ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. A Complaint was filed by the Complainant, COLUMBINE JDS SYSTEMS, INC., of Denver, Colorado, with eResolution naming as the Respondent, JIN LU, the registered owner of the disputed domain name - ADSERVE.COM.
2. The procedural history of this case is set out in detail in the letter sent by Me Emamanuelle LéTourneau, Clerk, eResolution, to Maurice Wolf, lead Panelist, appointed to hear this case. A copy of this letter is attached to this decision as Exhibit I.
3 The Complainant presents evidence in the form of a certificate issued by the U.S. Patent and Trade mark Office showing that the Complainant, Columbine JDS Systems, Inc., is the present owner of the trademark, ADSERVE, that had been originally registered with the U.S. Patent and Trademark Office on May 20, 1997 by KTS Automation, Inc.; that such trademark had been in use since June 1971, and that such trademark had been assigned to Columbine JDS Systems, Inc. on June 28, 1999. Upon receiving the Complaint eResolution verified that the domain name of adserve.com had been registered with Network Solutions, Inc. by Jin Lu in January 1999. This set the stage for the domain name dispute in this case.
4. A. The Complainant states that the trademark, Adserve is used in connection with its goods and services for computer software for advertising agencies and media buying organizations and alleges that the Respondent does not conduct any trade or business utilizing this domain name or similar mark and has no rights or legitimate interest in this domain name.
The Complainant further alleges that the Respondent has registered a large number of domain names and appears to be a speculator in domain names or a cyber squatter.
Complainant further alleges the Respondent's registration of the disputed domain name is in bad faith as the Respondent is presumed to have had notice of the prior registration of the trademark and that the continued use of this domain name is only to deny the complainant the right to use its mark .
The Complainant also states that a complaint was filed with Network Solutions, Inc, under that entity's prior policy on domain name dispute settlement procedures, which was terminated when Network Solutions, Inc, adopted the ICANN Domain Name Dispute Policy.
B. The Respondent alleges that he had no knowledge of the Complainant's trade mark when the domain name was registered and that he originally acquired the name for his partner who was working for an Internet advertising firm, Adknowledge. Although the domain name was never actually used, the Respondent further alleges that he decided to keep this domain name for his own use when his partner left this business, as its registration had been paid for two years.
The Respondent further alleges that he is not using the domain name in bad faith and would have no reason to do so. He further denies that he is a speculator in domain names for resale but admits that he does have an interest ['stake'] in another company which apparently owns many domain names. This company, the Respondent claims, is a legitimate business enterprise, which in effect, leases domain names for use by others.
5. The Uniform Domain Name Dispute Resolution Policy [hereafter the ICANN Policy], Paragraph 1, makes it clear that the ICANN Policy is incorporated in each Registration Statement by reference and that the Registrant is considered to know its contents. The ICANN Policy further states that a Registrant is bound by this Policy and that disputes between the Registrant and a third party over a domain name must be resolved by the system of arbitration conducted under the ICANN Rules called a 'mandatory administrative proceeding'. [See Paragraph 4 of the ICANN Policy].[All references to Paragraph numbers are to the respective paragraphs in the ICANN Policy, unless otherwise noted.]
The ICANN Policy was adopted in order to ensure that disputes arising from domain names could be resolved in an efficient manner that is fair to the parties to the dispute. Such parties are given the opportunity to present evidence to an independent and impartial arbitrator to support the claims made by the Complainant on the one hand, and for the Respondent, on the other, to demonstrate that the use of the disputed domain name is proper and in accordance with the ICANN Policy. [See Paragraph 4].
In the instant case, as noted above, the Complainant alleges that the Respondent registered and uses the disputed domain manner in a manner prohibited by the ICANN Policy. Paragraph 4a requires the Complainant to demonstrate that three elements of a case are present for either cancellation or transfer of the disputed domain name. These are:
a. That the domain name in question is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
b. That the Respondent has no rights or legitimate interests in respect of the domain name, and
c. The domain name was registered and is being used in bad faith.
The question before this Panel, therefore, is whether the Complainant has satisfied the requirements of Paragraph 4a with respect to these three elements..
(i) Is the disputed domain name identical or confusingly similar to the Complainant's trademark?
The Panel finds that the Complainant has met its burden of proof with respect to the question whether the disputed domain name is '. . . identical or confusingly similar to a trademark or service mark in which the complainant has rights.. . .' [Paragraph 4a(i).]
This finding is based on the evidence submitted by the Complainant in the form of a certificate issued by the US Patent and Trademark Office, as noted above, which proves that the disputed domain name [omitting the .com] is identical to that of the name registered by the Complainant.
While it is possible that the Complainant could have made a stronger case for his claim of confusion between the use of the trademark and the domain name by showing that consumers or others utilizing the Complainant's services were actually confused between the two or that the Complainant had lost business because of this confusion, we find that the level of proof that is required to meet the burden by the Complainant does not require the presentation of such additional tangible evidence. The existence of a trademark which is the same as or similar to the domain name, under such circumstances, is usually sufficient to demonstrate that such confusion is likely to exist.
(ii) Does the Respondent have any rights or legitimate interests in the domain name?
Undoubtedly, the registrant of a domain name acquires certain rights and interests in such a domain name by virtue of its registration. The ICANN Policy requires the Complainant to be able to demonstrate that the Respondent has not acquired any other interest or right in the domain name..[Paragraph 4c] Thus, the Registrant may show in its defense that the domain name is properly being used in the course of a business or other endeavor which is furthered by the use of the domain name. [Paragraph 4c(i)]
For example, a photographer, having registered the domain name, photoclick, may be said to have acquired rights or legitimate interests in the domain name if the name is being used in furtherance of his photographic business, even if another party claims that this domain name is identical or confusingly similar to that of a previously registered trademark. See e.g. Infospace.com Inc. v. Infospace Technology Co. Ltd., [Case No. D2000-0074, March 28, 2000].
In this particular case, however, we find that, although the Respondent claims that there was an intent to use the domain name in furtherance of his partner's business activities, he does not show that any such activities were actually carried out. Indeed, he admits that he was not actually using the domain name and that it had been 'warehoused'. Under such circumstances, we can only come to the conclusion that the Respondent had not acquired any such other interest or rights in the domain name and his claim, therefore, is invalid.
(iii) Was the domain name registered and it is being operated in bad faith?
The Complainant is required to demonstrate that at least one of the four situations detailed in Paragraph 4 b is applicable to both the registration and use of the disputed domain name. Proving bad faith in just one of these two situations is not sufficient.
The Respondent claims that he did have any actual knowledge of the existence of the Complainant's trademark at the time he registered the domain name. There is no evidence to the contrary. Nevertheless, we are of the view that while the potential registrant of a domain name has no obligation to search the trade mark registries of all the countries of the world, we are of the view that a US business person must be presumed to have knowledge of the existence of the Trade Mark Register of his own country and, as a prudent businessman, should make a search of such register before embarking on a business endeavor involving a domain name. We find that the failure to make even a rudimentary effort to undertake such a search to be negligent.
While such actions may not necessarily constitute bad faith in and of themselves, it is the view of this Panel that bad faith can be attributed to such actions if the Respondent is subsequently advised that the domain name chosen is identical to that of a registered trademark and does nothing to correct the situation, especially when taken in context of the Respondent's failure to make any legitimate use of the domain name. It is, therefore, our view that an inference may be drawn from a registrant's subsequent actions as to its intent in registering a domain name.
The Complainant alleges that the Respondent is a 'cyber squatter' or speculator in the sale of domain names. The Respondent denies this allegation, claiming that the company which in which he has an interest, noname.com, is a legitimate enterprise not in the business of selling domain names.
While, the Panel would have preferred affidavits on this matter and perhaps the opportunity to obtain additional evidence on this point, based on the statements contained in the Response, the Panel is of the view that there was no legitimate reason for the Respondent to maintain ownership of the domain name, even if we accept, arguendo, his statements that there may have been such a reason for the original registration. Furthermore, the fact that the Respondent's e-mail address is that of the company leasing domain names in which he claims he has only a 'stake' leads us to find that his interest in such company is greater than the Respondent admits. This, in our view, deepens the belief that the Respondent's actions regarding the use of the domain name were and continue to be in bad faith.
Accordingly we find that the registration and the utilization of the disputed domain name, adserve.com, were in bad faith and thus in violation of ICANN Policy.
In view of this finding we need not determine a whether the Respondent also registered the domain name for any unlawful purpose nor whether he knowingly used the disputed domain name in violation of any other applicable rules sand regulations, other than those cited above of the ICANN Policy and Rules.
6. Accordingly, the Complainant's request for transfer to it of the disputed domain name is granted and, in accordance with Paragraph 3c, the Panel orders the domain name of adserve.com to be transferred to the Complainant.
This decision of the Administrative Panel in Case No. AF-0137 was rendered on the 28th of April, 2000.
(s) Maurice Wolf