity
The domain name dvdnews.com is virtually identical to the complainants
registered service mark DVD NEWS. This has been held in numerous cases
to be sufficient for the purposes of paragraph 4(a)(i) of the Policy.
Illegitimacy
The complainant has the onus of proof an all issues. Paragraph 4(c)
of the Policy sets out, without limitation, circumstances which, if proved,
establish the registrants rights or legitimate interests to the disputed
domain name. The respondent relies on the circumstances specified in sub-paragraph
4(c)(i):
"(i) before any notice to you of the dispute, your use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain
name in connection with a bona fide offering of goods or services;"
Even perfunctory preparations have been held to suffice for this purpose:
Shirmax Retail Ltd. v. CES Marketing Group, Inc., AF-0104; Lumena s-ka
so.o. v. Express Ventures Ltd., FA00030000094375 and Royal Bank of Canada
v. Xross, AF-0133.
Before the respondent had notice of this dispute (in July 2000) he
registered the disputed domain name. It was initially registered by the
respondent in December 1996, in the name of his then employer and subsequently
transferred to him in late 1999/early 2000. In her reply, the complainant
acknowledged that between December 1996 and March 1997 (while still registered
in the name of Quaestus) the website was that of the respondent.
Between December 1996 and July 1998, the respondent made preparations
to use the domain name in connection with a proposed offering of services
involving the provision of information about DVD. Some of these preparations
took place before the complainants first use in commerce (in March 1997)
of the trademark which it subsequently registered. Some preparations took
place after that first trade mark use. All took place before notice to
the respondent of this dispute. The panel finds all of these preparations
to have been in good faith.
Accordingly the complainant has failed to establish element 4(a)(ii).
Bad faith
The panel does not accept the respondents assertion that his business
strategy was to concentrate on the three core domains (dvdmarket.com, dvdnews.com,
and dvdindex.com), to help to build brand awareness with future customers
because the assertion is inconsistent with all three of those names appearing
on the list of names available for sale which he gave to the complainant.
The respondent offered to sell the disputed domain name to the complainant
for an amount vastly in excess of registration costs, by responding as
he did to the complainants offer of $500 (the respondents conduct is
to be considered objectively and not by reference to his professed ironic
intent) and by including the disputed domain name on the list of names
available for sale that he sent to the complainant. But these offers took
place years after registration of the disputed domain name. Likewise, by
listing the disputed domain name with GreatDomains.com, the respondent
offered the name for sale to anyone. But this also took place years after
first registration.
Paragraph 4(b)(i) of the Policy provides it is evidence of bad faith
registration and use if there is proved registration primarily for the
purpose of profiting from sale, rent or transfer at a profit to the trademark
owner or its competitor. An offer, subsequent to registration, to sell
at a profit may evidence registration for that purpose. But no such finding
is appropriate in the circumstances of this case, where absence of legitimate
interest is not shown and registration took place years before the first
use in commerce of the complainants trademark and years before the first
offering for sale of the domain name.
The panel respectfully declines to find this case to be on all fours
with Ellenbogan v. Pearson (D00-0001) where the domain name was registered
3 ½ years before first use of the mark and was listed (it is not
clear how soon after registration) on GreatDomains.com. Although no response
was filed, the respondent made it clear he wished to be rid of any association
with the name and had been trying to get rid of it for over a year. The
panels finding of bad faith registration facilitated an outcome desired
by both parties.
The fact that the respondents registration of the domain name prevents
the complainant from using the domain name corresponding to her registered
trademark for her Internet services cannot not amount to bad faith under
the Policy unless the respondent is shown to have engaged in a pattern
of such conduct. There is no such evidence here.
The respondents registration of the domain name effectively predates
the complainants registration and use of the trademark DVD NEWS. No question
of constructive notice of a registered mark under 17 U.S.C. § 1072
arises.
The complainant has failed to establish bad faith registration and
use.
7. Decision
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the
complaint is rejected.