ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Spincycle Inv. of Scottsdale, Arizona (U.S.A.). In its Complaint, filed online with eResolution on April 4, 2000, Spincycle seeks the transfer of a domain name registered in the name of Spin Cycle of Schaumberg, Illinois (U.S.A.). The domain name in question is spincycle.com.
Complainant is represented by counsel Mr Steven Austermiller of the Chicago law firm Pedersen Houpt.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on April 4, 2000. The hardcopy of the Complaint Form was received on April 10, 2000. Payment was received on the same day.
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 if the contested Domain Name referred to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry leads the Clerk of eResolution to the following conclusion: the Registrar is Network Solutions, the Whois database contains all the required contact information, the contested Domain Name refers to an inactive Web page and the Complaint is administratively compliant.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk fulfilled all his responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on April 13, 2000. That date is the commencement date of the administrative proceedings. The Respondent had 20 days from that date to send a Response Form to eResolution (or May 2, 2000).
On April 13, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceedings.
On April 13, 2000, the Clerk's Office received two emails stating that email@example.com had «transient non-fatal errors».
On April 25, 2000, the documents sent to the Respondent by UPS at the postal address stated on the Whois database were returned to eResolution by UPS.
On April 26, 2000, the Complainant was asked by the Clerk's Office to choose a mutual jurisdiction, accordingly to the Regulation.
On April 26, 2000, the Complainant choose the jurisdiction of the domain name holder's address as shown for the registration of the domain name in the Registar's Whois database at the time the Complaint was submitted to Dispute.org/eResolution Consortium.
On April 27, 2000, the Complainant's choice of jurisdiction was posted online by the Clerk's Office.
On May 4, 2000, the Respondent submitted, via email, what appeared to be his Response form, although the Clerk's Office could not open the attached document to the email. But the email stated: «attached document is response to case #176».
On May 6, 2000, the Clerk's Office sent a message to the Respondent stating that the Response Form was not received within the twenty day deadline, and therefore that the administrative proceedings would be conducted on the Complaint only, unless the Panel should decide otherwise.
On May 8, 2000, the Respondent sent the Clerk's Office an email stating that the Response form was sent to eResolution on May 3, 2000 and not on May 4, 2000 and that «the date that appears on the original message is based on a Greenwich Mean Time date stamp, which the email provider in question (USA.NET/Netaddress) uses as their universal time signature».
On May 10, 2000, the Clerk's Office replied to that email and again informed the Respondent that the Panel may reconsider the decision of the Clerk's Office.
On May 10, 2000, the Clerk's Office contacted Mr. Riccardo Roversi, and requested him to act as panelist in this case.
On May 15, 2000, Mr. Riccardo Roversi, accepted the appointment as panelist in this case and filed the necessary Declaration of Independence and Impartiality. On May 16, 2000, the Clerk's Office forwarded a user name and a password to Mr. Riccardo Roversi,
allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On May 16, 2000, the parties were notified that Mr. Riccardo Roversi had been appointed and that a decision was to be, save exceptional circumstances, handed down on May 29, 2000.
3. Factual Background
The Complainant is Spincycle Inc., a company being the owner and operator of a chain of washing and drying laundry facilities. Complainant commenced its operations in 1996 and presently owns approximately 172 such facilities in over 25 urban areas in the United States. Complainant states that it intends to expand its operations into Canada and Mexico.
Complainant owns the service mark «SPINCYCLE» (filing date July 26, 1995 and registration number 2,051,510 of April 8, 1997) and states that the same is well known and well reputed among the public and therefore it represents a substantial part of Complainant's goodwill.
Complainant is also holder of the domain name spin-cycle.com, which was registered on October 27, 1997 (this information was acquired directly by lead panelist through betterwhois.com).
Respondent registered the domain name which is the subject of this dispute (spincycle.com) on March 28, 1996. Little else is known about Respondent. It is unclear whether Respondent is an individual or a corporate entity and no information at all is available regarding Respondent's activity.
As Complainant confirms in his Complaint Form (page 6, Illegitimacy), Respondent has never made use of the domain name in question and, in particular, has never established a web site at spincycle.com.
On February 17, 2000 Complainant sent Respondent a formal notice informing the latter that its registration of the domain name spincycle.com «dilutes the distinctiveness of, and also infringes, SpinCycle's SPINCYCLE® service mark». Complainant proves that this notice was sent both by registered mail and by e-mail (at the address firstname.lastname@example.org) and it further states that no reply to this notice was ever received.
4. Parties' Contentions
Respondent has failed to file the Response within the time limit set by the Clerk's office and therefore this dispute, according to article 5(e) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the « Rules »), shall be decided on the basis of the Complaint alone.
On May 8, 2000 Respondent sent to Clerk's Office an e-mail in which it claimed that the Response was submitted within the above time limit. Lead panelist will deal with this preliminary issue in the following paragraph of this decision.
Complainant is requesting a decision ordering the transfer of the domain name in question and has based its claims on the following arguments.
Copy or Similarity
In Complainant's opinion, the domain name spincycle.com is identical to the United States Service Mark « SPINCYCLE », which Complainant owns.
In Complainant's opinion, the absence of any right or legitimate interest of Respondent to the domain name in question is confirmed by the following circumstances :
- apparently Respondent is not carrying on any business activity ;
- Respondent is not known by the domain name ;
- Respondent does not own any trade mark or service mark right in the domain name or any other similar expression thereto;
- Respondent has never made use of the domain name on the internet.
Complainant claims that the domain name spincycle.com was registered and is being used in bad faith because Respondent registered it in February, 1998 and therefore well after the date on which Complainant obtained its U.S. Service Mark, started using the same Service Mark and applied for the registration of the same.
Complainant also makes reference to the fact that Respondent did not reply to the formal notice sent by Complainant's counsel on February 17, 2000 (see Factual Background above).
Complainant further claims that Respondent is constructively aware that it has registered a domain name similar to Complainant's Service Mark and states that from this it could be inferred that either Respondent registered the domain name spincycle.com for the purpose of disrupting Complainant's business or for the purpose of selling, renting or otherwise transferring the same domain name to third parties.
5. Discussion and Findings
As far as the Respondent's claim regarding the timely submission of the Response is concerned, the Clerk's office informed the lead panelist that :
«On May 4, 2000, the Respondent submitted, via email, what appeared to be his Response form, although the Clerk's Office could not open the attached document to the email. But the email stated: «attached document is response to case #176».
On May 6, 2000, the Clerk's Office sent a message to the Respondent stating that the Response form was not received within the deadline of twenty days, and therefore that the administrative proceedings shall be conducted on the basis of the Complaint only, unless the Panel decides otherwise.
On May 8, 2000, the Respondent sent to the Clerk's Office an email stating that the Response form was sent to eResolution on May 3, 2000 and not on May 4, 2000 and that «the date that appears on the original message is based on a Greenwich Mean Time date stamp, which the email provider in question (USA.NET/Netaddress) uses as their universal time signature».
On May 10, 2000, the Clerk's Office replied to that email and again informed the Respondent that the Panel may reconsider the decision of the Clerk's Office».
According to article 3(a) and 3(b) of eResolution Supplemental Rules (the « Supplemental Rules »), lead panelist has the power to extend time limits. However, lead panelist decided not to exercise his power in this regard since it appears from the above circumstances that Respondent's failure to comply with the time limit set by the Clerk's office was unjustified.
The Clerk fulfilled his responsibility under article 2(a) of the Rules on April 13, 2000. As a consequence, Respondent should have submitted the Response Form by May 3, 2000 (in this respect the Clerk's Office makes a minor mistake when it states that the Response should have been submitted by May 2, 2000, since - in lead panelist's opinion - the 20 day term starts on the day after the date of compliance with article 2(a) requirements, dies a quo non computatur in termine). On May 4, 2000 Respondent sent to the Clerk's Office an e-mail message with an attachment which, Respondent claims, was « response to case #176 ». However the Clerk was not able to open the attachment and this should be interpreted, in lead panelist's opinion, as a failure to submit the Response within the time limit provided by the Rules. Lead panelist's decision is based on the following issues :
- according to article 5(b) of the Rules, the Response must be submitted (in the first place) in hard copy and (in the second place) in electronic format ;
- article 7(b)(ii) of the Supplemental Rules confirms the above principle, stating that the Response must be submitted to the Clerk's Office both in electronic format and in hard copy format ;
- had Respondent sent his Response in both formats, Clerk's Office would have been in the position to immediately grant an extension of the time limit for the submission of the electronic version of the same response.
According to the ICANN Uniform Domain Name Dispute Resolution Policy (the «Policy»), Complainant seeking transfer or cancellation of a domain name shall prove that each of the elements described in article 4(a)(i), (ii) and (iii) of the Policy are present. These elements are the following:
(i) the domain name is identical of confusingly similar to a trademark or service mark in which the complainant has right;
(ii) respondent has no rights or legitimate interests in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
As far as the first element (Copy or Similarity) is concerned, the lead panelist holds that Complainant submitted sufficient evidence to prove that its claim is grounded. However, lead panelist does not completely agree with Complainant's contention that the domain name spincycle.com is "identical to the United States Service Mark, SPINCYCLE" since Complainant registered and makes use of a graphic service mark and a domain name may not, by definition, be identical to a logo since it lacks all graphic components of the same.
Notwithstanding the above, it can not be disputed that, from the internet point of view, the domain name in question (spincycle.com) is certainly confusingly similar to Complainant's service mark (spincycle in graphic form).
As far as the second element (Illegitimacy) is concerned, lead panelist is of the opinion that - from a general point of view - the Policy is not completely clear as to the attribution of the burden of the proof in connection with this element. While article 4(a) states that Complainant shall prove the illegitimacy of the registration, article 4(c) of the Policy states that "any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate ….. rights or legitimate interests to the domain name". From the wording of the above provision (which makes use of the words "proved", "demonstrate"), it seems to lead panelist that Respondent has to prove that it has rights or legitimate interests to the domain name in question. In fact, Complainant must provide evidence that Respondent has rights or interests to the domain name, but - in order to comply with such provision - it could simply state that "Respondent has no rights or legitimate interests to the domain name being the subject of this dispute"; it is then up to the Respondent to provide sufficient evidence of any of the circumstances mentioned (by way of example) in article 4(c) of the Policy. Should Respondent be able to submit such evidence, Panel may declare that the complaint was brought in bad faith according to article 15(e) of the Rules; should Respondent fail to provide such evidence, Complainant's statement should be presumed as true.
In the present case, however, Respondent failed to submit his Response and therefore, according to the above mentioned article 5(e) of the Rules, lead panelist shall "in the absence of exceptional circumstances" decide the dispute on the basis of the Complaint. In lead panelist's view, this provision may only be interpreted in the sense that Complainant's submissions should be deemed as being complete and true unless there is prima facie evidence that they are false or inaccurate. Lead panelist holds that, as far as the burden of the proof of illegitimacy is concerned, such prima facie evidence is the only circumstance which could amount to an "exceptional circumstance" for the purpose of article 5(e) of the Policy.
On the basis of the above, lead panelist holds that Complainant has established this element.
As far as the third element (Bad Faith) is concerned, lead panelist holds that Complainant failed to submit evidence of the same.
Article 4(a)(iii) of the Policy relates to the requirement of bad faith registration and use and the provision is stated in the conjunctive. It is not enough for Complainant to prove that the domain name was registered in bad faith or, as an alternative, that it is being used in bad faith: both circumstances should be proved to the satisfaction of the Panel (see case AF-0121 launchpad.com).
In the present case Complainant states that spincycle.com was registered in bad faith, since Respondent obtained the first registration well after Complainant started its activity, applied for the registration of its service mark and obtained such registration. Although lead panelist found that the registration date (February, 1998) referred to by Complainant is wrong (the domain name in question was registered on October 27, 1997), this should be considered as sufficient evidence of the fact that the domain name was registered in bad faith.
However, no evidence has been submitted of any bad faith use by Respondent of the domain name in question. Complainant was not able to give evidence of any use at all (including any use in good faith) by Respondent of the domain name in question. As Complainant recognizes, Respondent never established a web site at the domain name spincycle.com and never tried to sell the domain name, he did not even reply to Complainant counsel's formal notice, but this passivity may not be intended as a bad faith use for the purpose of the Policy (see case AF-0156 arcturus.com). Furthermore, Respondent - as Complainant itself states - is not running any business, nor has it obtained any permission, licence or authorization to carry on any commercial activity.
The only use Respondent is making of the domain name spincycle.com is to maintain it dormant, but this could not amount to a bad faith use for the purpose of the Policy. The word "use" necessarily refers to an active behaviour and the absence of any behaviour may not be considered as a "use", nor as a "bad faith use".
One might say that Respondent is using the domain name in question since it is updating the relevant registration. However, on the basis of the present wording of the Policy, lead panelist is of the opinion that updating a domain name registration could not amount to an "use" of the same. But, even if one accepts that updating a registration means making use of a domain name, Complainant should nevertheless provide evidence of Respondent's specific bad faith and this evidence is not available in this case.
For the above stated reasons, lead panelist rejects the Complaint.
Signed this 29th day of May 2000 in Milan by the lead panelist Riccardo Roversi.
(s) Riccardo Roversi