|Kläger||OPEN WORLD, INC.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OPEN WORLD, INC. V. DOMAINS, BVI
Case No. D2003-0184
1. The Parties
The Complainant is OPEN WORLD, INC. of Lexington, Kentucky, United States of America, represented by Wyatt, Tarrant & Combs of United States of America.
The Respondent is DOMAINS, BVI of Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <2e.com> is registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 5, 2003. On March 6, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a Request for Registrar Verification in connection with the domain name at issue. On March 7, 2003, Network Solutions, Inc. Registrar transmitted by email to the Center its Verification Response in which it confirmed that Respondent is listed as the Registrant and stated that Respondent is also listed as Administrative Contact, Technical Contact and Billing Contact (with an indication that the same e-mail address applied to those Contacts). It also stated that the language of the Registration Agreement is English and that the domain name holder has submitted in that Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name. In an additional statement on March 10, 2003, the Registrar stated that the domain name registration will remain in a locked status for the duration of the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 31, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondents Default on April 1, 2003.
The Center appointed Henry Olsson as Sole Panelist in this matter on April 16, 2003. The Projected Decision Date was April 30, 2003.
The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.
4. Factual Background
Complainant is a corporation organized under the laws of Kentucky, United States of America. The domain name at issue was first registered, on March 9, 1999, by Pipe9 Corporation which was a subsidiary of CommerceInc Corporation. On October 27, 2000, CommerceInc sold its website design and hosting services, including the domain name at issue, to Complainant.
No specific information has been given about Respondent and its activities, in addition to what is contained in the Complaint and referred to below.
In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name at issue to the jurisdiction of the courts at the location of the principal office of the concerned Registrar.
5. Parties Contentions
Complainant first alleges that it has only been able to successfully contact Respondent by using the e-mail address. In this respect Complainant has submitted affidavits by Chad Hall (Vice-President of Open World, Inc) and Steven L. Snyder (Counsel for Open World, Inc.). Those affidavits mention, inter alia, that a call to the telephone number indicated for Respondent in the WHOIS database was answered by a woman who said that she never heard about Respondent and that the CEO of Respondent is a certain "Alice Travis", and went on to supply Ms. Travis address and telephone number, and email address which was the same e-mail address as for Respondent. When Complainant called the number indicated, a woman answered saying that Alice Travis was not an employee; furthermore, when Complainant sent a letter to the address indicated for Alice Travis, it was returned to Complainant as undeliverable. Complainant therefore draws the conclusion that the true Registrant of the domain name at issue is hiding behind false names and addresses.
As regards the background for the case, Complainant indicates that in March 1999 CommerceInc Corporation developed a novel Internet business and set up a number of model websites for businesses using the common law trademark 2E.COM. Those model websites were accessible only through the website under that trademark. CommerceInc approached business owners and asked them whether they would like CommerceInc to continue or discontinue those websites. According to Complainant, a number of businesses were pleased with the websites and chose to engage CommerceInc to maintain the websites. In this context Complainant has referred to the affidavit by Chad Hall.
In addition, according to Complainant, CommerceInc also operated under the name Pipe9 Corporation and eventually changed its name to Pipe9 Corporation. When Complainant registered the domain name <2e.com> it listed as Administrative Contact and Technical Contact firstname.lastname@example.org.
According to Complainant, CommerceInc engaged Open World, Inc. to host the websites at "www.2e.com" and perform other services for its customers under the trademark 2E.COM. On October 27, 2000, CommerceInc sold all of its website designs and hosting services to Complainant, through which transaction Complainant gained ownership of both the 2E.COM trademark and the <2e.com> and <commerceinc.net> domain names. Complainant refers to the affidavit by Chad Hall to support its contentions in this respect.
Furthermore, sometime in 2002, Complainant decided to let the registration for the <commerceinc.net> domain name lapse, because it was not using it and saw no reason to maintain the registration. According to Complainant, Respondent then stepped in and registered that domain name for itself, which it has a perfect right to do.
However, by gaining control of the domain name, Respondent also gained control of the e-mail relating to the domain name, including email@example.com.
Then, according to Complainant, on January 9, 2003, Respondent used that domain name address and falsely represented to the Registrar that it was Registrants authorized Administrative Contact and Technical Contact for <2e.com>, and directed the Registrar to transfer the control of the "2E.COM" website from Complainant to itself.
According to the affidavits by Chad Hall and also by Kristi Owens (Controller of Open World, Inc.; see further below), Complainant has done business under the 2E.COM trademark and has attracted clients throughout the country. Before Respondent took over the domain name, Complainant hosted websites for businesses from coast to coast in the United States. Because of the takeover by Respondent of the domain name, Complainant can no longer service its customers websites and both Complainant and its customers have been irreparably damaged.
Identity or confusing similarity
In this respect, Complainant claims common law trademark rights in 2E.COM which was used by Complainant for the provision of website hosting services. Complainant stresses, with reference to Dolce & Gabbana S.p.A v. Victory, WIPO Case No. D2001-1174 that a trademark in a domain name dispute may also be an unregistered or common law trademark.
According to Complainant the domain name at issue is obviously identical to the trademark in which Complainant has rights.
Rights or Legitimate Interests
In this respect, Complainant first states that Respondent is not a legitimate business; letters to its CEO Alice Travis were returned as undeliverable and calls to the telephone numbers revealed that no one had heard of Alice Travis. Likewise, according to Complainant, the address and telephone number that Respondent gives for itself are not legitimate, as telephone calls are futile because the answering person had never heard about Domains, BVI, and much less the Internet.
Respondent has never offered any services under the 2E.COM trademark and has not developed an active website; the only thing that Respondent has done is trying to sell it by putting it up for auction at eBay. In this respect Complainant refers to the affidavit by Kristi Owens. As further developed below in the context of bad faith, Respondent agreed to sell it back to Complainant but at the same time agreed to sell it to Ms. Owens; thus, apparently, Respondent was willing to sell the domain name to as many people as possible but was never willing to execute and notarize the registrant name change agreement necessary to effect the transfer.
As indicated above and supported by the affidavit indicated above, Respondent took over the domain name by fraudulently representing to the Registrar that it was the authorized Administrative and Technical Contact for Pipe9 Corporation, which was the registrant at that time. According to Complainant, such a takeover can never gain good title to the property.
Furthermore, Complainant alleges that Respondent is not using the <2e.com> domain, as the website is blank and the only interest of Respondent is to sell the domain name. In similar circumstances, a WIPO Panel in Experian Information Solutions, Inc v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367 found that a Respondent did not have any legitimate interests in the disputed domain name.
Consequently, in the view of Complainant, Respondent has no rights or legitimate interests in the domain name at issue.
Registration and Use in Bad Faith
In this respect, Complainant first alleges that it sent a cease and desist letter demanding the return of the domain name, to Respondent and the CEO of Respondent via UPS Overnight Mail and via e-mail. The letter was returned as undeliverable but the e-mail went through. No replies were received.
As the actions in relation to the domain name had been so disruptive and in the feeling that the ICANN proceedings take so long, Complainant contacted Respondent by e-mail on February 7, 2003, asking for a demand and got, the same day, a reply: "Great Idea. Your offer?" Complainant offered USD 1,000 but Respondent asked for USD 1,500. Complainant accepted the offer and asked for an escrow agent whom the parties could use to exchange the sum for a signed and notarized change agreement. Respondent refused, however, to provide the name of such an agent and to provide the necessary document.
According to the affidavit by Ms. Owens, she contacted Respondent and offered to purchase the domain name at issue in saying in an e-mail to Respondent that she "was very interested in obtaining the domain name <www.2e.com> from your company." To this Respondent replied: "Hello. This domain is for sale. Please make offer." Ms. Owens offered USD 500 to which Respondent replied: "Too small" and Ms. Owens then in turn offered USD 1,000 which was accepted. Respondent signed a Domain Name Transfer Agreement whereby it would transfer the domain name at issue in return for USD 1,000, but refused, according to Complainant, to sign and notarize a registrant name change agreement which would be acceptable to Network Solutions, Inc.
Complainant stresses that Respondent did not pay anything for the domain name at issue but then tried to auction it on eBay and also agreed to sell it both to Complainant and to Ms. Owens. Complainant alleges that Respondent knows that what it is doing is wrong and that is why Respondent hides behind false names, false addresses and telephone numbers of other persons.
Complainant alleges that obtaining a domain name which incorporates the trademark of another party in order to sell it is evidence of bad faith registration and use as is also selling a domain name at prices well in excess of reasonable out-of-pocket expenses.
In summary, Complainant alleges that the actions by Respondent constitute clear and convincing evidence of its registration and use in bad faith.
In accordance with Paragraph 4(i) of the Policy and for the reasons set out by Complainant, it is requested that the Panel issue a decision that the domain name at issue be transferred to Complainant.
Respondent did not reply to Complainants contentions and is thus in default.
6. Discussion and Findings
Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
In the case of default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such conclusions therefrom as it considers appropriate. In this case no Response has been submitted and none of the contentions by Complainant have been contested, despite the opportunity given to do so. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.
In its Verification Response the Registrar has not explicitly indicated whether the Policy applies to the domain name at issue. On the other hand, the Registrar has referred to the Policy and Complainant has stated that the original registration agreement with Network Solutions relating to the domain name at issue, which was then taken over by Respondent, incorporates the Policy. Complainant has submitted evidence in this respect. The Panel therefore concludes that the registration agreement incorporated the Policy and that Respondent consequently is obliged to submit to a mandatory administrative proceeding as the one now initiated in respect of the domain name at issue.
It has obviously been difficult to establish contacts with Respondent in order to notify it about various actions taken in the case. According to the documents available, a DHL shipment containing the Complaint was delivered to Alice Travis and at least one of the e-mail communications passed. The Panel concludes that all reasonable efforts have been undertaken both by Complainant and by the Center to communicate the Complaint to Respondent and that there is, from this point of view, no obstacle to considering the case.
Complainant has submitted extensive evidence to support its contentions in the case, in particular copies of e-mails and affidavits. As regards the affidavits, the Panel has examined them and concludes that they shall be admitted as evidence in this case.
Paragraph 4(a) of the Policy directs that Complainant has to prove each of the following:
- that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights;
- that Respondent has no rights or legitimate interests in the domain name; and
- that the domain name has been registered and is being used in bad faith.
In the following parts of the decision, the Panel discusses each of these elements.
A. Identical or Confusingly Similar
In this respect, Complainant has, according to Paragraph 4(a)(i) of the Policy, to prove that the domain name at issue is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights.
The domain name at issue in this case is <2e.com>.
Complainant claims that it has common law trademark rights in the name <2e.com> basically because Complainant or CommerceInc Corporation from which it acquired the name has used that name in commerce for website hosting services as from some time in 1999. Complainant submits that the trademark at issue in domain name cases may also be an unregistered or common law trademark.
The Panel fully agrees with Complainant to the effect that the trademark rights invoked by a Complainant in domain name disputes may be based on a registered trademark as well as on an unregistered or common law trademark. The question is rather whether the name "2e.com" is such a common law trademark or, in other words, whether the use made of the name is sufficient to constitute a trademark right in it.
From Complainants allegations which, in this respect have not been contested by Respondent and which are supported by the affidavit of Mr. Hall, follow that the name was used to set up a number of model websites for businesses, accessible only through the "2e.com" website which were then marketed by the owner of the name/website "2e.com".
On the basis of the circumstances present in the case the Panel considers that the name "2e.com" has such a distinctiveness and has been used in business activities for the provision of website hosting services to such an extent that a common law trademark right can be assumed to have been established. For the purposes of this case the Panel consequently considers that common law trademark rights exist in the name "2e.com" in which Complainant presently has rights.
The domain name is the same as the trademark and the Panel finds it established that there is identity between the trademark in which Complainant has rights and the domain name at issue.
B. Rights or Legitimate Interests
In this respect, Complainant has, according to Paragraph 4(a)(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name at issue.
The basic allegation by Complainant is that Respondent took over the domain name by fraudulently representing to the Registrar that it was the authorized Administrative Contact and Technical Contact for the Registrant at that time, that Respondent never offered any services under the mark and never developed any website and also that Respondent put the domain name up for sale and tried to sell it to two persons at the same time without supplying the document necessary for a transfer.
The allegations by Complainant in this respect are supported by affidavits and have not been contested by Respondent, despite the opportunity given to submit comments.
On the basis of the statements made and the documents available to support those statements the Panel finds that Respondent has not used the domain name in connection with any website but has put it up for sale and in fact sold it to two persons without providing the documents necessary for the Registrar to transfer the domain name. The Panel concludes that these actions by Respondent, as well as other circumstances present in the case, are sufficient to establish that Respondent has no rights or legitimate interests in the domain name at issue.
C. Registered and Used in Bad Faith
In this respect, Complainant has, according to Paragraph 4(a)(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith. Furthermore, Paragraph 4(b) of the Policy sets out some circumstances which, in particular but without limitation, shall, if found present by the Panel, be considered as evidence of registration and use in bad faith.
Complainant invokes, as regards this issue, the circumstances relating to the various actions by Respondent which have been referred to under the previous heading and also alleges that a cease and desist letter and an e-mail of the same content were sent to Respondent without effect either because of impossibility to deliver or because no reply was received.
Complainant alleges that the various actions by Respondent constitute registration and use in bad faith under Paragraph 4(b)(i) of the Policy.
Respondent has not submitted any response to the allegations by Complainant, which are supported by evidence presented by Complainant.
The Panel notes in this context that it has obviously been very difficult to establish contact Respondent and that it might be assumed that, as Complainant alleges, Respondent has used fake names, addresses and phone numbers to conceal its true identity.
The Panel concludes that the offering for sale of the domain names to two persons at the same time and at a price which is obviously much higher than Respondents costs, if any, in connection with the domain name as well as the efforts to prevent any contacts, amounts to registration and use in bad faith in the sense of the Policy.
On the basis of these considerations, the Panel considers it established that the domain name at issue is identical with the trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and is being used in bad faith. The request of Complainant for a transfer of the domain name shall consequently be approved.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <2e.com> be transferred to Complainant.
Dated: April 22, 2003