ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: SOFTQUAD SOFTWARE INC.
Respondent: ELEVEN-ELEVEN LTD
Case Number: AF-0143
Contested Domain Name: hotmetal.com
Panel Member: David G. Post
 

 

1. Parties and Contested Domain Name

The Complaint in this case was filed by Softquad Software, Inc. on March 9, 2000. Respondent is Eleven-Eleven, Ltd.. The disputed domain is the second level domain "hotmetal.com" which was registered by Respondent with Network Solutions, Inc. in July, 1995.

2. Procedural History

The Com;laint, with voluminous annexes, was filed on March 9, 2000. A party acting on behalf of the Respondent, in response to the transmission of the complaint to Respondent by the Clerk's Office at eResolution, requested, and was granted, several extensions of time in which to file a response to the Complaint. As of the final deadline of May 23, 2000, no response had been received.

3. Factual Background and

4. Parties' Contentions

Because Respondent has not submitted a response to the Complaint, I take Complainant's factual allegations to be true. (See Section 5, below). Complainant asserts that it is the owner of trademark rights to the name Hotmetal, along with related names (Hot Metal, Hotmetal Pro, and the like) incorporating all or a part of the word Hotmetal, , in the United States, Canada, the United Kingdom, and the European Community ; documentary proof of those registrations has been provided to the Panel. Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the hotmetal.com domain name. In support of this assertion Complainant notes that :

(a) Respondent does not offer any bona fide goods or services at its website at www.hotmetal.com ;

(b) The word hotmetal is not derived from any literary allusion, nor does it have any association with the name of the Respondent or of the Respondent's business ;

(c) Respondent's website consists solely of a personal picture and message. There is only a single appearance of the word hotmetal on Respondent's website, and nothing to indicate that the hotmetal name is being used legitimately as a business name, personal identifier, or otherwise.

Complainant further asserts that Respondent registered, and is using, the domain name hotmetal.com in bad faith. As evidence, the Complainant has submitted a screen shot of Respondent's website, on which Respondent indicates that The Hotmetal domain name is for sale !. In addition, Respondent placed a similar message in the metatext field of the website's source code. Complainant also has brought forth an email message, ostensibly from Respondent, offering to sell the domain name to Complainant for $175,000.

5. Discussion and Findings

The procedure to be followed in a case such as this, in which the Respondent has failed to submit a timely response, is not entirely clear. According to Section 4(a) of the Uniform Dispute Resolution Policy (UDRP), in order to prevail the Complainant "must prove" that:

(i) [the] domain name [being challenged] 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.

Section 14 of the UDRP states the following:

"Section 14. Default

(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."

Reading these two provisions together, and notwithstanding the captioned title of Section 14, the UDRP appears to call for something other than a true "default judgment" in these circumstances. That is, judgment should not be automatically entered for the Complainant solely because the respondent has not made an appearance. Notwithstanding Respondent's failure to present its case, the burden of proving each of the three Section 5 elements remains with the Complainant. The factual allegations made by the Complainant are to be taken as true, and reasonable inferences are to be drawn from those facts; only, however, if it is reasonable to conclude, on the basis of those inferences, that the domain name is "identical or confusingly similar" to Complainant's trademark or service mark, that the 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" should Complainant prevail.

In this case, however, it is clear that Complainant should prevail. The evidence brought forward by the Complainant is amply sufficient to satisfy Complainant's burden of proving the existence of all three elements set forth in Section 5. The domain name in question is identical to a name in which Complainant has established trademark rights. Furthermore, the evidence supports the reasonable inference that the domain name has been registered, and is being used, primarily - indeed, solely - "for the purpose of selling, renting, or otherwise transferring the domain name registration to [Complainant] or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name."

6. Conclusions

For the reasons set forth above, the Complainant's request is granted and, in accordance with Section 3(c) of the UDRP, the Panel orders the domain name "hotmetal.com" transferred to the Complainant.

7. Signature

June 1, 2000

Washington, DC USA

(s) David G. Post

Presiding Panelist

i) I note that other Panels have taken a similar approach to this question; see eResolution Case No. AF-0145 (available at http://www.eresolution.com/services/dnd/decisions/0145.htm), Case No. AF-0100 (available at http://www.eresolution.com/services/dnd/decisions/bennihanna.htm), and Case No. AF-0150 (available at http://www.eresolution.com/services/dnd/decisions/0150.htm).