[Indexed as: Video Networks v. Larry Joe King]
[Indexed as: VIDEONET.COM]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Commenced: 31 May 2000
Judgment: 20 July 2000
Case No.: D2000-0487
Presiding Panelist: Philip N. Argy
Domain name - Domain name dispute resolution policy - U.K. Trademark - U.S. Domain name - Identical - Confusingly similar - Rights or legitimate interest - No Bad faith registration - Bad faith use - Prior Interests - Abandonment - Re Direct to another Website.
Complainant is owner of trademark registration for VIDEONET in association with video-on-demand and other interactive services in the United Kingdom. Respondent asserts that he is a developer of Internet sites and related software. Respondent registered the domain name VIDEONET in connection with his company, Webwurx Multimedia Inc.
Held: Domain Name Not Transferred
It is clear to the Panel that the domain name in dispute is identical
to Complainants mark with no relevant distinguishing matter.
With respect to legitimate rights and interests, the Panel notes
that Respondent has provided adequate support for the claim that its website,
bearing the domain name in dispute, originally existed. However,
while it may never have been the intention of Respondent to abandon the
domain name in dispute, it would seem that he has effectively done so.
The presence of videonet.com on the comnetwork.com auction site is evidence
of it now being for sale to the highest bidder. Respondent obviously
no longer intends to use the name for the commercial purpose for which
the name was allegedly registered. Any legitimate interest that Respondent
had in the domain name in dispute was abandoned when the decision was made
to sell it for valuable consideration in excess of the documented out-of-pocket
expenses directly related to the domain name and other than in connection
with the sale of a business in which there might be goodwill associated
with the domain name. Such a finding does not mean that every registrant
who ceases to conduct themselves in a manner consistent with their legitimate
interest will be incapable of defending its registration.
Respondent submits that he has legitimate interests in the domain
name is dispute. He originally used the domain name for a valid commercial
purpose, the development of a software application called VideoNet.
Due to financial limitations, Respondent temporarily suspended the development
of VideoNet.
The Policy requires that both registration in bad faith and use
in bad faith be proven. In support of the allegation that Respondent
has registered and is using VIDEONET.COM in bad faith, the Complaint refers
to the fact that the domain name in dispute is re-directed to a website
with the domain name comnetwork.com. It is evident that the comnetwork.com
site is an auction site through which an interested party can bid on many
domain names, including the domain name in dispute.
Although bad faith use can be found to follow bad faith registration,
it is still necessary for Complainant to prove registration in bad faith.
Registration for the purpose of selling the domain name, made with the
knowledge of third party rights in the name, would be sufficient to demonstrate
bad faith. The Panel must determine if Respondent registered the
domain name in dispute for this purpose. Respondent claims that he
developed a piece of software called VideoNet, and that a website was active
in 1997 using the address of the domain name in dispute to market this
software. Based on the material before it, the Panel is unable to conclude
that the Respondent registered the domain name in 1997 in bad faith.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted October 24,
1999
Service Agreements referred to
Network Solutions, Inc. 4.0 Service Agreement, effective June 8, 1997
Cases referred to
--
Panel Decisions referred to
Car Toys, Inc. v Informa Unlimited, Inc. National Arbitration Forum Domain Name Dispute Case FA0093682
1. The Parties
1.1 The Complainant is Video Networks Limited, a company incorporated
under the laws of England and Wales.
1.2 The Respondent is Larry J. King, of 77 Mowat Avenue, Suite 508,
Toronto, Canada.
2. The Domain Name and Registrar
The domain name upon which this complaint is based is videonet.com.
The registrar of the domain name as at the date of the Complaint is Network
Solutions Inc ("NSI").
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute
Resolution Policy approved by the Internet Corporation for Assigned Names
and Numbers ("ICANN") on October 24, 1999 (the "Policy") in accordance
with the Rules for Uniform Domain Name Dispute Resolution Policy, also
approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental
Rules for Uniform Domain Name Dispute Resolution Policy in effect as of
December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation
Center (the "Centre") by email on May 24, 2000 and in hard copy by courier
on May 26, 2000. The cover letter to the Complaint stated that the fees
were to be made by wire transfer to WIPOs account. The Complaint stated
that a copy of the Complaint was sent to the Respondent by fax, courier
and first class post (including all Annexes) and by email (not including
annexes), and that a copy had been sent to Network Solutions Inc. by first
class post.
3.3 Upon receipt of the email copy of the Complaint, the Centre sent
the Complainant an "Acknowledgment of Receipt of Complaint" on May 25,
2000 by email, with a copy being sent to the Respondent by post/courier,
facsimile and email.
3.4 The Centre sent a Request for Registrar Verification to NSI on
May 25, 2000 by email. NSI responded to the Centres request by email on
May 30, verifying (1) Network Solutions was in receipt of the Complaint,
(2) that NSI was the Registrar for the domain name in dispute, (3) that
the Respondent was the current registrant of the domain name in dispute,
(4) the Respondents contact details, (5) that Network Solutions 4.0 Service
Agreement was in effect in relation to the domain name, and (6) that videonet.com
had an active status.
The Panel notes that although the domain name in dispute was registered
on 8 June 1997, long before ICANN adopted the Policy, for the reasons outlined
in Part IV of the Complaint this dispute is properly within the jurisdiction
of the Policy.
3.5 The Centre sent the Notification of Complaint and Commencement
of Administrative Proceeding on May 31, 2000 to the Respondent by post/courier,
facsimile and email, and to the Complainant by email.
3.6 The Centre received the Response from the Respondent on June 6,
2000. The Response included a request that the dispute be dealt with by
a three member panel. The Centre sent an Acknowledgment of Receipt (Response)
to both the Respondent and Complainant on June 7, 2000 by email.
3.7 The Centre by email on June 8, 2000 sent a Response Deficiency
Notification to the Respondent. The Respondent remedied this apparent defect
by email on the same day by simply reciting information provided on the
covering letter that accompanied the hard copy of the Response, which was
not received by the Centre until June 13, 2000.
3.8 The Centre received a supplemental filing, in the form of a letter
dated June 15, 2000 with attachments from the Complainant on June 16, which
was sent by Facsimile to both the Centre and the Respondent.
3.9 The Centre received supplemental filing from the Respondent in
response to the Complainants June 15 letter on June 16, 2000. This filing
was also sent to both the Complainant and NSI.
3.10 The Centre sent a Notification of Appointment of Administrative
Panel and Projected Decision Date to the Respondent and the Complainant
on June 27, 2000 via email. A copy was also sent to the Panel on the same
date by email.
3.11 The Centre dispatched a Transmission of Case File to the Panel,
to the Respondent and to the Complainant on June 27, 2000. The Presiding
Panelist did not receive this material until 3 July, 2000.
3.12 At the Panels request, on July 4, 2000 the Centre sent a request
for further statements to the parties, in accordance with Rule 12 of the
Rules for Uniform Domain Name Dispute Resolution Policy.
3.13 Both the Complainant and the Respondent replied to the Panels
request for further statements on July 7, 2000.
3.14 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information was asserted as fact by the Complainant and
remains uncontested.
The Complainant is a provider of video-on-demand, and a range of other
interactive services, in the United Kingdom. These services include movies,
music videos, on-screen games, entertainment and education, and home shopping
and banking services. The business of the Complainant, although primarily
confined to the United Kingdom, is increasingly expanding into other countries.
According to the June 15, 2000 letter from the Complainant containing supplementary
submissions, the Complainant is involved in a joint venture with the German
media group Bertelsmann, and is in the process of negotiating with a number
of international joint venture partners.
4.2 The Complainants Trade Marks
The Complainant has a trade mark registration for VIDEONET in the United
Kingdom, details of which are contained in Annex B to the Complaint. This
mark (the "Mark") is registered in three classes including distribution
of video and sound recordings. The evidence shows that the Mark was first
registered on January 17, 1995 and remains current.
5. Activities of the Respondent
The Respondent asserts as fact in the Response that it is a developer
of Internet sites and related software. This claim is elaborated on in
the Respondents response to the further statements requested by the Panel
on 4 July, 2000, in which the Respondent states:
"Starting in 1995, the Respondent had established a company called
Webwurx Multimedia Inc. which focused on the development of Internet websites
and email services for various clients in the North American marketplace.
Websites developed by Respondent include:
http://www.ntn.ca
http://www.jonassofware.com
http://www.donaldcooper.com
http://www.libertygroup.com
During 1996, the Respondent began developing websites for themselves
and created some promising products including: CardBuilder.com (a free
online greeting card site - now called Ecards.com), FantasyTeam.com (a
sports contest website), MegaMail.com (a secure online messaging system),
QuickChat (a full-function chat system) as well as software for interactive
games. . . .Along with and complimentary to these products, Webwurx also
focused on emerging technologies such as sound and video and developed
prototype applications for use in these areas. Some of these technologies
were incorporated into the websites referred to above."
6. The Complainants Contentions in the Complaint
6.1 The Complaint asserts that each of the elements specified in paragraph
4(a) of the Policy have been satisfied.
6.2 In reference to the element described in paragraph 4(a)(i) of the
Policy, the Complaint asserts that the domain name in dispute is identical
to the Mark "save for the addition of the .com TLD suffix".
6.3 In reference to the element in paragraph 4(a)(ii) of the Policy,
the Complaint asserts that the Respondent has no legitimate interest in
the domain name. In particular, the Complaint submits that the Respondent
(in regard to paragraph 4(c) of the Policy):
- Has not made any use of, or demonstrable preparations to use, the
Disputed Domain Name in connection with a bona fide offering of goods and
services.
- Is not (whether as an individual, business or other organisation)
commonly known by the Disputed Domain name; and
- Is not making legitimate non-commercial or fair use of the Disputed
Domain Name without intent for commercial gain.
6.4 In reference to the requirement of paragraph 4(a)(iii) of the Policy,
the Complaint asserts that the Respondent has registered and is using the
domain name in dispute in bad faith, in that it was registered primarily
for the purpose of selling or otherwise transferring it to the Complainant
or to a third party, for valuable consideration in excess of the out-of-pocket
expenses related directly to it (as referred to in paragraph 4(b)(i) of
the Policy)
6.5 In support of this allegation the Complaint refers to the fact
that the domain name in dispute is re-directed to a website with the domain
name comnetwork.com. It is evident from Annex E - F of the Complaint that
the comnetwork.com site is an auction site through which an interested
party can bid on many domain names, including the domain name in dispute.
This is evidenced by the introductory page to the site, as reproduced in
Annex E to the Complaint, which states:
" Members of the ComNetwork met in Las Vegas during the North American
Broadcasters (NAB2000) conference in an attempt to raise awareness surrounding
the state of the domain name system and to offer for sale some of their
domain name holdings . . . .some key broadcasting names that could be available
to your company for immediate development are . . .VideoNet.com .."
7. The Respondents Contentions in the Response
7.1 The Response does not refute the allegation in the Complaint that
the domain name in dispute is identical to the Complainants Mark. However,
the Response asserts that the words "video" and "net" are generic words,
in respect of which the Complainant therefore cannot claim exclusive rights.
As a result, the Response submits that by choosing these words the Complainant
must accept the risk that others will also use them.
7.2 In relation to the allegation in the Complaint that the Respondent
has no legitimate interest in the domain name in dispute, the Response
submits that the Respondent did originally use the domain name for a valid
commercial purpose. The Response states that:
"The Respondent developed a software package for viewing on the Internet.
The software was replaced by more advanced software developments in the
marketplace, and the development of the website was halted. The site was
active in 1997."
This statement is supported by Exhibit F to the Response, which contains
a print-out of what is alleged to be the website that was active in 1997
at the address of the domain name in dispute.
7.3 In answer to the allegation in the Complaint that the domain name
in dispute was registered and is being used in bad faith, the Response
submits that the domain name could not be said to have been acquired by
the Respondent for any of the purposes described in paragraph 4(b) of the
Policy, as it was registered before the Respondent had even become aware
of the Complainant. In support of this contention, the Response cites the
following:
(i) the Complainants Mark was not famous, and as a result the Respondent
cannot be expected to have heard of the Complainant; and
(ii) when the Respondent applied for the domain name in dispute he
conducted a Canadian and United States trade mark search, and found no
registration for the Complainant.
7.4 In addition to refuting the allegations made in the Complaint,
the Response asserts that the Complaint is an overt attempt at reverse
domain name hijacking, and that in relation to the letter received from
the Complainants lawyers (offering to purchase the domain name rather
than pursuing the ICANN procedure), dated May 26, 2000:
"The Respondent views this (the letter) as an attempt by the Complainant
to use the ICANN procedure as a method of extorting a sale of the name
to the Complainant, and that the Respondent believes that the ICANN Dispute
Resolution Procedure has been invoked in bad faith by the Complainant."
8. Complainants additional contentions in letter of June 15, 2000
8.1 The Complainant submitted to the Panel its response to a number
of the contentions in the Response, including:
(i) the fact that the Complainants Mark was only registered in the
United Kingdom was irrelevant as far as the Policy was concerned;
(ii) the admission by the Respondent that he conducted a trade mark
search in Canada and the United States, which revealed a number of registered
trade marks for VIDEONET (as illustrated in Exhibit C to the Response),
but then still registered the domain name demonstrates that the Respondent
acted in bad faith. This is so, the Complainant submits, because the Respondent
knew that the use of the domain name in dispute would be likely to infringe
another persons registered trade marks, albeit not that of the Complainant.
9. Respondents reply to Complainants letter of June 15, 2000
The Respondents reply to the Complainants June 15, 2000 simply sought
to strengthen its existing submissions by reference to earlier decisions
under the Policy.
10. Parties response to Panels request for further statements
Both the Complainant and Respondent utilized the opportunity afforded
to provide greater detail about claims they had made in previous filings,
some of which are considered below.
11. Discussion and Panel Findings
11.1 This section is structured by reference to the elements required
by paragraph 4(a) of the Policy. In order to be successful, the Complainant
has the burden of proving, on the balance of probabilities, that all three
elements are present.
11.2 Domain Names identical or confusingly similar to Complainants
Marks
The domain name in dispute is videonet.com. The Mark owned by the Complainant
is VIDEONET. It is clear that the domain name in dispute is identical to
the Mark with no relevant distinguishing matter. Paragraph 4(a)(i) of the
Policy is satisfied in the unanimous view of the Panel.
11.3 The Respondent has no rights or legitimate interests in the Domain
Name
As described in paragraphs 5 and 7.2 above, the Respondent maintains
that he is in the business of developing Internet sites and related software.
This, it is claimed, included the development of a software package for
viewing video on the Internet, for which a website at the address of the
domain name in dispute was active. The Panel notes that the print-out of
this website, as attached at Exhibit F to the Response, provides adequate
support for the claim that the website originally existed. When requested
by the Panel to provide further statements in support of these above claims,
the Respondent elaborated as follows:
"Webwurx (a company established by the Respondent in 1995) also focused
on emerging technologies such as sound and video and developed prototype
applications for use in these areas. Some of these technologies were
incorporated into the websites referred to above (paragraph 5 above). One
such application developed by Respondent was called VideoNet, a Java-based
video distribution tool. Over the time that these websites and tools
were developed, due to financial limitations, Webwurx merged with another
company and temporarily suspended the development of VideoNet to allow
its employees to focus on more pressing development requirements of the
new company. It was never the Respondent's intention to abandon the Videonet
software development nor the domain name VIDEONET.COM"
11.4 Although it may never have been the intention of the Respondent
to abandon the domain name in dispute, it would seem that he has effectively
done so. The presence of videonet.com on the comnetwork.com auction site
is evidence of it now being for sale to the highest bidder.
11.5 Paragraph 4(a)(ii) of the Policy provides:
"(ii) you have no rights or legitimate interests in respect of the
domain name"
11.6 The Respondents claim to a current legitimate interest in the
domain name in dispute is effectively based on the development of software
that according to the Respondent has now been "replaced by more advanced
software developments in the marketplace" and the development of which
has in any case been "temporarily suspended". For whatever reason, the
Respondent is now offering the domain name in dispute for sale, so the
Respondent obviously no longer intends to use the name for the commercial
purpose for which the name was allegedly registered. As a result, the Panel
(Mr Davis dissenting) is of the opinion that any legitimate interest that
the Respondent had in the domain name in dispute was abandoned when the
decision was made to sell it for valuable consideration in excess of the
documented out-of-pocket expenses directly related to the domain name and
other than in connection with the sale of a business in which there might
be goodwill associated with the domain name. The Panel (Mr Davis dissenting)
is inclined to the view that the complete abandonment of any legitimate
interest that might have existed at the time of registration in 1997 prevents
the Respondent obtaining the benefit of paragraph 4(c)(i) of the Policy.
However, since the Panels decision does not depend on this finding, the
Panel does not express any concluded view on this issue of interpretation.
11.7 The Panel notes, however, that such a finding does not mean that
every registrant who ceases to conduct themselves in a manner consistent
with their legitimate interest by, for example, no longer carrying on the
business originally associated with the domain name, will be incapable
of defending its registration. Each provision of paragraph 4(a) of the
Policy must be satisfied, so that such a person will always have the protection
of the other two elements needing to be satisfied before their registration
is in jeopardy.
11.8 The Panel notes the decision in Car Toys, Inc. v Informa Unlimited,
Inc. National Arbitration Forum Domain Name Dispute Case FA0093682, relied
upon by the Respondent in paragraph 18 of the Response, in which it was
stated that:
"That Informa (Respondent) has offered to sell this domain name to
Complainant after inquiry by Complainant does not make its interest illegitimate."
However, that decision refers to a different situation to that currently
being considered by the Panel. In this case, the Respondents sole asserted
current interest in the domain name in dispute is to sell it to the highest
bidder, which in the opinion of the Panel (Mr Davis dissenting) is a disavowal
of any current legitimate interest in the domain name. The Respondent has
not offered the domain name for sale concurrently with its use in conjunction
with an offering of other goods and services.
11.9 Accordingly, the Panel (Mr. Davis dissenting) finds that the Complainant
has proven paragraph 4(a)(ii) of the Policy.
11.10 The Domain Names have been registered and are being used in bad
faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both
registration in bad faith AND use in bad faith. Paragraph 4(b) of the Policy
provides:
" . . .the following circumstances, in particular but without limitation,
if found by the Panel to be present, shall be evidence of the registration
and use of the domain name in bad faith: . ." (emphasis added).
In some cases it has been found that it is unnecessary to consider
the two limbs of this provision separately, as the "use" requirement has
been found not to require positive action, inaction being within the concept.
However, although bad faith use can be found to follow bad faith registration
without more, it is still necessary for the Complainant to prove registration
in bad faith.
11.11 In order to show bad faith registration by the Respondent, the
Complaint states that:
" . .the Respondent . . appears to have registered the Disputed Domain
Name primarily for the purpose of selling, or otherwise transferring the
Disputed Domain Name to the Complainant or a third party, for valuable
consideration in excess of his documented out-of-pocket expenses directly
related to the Disputed Domain Name." (Emphasis added)
The Complainant therefore appears to rely on Paragraph 4(b)(i) of the
Policy, which provides that the following is evidence of bad faith registration
and use:
"circumstances indicating that you have registered or you have acquired
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the
owner of the trade mark or service mark or to a competitor of that complainant,
for valuable consideration in excess of your documented out-of-pocket costs
directly related to the domain name".
11.12 The Panel notes an important difference between what the Complaint
argues and the circumstance paragraph 4(b)(i) of the Policy describes,
in that the Complaint refers to the "Complainant or a third party" and
the provision refers to "the complainant . .or competitor of that complainant".
However, it must be remembered that the circumstances which provide evidence
of bad faith are not limited to those described in paragraph 4(b) of the
Policy. The Panel is not of the opinion that an intention to sell the domain
name directly to the Complainant or one of its competitors is necessary
to show bad faith. Registration for the purpose of selling the domain name,
made with the knowledge of third party rights in the name, would be sufficient.
11.13 In this case the question for the Panel is therefore, "did the
Respondent register the domain name for the primary purpose of selling,
renting or otherwise transferring it to a third party with an interest
in that name?" The Complainant is required by the Policy to prove that
this is the case.
11.14 The Respondent has made a number of statements, reproduced in
paragraphs 5, 7.2, and 11.3 above, claiming that he is in the business
of developing Internet sites and related software. In addition, the Respondent
claims that he had developed a piece of software called "videonet", and
that a website was active in 1997 using the address of the domain name
in dispute to market this software. Although the processes of the Panel
do not enable a partys "evidence" to be easily tested, the Policy makes
it clear that the Complainant must prove all three elements of Paragraph
4(a). Based on the material before it, the Panel is unable to conclude
that the Respondent registered the domain name in 1997 in bad faith.
11.15 The Panel is aware of the ease with which a Respondent could
"manufacture" a legitimate interest at the time of registration for the
purposes of defeating a Complaint. However, the Policy does not provide
the appropriate forum for the evaluation of evidence of this kind, such
evaluation only being available by recourse to more conventional forums
in which the credit of materials and the authenticity of documents can
be tested.
11.16. The Panel is unanimously of the view that the Complainant has
failed to prove paragraph 4(a)(iii) of the Policy.
12. Decision
Having decided that the Complainant has failed to prove all the requirements
of paragraph 4(b) of the Policy, the Panel dismisses the Complaint.
Philip N. Argy
Presiding Panelist
Gervaise Davis III David H Tatham
Panelists
Dated: July 20, 2000
Domain Name Not Transferred