Domain name - Domain name dispute resolution policy - Common law trademark - U.S. trademark application - Identical - Legitimate interest - Bad faith registration - Bad faith use - Valuable Consideration in Excess of Out of Pocket Costs - Leasing of domain names - Agency - Alleged contract.

Complainant was incorporated under the name WEB2YOU, Inc., and began actively recruiting, advertising and promoting using this corporate name and related logo in an effort to sell national dial-up Internet access to non-profit organisations, small to medium sized companies and member-based organisations.  Complainant filed a U.S. trademark application in respect of this name, and registered several domain names, among them web2youinc.net and web2youinc.com.  Respondent was the owner and operator of a free web based e-mail site, whereat users could apply to the Respondent for an email address utilising one of the many domain names which had been registered by the Respondent.  Complainant contended that in a meeting with the Respondent, the Complainant contracted with the Respondent to register this domain name if it came available, on its behalf using a software program developed by the Respondent for this purpose.  Respondent did register the domain name web2you.com after becoming aware of its availability, yet allegedly then offered to lease or sell the domain name to the Complainant for an amount much greater than agreed.  Respondent denied that it offered to sell the contested domain name to the Complainant for any sum at any point, and claimed its only intention was to add the domain name to those used in its email service, which was allegedly being done by a number of users in the present instance.     

Held, Name Transferred to Complainant.

Complainant, although still in start-up phase, has clearly used WEB2YOU in the trade mark sense: it has an active website using this name, has a professionally designed logo, has printed stationary and business cards, has raised finance under the name, and has some initial customers.  Evidence submitted shows some users to have in fact accessed the domain name at issue thinking it to offer a service of the Complainant.  From this and other provided evidence, it is determined that the Complainant had developed a sufficient, although recent, reputation in the name prior to the registration of the domain name by the Respondent in order to claim that it is the owner of a common law trademark rights in that name.  Accordingly, it is found that the contested domain name is identical to the alleged trademark.

Further, after careful consideration and review of all the materials, it is found that the reason the Respondent registered the domain name was because the Complainant had made the Respondent aware of it.  Respondent was not using WEB2YOU in any way prior to registration of the domain name.  Consequently, Respondent's registration of the domain name and subsequent use of it does not provide the Respondent with a right or legitimate interest in the domain name

Finally, it is decided that the domain name was registered and used by the Respondent in bad faith based upon the following: director of Respondent suggested the Complainant lease the domain name instead, Respondent's business is located in the same city as the Complainant's business and knew that the Complainant wanted this domain name when it became available, only one other of the 1100 domain names owned by the Respondent contain a number as in the contested domain name, and lastly, Respondent’s business is registering or acquiring domain names for the purpose of leasing them, not using them.  Accordingly, the Respondent has registered the domain name primarily for the purpose of renting the domain name to the Complainant who is the owner of the trademark or service mark, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.  Respondent has not provided any evidence to corroborate statements by its director that the Respondent never offered to sell the contested domain name to the Complainant.  Therefore, Respondent's conduct clearly amounts to bad faith as that term is commonly understood.

Although not decided on this ground, Respondent may also be regarded as registering the domain name as agent for the Complainant.

Policies referred to

ICANN Rules for Uniform Domain Name Dispute Resolution Policy

Panel Decisions referred to

Caterpillar, Inc. v. Roam the Planet, ICANN Case No. D2000-0275 (WIPO).

Drew Kaplan Agency, Inc. v. DAK.com, ICANN Case No. FA0094328 (NAF).

Fishtech, Inc. v. Richard Rossiter, ICANN Case No. FA0092976 (NAF).

Microsoft Corporation v. Amit Mehrotra ICANN Case No. D2000-0053 (WIPO).
 

Swinson, Panelist: -

1. Parties and Contested Domain Name 
The Complainant is Web2You, Inc., of 351 S US Highway 1, Suite 103, Jupiter, FL USA 33477. 
The Respondent is Mydotcom.com, of 4300 S US Highway 1, PMB 168, Jupiter, FL USA 33477. 
The contested domain name is web2you.com. 

2. Procedural History 
The electronic version of the Complaint form was filed on-line through eResolution's Website on June 27, 2000. The hardcopy of the Complaint Form was received on June 29, 2000. Confirmation of payment was received on June 28, 2000. 
Upon receiving all the required information, eResolution's clerk proceeded to: 
- Confirm the identity of the Registrar for the contested Domain Name; 
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent; 
- Verify that the contested Domain Name resolved to an active Web page; 
- Verify that the Complaint was administratively compliant. 
The inquiry led the Clerk of eResolution to the following conclusions: the Registrar is Tucows.com, the Whois database contains all the required contact information except the billing information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant. 
An e-mail was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement on June 29, 2000. The requested information was received June 30, 2000. 
The Clerk's Office proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. 
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on July 4, 2000. That date is the commencement date of the administrative proceeding. 
On July 4, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding. 
None of the e-mails were returned 'undeliverable'. The fax to Jack Ford failed. 
The complaint, official notification and all the annexes were sent via UPS to the respondent. According to the UPS tracking system, all were delivered. 
The Respondent submitted an electronic version of his response on July 13, 2000. The hardcopy of the Response Form was received on July 14, 2000. 

3. Factual Background 
The Complaint Form states that Complainant "has been actively recruiting, advertising and promoting the Web2You logo and corporate name since early 1999". According to the Complainant, it sells national dial-up Internet access to non-profit organisations, small to medium sized companies and member-based organisations. The Complainant claims that it intends to sell OEM set-top boxes and it's internally developed proprietary software under the Web2You name and logo and its tagline "Bringing the Web2You". 
Web2You, Inc. was incorporated in the State of Michigan on November 15, 1999. Web2You, Inc. was authorised to transact business within the State of Florida on January 20, 2000. 
The Complainant tried and failed (apparently due to credit card processing problems) to register the domain name web2you.net in June or July 1999. It was then registered by an English company. 
Jennifer M. Jolly, President and CEO of the Complainant, first registered the domain name web2youinc.net on September 30, 1999. The domain name web2you.to was first registered by the Complainant on May 18, 2000. The Complainant registered the domain name web2youinc.com on May 17, 2000, and myweb2you.com on May 18, 2000. The Complainant is also the registrant of the domain name isp2go.com. 
The Complainant filed a U.S. trademark application on May 18, 2000, which was assigned serial number 76/053,595. According to USPTO online records, this application is an "intent to use" application. It was filed in relation to services in class 35. 
The Respondent is the owner and operator of a free web based e-mail site that can be accessed at www.DotComEmail.com. The Respondent's web based e-mail service has been in the planning and developmental phase for many years and became operational in January 1999. 
The Respondent's business is to register domain names and then provide a free email service allowing users to apply to the Respondent for an email address utilising that domain name. According to the Respondent, it has registered 1,100 domain names and has over 200,000 subscribers. Presently, income is generated through advertising. The Respondent's employees actively search for and try to register "attractive" and available domain names. The Respondent's website (which currently can be accessed via www.mydotcom.com, www.dotcomemail.com and www.web2you.com) show that it has domain names as varied as: airjordans.com, achievers.com, bankrupts.com, bmwlover.com, budweisers.com, chairwomen.com, churchgoer.com, gogogirl.com, masterbater.com, olympiclover.com, savethechickens.com, thanksgivings.com, and vomits.com. 
Originally, a Clint Cheeck of Texas, who could not be found when the Complainant tried to contact him, owned the domain name web2you.com. (See also http://www.zdnet.com/anchordesk/talkback/talkback_83216.html ) Clint's registration expired in 2000, presumably when the renewal registration fee was not paid. 
The domain name web2you.com was first registered by the Respondent on May 15, 2000. The Respondent has established a website at www.web2you.com where visitors can sign up for free web based email and access their email account. The Respondent provides email addresses in the format [name]@web2you.com to subscribers. The Respondent claims that over 150 people have signed up for email addresses under this domain name. 

4. Parties' Contentions 
In summary, the Complainant contends that in a meeting with the Respondent, the Complainant contracted with the Respondent to register the domain name web2you.com, if it came available, on its behalf using a software program developed by the Respondent for this purpose. The Respondent denies that it ever had a contract with the Complainant. There is no written evidence of a contract. 
Complainant 
The Complainant contends that the Respondent would never have tried to register the contested domain name if it had not been for the Respondent's previous discussions with the Complainant. 
The Complainant contends that the Respondent offered to register the contested domain name on behalf of the Complainant and to sell it to the Complainant for $90 upon registration. After the Respondent obtained registration of the contested domain name, the Complainant contends that the Respondent offered to sell the domain name to the Complainant for $10,000. The Complainant also contends that after a few additional conversations, the Respondent dropped the price of the domain name to $5,000. 
The Complainant contends that the Respondent will no longer take the Complainant's telephone calls and the Complainant's letters to the Respondent have been returned unopened. Letters sent to the Respondent by the Complainant, at the address of the Respondent listed in the WHOIS database, were returned "refused" or "moved" (although the official notification of this dispute was sent via UPS to the Respondent by eResolution and, it appears, successfully delivered to this address). 
Respondent 
The Respondent contends that the contested domain name was acquired for the purpose of adding to the DotComEmail.com service. The Respondent states that it registered the contested domain name for use in the free web based e-mail service because it is a common name that the Respondent believed would appeal to a number of subscribers. 
The Respondent denies that it ever offered to sell the contested domain name to the Complainant for any sum. The Respondent contends that this is substantiated by the fact that the contested domain name was immediately put in use at the e-mail service and once it is in use it cannot be sold because the subscribers would no longer be able to receive their e-mail at their address. 
The Respondent contends that there is no evidence whatsoever that it has engaged in a pattern of conduct of registering domain names in order to prevent the trademark owner or service mark owner from reflecting the mark in a corresponding domain name. 
The Respondent contends that it is not a competitor of the Complainant. 
The Respondent also contends that there is no proof that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location. 
The Respondent does not deny that its director, Jack Ford, met with the Complainant and knew generally of the Complainant's business plans prior to registering the domain name in issue. 

5. Discussion and Findings 
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("ICANN Policy"), namely: 
(i) the 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 domain name has been registered and is being used in bad faith. 
The onus of proving these elements is that of the Complainant. 
As an initial comment, the Panel has no power to decide whether or not there is a contract between the Complainant and the Respondent, or whether the Respondent breached this alleged contract. See Drew Kaplan Agency, Inc. v. DAK.com, NAF FA0094328. This decision is not made on that basis. 
Identical or confusingly similar to a trademark or service mark 
The Complainant contends that it is the owner of the common law trademark "Web2You". The Complainant contends that members of the public are misled and confused by the fact that the contested domain name is not owned by the Complainant. The Complainant, although still in start-up phase, has clearly used "web2you" in the trade mark sense: it has an active website using "web2you", has a professionally designed logo, has printed stationary and business cards, has raised finance under the web2you name, and has some initial customers. 
Although the Complainant has not used web2you for a long period of time, it must be remembered that the Complainant is in the Internet business and is operating on what is called "Internet time". The use of "web2you" by the Complainant has been public use. 
The Respondent contends that the Complainant does not have rights in relation to a trademark or a service mark in the term "web2you". The Respondent contends that the Complainant does not offer any goods or services for sale, but apparently intends to do so in the future. The Respondent also contends that: 
"the name consists solely of letters and numbers that are used in a descriptive manner (including a generic corporate identifier). In the absence of any significant use to date, there is no evidence that the term has acquired secondary meaning sufficient to distinguish the Complainant's services from any others." 
The panel finds that the contested domain name is identical to the alleged trademark. The only difference between the domain name and the trademark is the suffix ".com". See Microsoft Corporation v. Amit Mehrotra WIPO D2000-0053. 
The ICANN Policy does not require the Complainant's trademark to be registered. This is because it is the reputation from actual use of the mark which drives the complaint, and not the fact of its registration. 
Prior to the Respondent registering the contested domain name, the Complainant had registered the corporation, Web2You, Inc., and the domain name web2youinc.net. 
The Complainant has provided a copy of an email from Mr. Bob Waun which shows that Mr. Waun was confused when he accessed the website www.web2you.com and that he actually subscribed to the Respondent's email service on the basis that the website was being operated by the Complainant. Mr. Waun knew of the Complainant's business through being an investor in the business. 
From the evidence provided, the Panel finds that the Complainant had developed a sufficient, although recent, reputation in the name "Web2You" prior to the registration of the domain name by the Respondent in order to claim that it is the owner of a common law trademark rights in that name. 
As a result, the panel finds that the Complainant has satisfied this element. 
Illegitimacy 
The Complainant claims that the Respondent: 
(a) would never have tried to register the contested domain name if it had not been for the Respondent's previous discussions with the principals of the Complainant; 
(b) agreed to sell the contested domain name to the Complainant if the Respondent obtained registration of the domain name; and 
(c) offered to sell the contested domain name to the Complainant after obtaining registration of the domain name. 
The Complainant has provided signed statements by Jennifer Jolly, Patrick Clendaniel and Dennis Encapera to support the Complainant's claim that the Respondent had agreed to register the domain name on behalf of the Complainant. 
The Respondent swore in an affidavit dated July 11, 2000 that "the Affiant has never offered to sell the disputed name "web2you.com" to the Complainant. Any allegations to the contrary are completely false." 
The Respondent has developed a website at www.web2you.com and claims that over 150 subscribers have chosen to use [name]@web2you.com as their e-mail address. The Respondent has not provided any evidence to corroborate the Respondent's statement that over 150 subscribers have chosen to use the [name]@web2you.com e-mail addresses, but the Panel accepts this statement as true. 
The Panel concludes that the Respondent does not have a legitimate interest in the contested domain name. The Respondent was not using web2you in any way prior to registration of the domain name. The Respondent's registration of the domain name and subsequent use of it does not provide the Respondent with a right or legitimate interest in the domain name. Drew Kaplan Agency, Inc. v. DAK.com, NAF FA0094328. After careful consideration and review of all the materials, the panel finds that the reason the Respondent registered the domain name was because the Complainant had made the Respondent aware of it. 
In the circumstances, the Panel finds that Paragraph 4(c)(i) of the ICANN Policy does not assist the Respondent in proving that the Respondent has rights or legitimate interests in the domain name. Paragraph 4(c)(i) is intended to protect entities who register domain names in good faith, without notice of any third party's trade mark rights in the name. As the Respondent knew of the Complainant's trade mark prior to registering the domain name and had not used the name corresponding to the domain name in connection with a bona fide offering of goods or services prior to registering the domain name, Paragraph 4(c)(i) does not assist the Respondent. Moreover, the Complainant contacted the Respondent in relation to this dispute after the name was registered by the Respondent and prior to the Respondent first using it on May 17, 2000. 
As a result, the panel finds that the Complainant has satisfied this element. 
Bad Faith 
As stated above, the Complainant has the onus of proving that the domain name has been registered and is being used in bad faith. The Respondent's suggestion that the Complainant must prove the elements of Paragraph 4(b) of the ICANN Policy to be successful in showing that the Respondent registered and is using the domain name in bad faith is incorrect. Paragraph 4(b) is merely an inexhaustive list of the factors that shall be evidence of the registration and use of the domain name in bad faith. The Complainant is not restricted to the circumstances that are listed in Paragraph 4(b) and is not required to prove each or any of the matters listed in Paragraph 4(b). 
The Respondent has registered the domain name and is using the domain name for the purposes of the ICANN Policy. 
The panel concludes that the domain name was registered and used by the Respondent in bad faith based upon the following: 
(a) Jack Ford (as John J Ford), director of the Respondent, states, in an affidavit filed in these proceedings, that he is preparing a website which would allow companies to partner with him by using domain names owned by him. "This would still allow the DotComEmail.com e-mail users access to their e-mail accounts as only web traffic would be redirected, not the e-mail services." This is confirmed in part by the Complainant. In a signed statement, Patrick Clendaniel stated that Jack Ford said to him "that we should lease the name from him instead". Jennifer Jolly provided a signed statement to a similar effect. 
(b) The Respondent's business is located in the same city as the Complainant's business. The Respondent was aware of the Complainant's name, business and business plans prior to registering the domain name. The Panel finds that it was not a coincidence that the Respondent registered this domain name. The Respondent knew that the Complainant wanted this domain name when it became available. 
(c) Examining the domain names registered by the Respondent, most are generic words. Of the 1,100 names registered, only one other is a combination of words and a number. 
(d) The Respondent has registered 1,100 domain names, including names using well know trademarks Ford, BMW, Air Jordan, Budweiser, Harley, Honda, Toyota, Olympics, Lexus, Mazda, Mercedes, Mustang, and NASDAQ. The conclusion to be drawn from this list, supported by the statements found in the Response, is that the Respondent has been in the business of registering or acquiring domain names for the purpose of leasing them, not for the purpose of carrying on business under any particular domain name. In fact, it would appear impossible that the Respondent could use each of the domain names which it is stated to own, in providing goods and services in commerce. No evidence has been adduced by the Respondent that it intended to use the contested domain name, or any of the domain names so listed, for any purpose other than to lease them at a profit. Caterpillar, Inc. v. Roam the Planet, WIPO D2000-0275. 
Accordingly, the Panel finds that the Respondent has registered the domain name primarily for the purpose of renting the domain name to the Complainant who is the owner of the trademark or service mark, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. This is sufficient to show bad faith. 
In short, the Respondent is a domain name pirate. Although it may be a legitimate business to rent domain names, it is not legitimate to register trademarks of others as domain names for the purpose of leasing them. 
The above conclusion is reached by the Panel looking at the Respondent's evidence and materials in the best light, and giving little weight to the statements of the Complainant, and taking into account that about 150 users have signed up for a web2you email address with the Respondent. 
However, even if the Panel is incorrect in reaching the above conclusion, the Panel finds that the evidence provided by the Respondent lacks credibility and that the Complainant, although trusting and somewhat naive, presented a credible story of how it was, in effect, deceived by the Respondent. 
Jack Ford, in a carefully worded sworn statement, says that he never offered to sell the domain name to the Complainant. Although this may be technically correct, Jack Ford and employees of the Respondent clearly gave the Complainant the impression that he hoped to acquire the domain name on the Complainant's behalf. 
The Respondent has not provided any evidence to corroborate Jack Ford's statements that the Respondent never offered to sell the contested domain name to the Complainant. It would have been beneficial if the Respondent had submitted an affidavit or declaration sworn by Scott, the Respondent's Network Engineer (referred to in the Complainant's supplementary information and the Complainant's Annexure D, letter dated May 29, 2000 to Mr. Jack Ford, MyDot.com), that concurred with the Respondent's version of the events, or at least an explanation as to why this evidence could not be provided. The Complainant's materials suggest that Scott believed the Respondent was obtaining the domain name on behalf of the Complainant. In a number of key areas, the Respondent's materials were silent, and the only inference that the Panel can draw from this is that the Complainant's version in these areas was correct. 
The Panel finds that the Respondent's conduct clearly amounts to bad faith as that term is commonly understood. As a result, the panel finds that the Complainant has established this element. 
Additionally, on one view of the evidence, the Respondent may be regarded as registering the domain name as agent for the Complainant. Fishtech, Inc. v. Richard Rossiter, NAF FA0092976. However, the Panel does not reach its decision on this ground. 

6. Conclusions 
For the reasons set forth above, the Complainant's request to transfer the domain name web2you.com to the Complainant is granted.