ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Shore Media Ventures Inc., headquartered in Westport, Connecticut. Respondent is Both Worlds Inc., located in New Canaan, Connecticut. The contested domain name is westportonline.com.
2. Procedural History
A first electronic version of a Complaint form was filed on-line through eResolution's Website on May 16, 2000 (case AF-0223). Since the Complainant wished to modify his Complaint extensively, he filed another Complaint, the electronic version of which was filed on-line through eResolution's Website on May 19, 2000. The first complaint was closed at that date. Payment was received on May 23, 2000. The hardcopy of the Complaint Form was received on May 29, 2000. The choice of jurisdiction was received on June 12, 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 if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry leads the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions, Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact, that Network Solutions, Inc. is the correct Registrar and to obtain a copy of the Registration Agreement on May 16, 2000. The requested information was received on May 22, 2000.
The Clerk's Office then 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 June 12, 2000. That date is the commencement date of the administrative proceeding.
On June 12, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
The Respondent never submitted a response neither via eResolution Internet site, nor in hard copy.
None of the e-mails were returned 'undeliverable'. The fax to Both World's inc was not received but the fax sent to MHZ Hostmaster was successful.
The complaint, official notification and all the annexes were sent by UPS to the respondent's various addresses. According to the UPS tracking system, the documents sent to MHZ Hostmaster were delivered. The documents sent to Both World's inc, a P.O. Box, were sent by registered mail. We are awaiting confirmation of receipt.
On July 6, 2000, the Clerk's Office contacted Ms. Sarah Cole, and requested that she acts as panelist in this case.
On July 6, 2000, Ms. Sarah Cole accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
3. Factual Background
The Complainant, Shore Media Ventures, Inc., is the owner of the service mark "Westport Online." Complainant acquired exclusive rights to this service mark and the Internet domain name "westport-online.com" from Donald Moffitt through an Asset Purchase Agreement, executed on February 7, 2000. Moffitt first used the mark "Westport Online" in September 1995, providing information and entertainment services through Internet web sites intended to serve businesses and residents in Westport, Connecticut and neighboring communities. Complainant uses the mark "Westport Online" in connection with providing the following specific kinds of information and entertainment services via its Internet website at the URL http://www.westport-online.com: - Community news - Directory listings of hyperlinks for community, and personal web sites - Listing of email addresses provided by local residents - Information about public meetings and institutions - Stock quotes and news links for local businesses that have stocks listed on major US exchanges - Online discussion forums aimed at local residents and businesses - Classified ad listings aimed at local residents and businesses - Hyperlinks to the Internet web sites of local businesses - Advertising for local businesses aimed at local businesses and residents. The site provides links to over 600 local web sites in total. The "Westport Online" service mark was first used in 1995 via the Internet domain name "moffitt.com". In July 1999, Moffitt registered the Internet domain "westport-online.com". In August 1999, he began to migrate "Westport Online" content and features to the "westport-online.com" domain. The"moffitt.com" domain name now redirects users seeking "Westport Online" content to the"westport-online.com" domain, which is now the sole repository of assets associated with the mark.
On February 22, 1999, Respondent registered the domain name "westportonline.com." On April 3, 2000, Respondent began marketing services on its "westportonline.com" Internet website. The services provided on Respondent's website are very similar to those offered on Complainant's website.
On April 19, 2000, counsel for Complainant sent a letter to Mark Trombetta of Both Worlds, Inc., demanding that Respondent cease using the mark "Westport Online" and the domain name westportonline.com because such use constituted trademark infringement and dilution. Respondent did not reply to the letter. Respondent ultimately e-mailed Complainant's representative, John Blossom, on May 8, 2000, asking that Complainant submit a monetary offer for purchase of the domain name and noting that it had invested time and money in developing its website and "would be looking for a significant return on our investment." The e-mail requested a prompt reply because Respondent planned to commit additional resources to developing the website, should it retain the name.
4. Parties' Contentions
Complainant contends that Respondent has registered a domain name, westportonline.com, that is confusingly similar to its service mark "Westport Online." It further contends that Respondent has no rights or legitimate interest in the domain name because Complainant has "seniority of use." Finally, Complainant argues that Respondent has acted in bad faith by attempting to extort money from Complainant in exchange for Respondent's release of the contested domain name, by failing to use the contested domain name for over a year after registering it, and by using the term "Westport Online" on its website in a variety of ways that are deceptive and confusing and calculated to direct consumer traffic away from the Complainant's website.
The Respondent failed to file a Response within the time limit set by the Clerk's office. Thus, this dispute, according to Rule 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. See eresolution Case No. AF-0176 (available at http://www.eresolution.com/services/dnd/decisions/0176.htm )
5. Discussion and Findings
According to section 4(a) of the Uniform Dispute Resolution Policy (UDRP), in order to prevail, a Complainant must prove that :
(i) [the challenged] 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 the domain name ; and
(iii) [the] domain name has been registered and is being used in bad faith.
Rule 14 of UDRP, entitled « Default, » states the following :
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.
As Arbitrator Post in Softquad Software, Inc. v. Eleven-Eleven Ltd, AF-0143 (http://www.eresolution.com/services/dnd/decisions/0143.htm), held, Rule 14 of the UDRP does not appear to call for a « default » the way that term is traditionally used in a court of law. Instead, Rule 14 states that the Panel should render a decision on a Complaint, in the absence of a response, after evaluating the evidence presented by the Complainant and drawing appropriate inferences from that evidence. See id.
Evaluating the evidence from this perspective, this Panel concludes that Complainant has met its burden of proof on all three of the required elements in section 4(a) and should prevail. First, the challenged domain name, although not identical to Complainant's service mark, satisfies the « confusingly similar » standard articulated in section 4(a) because the only difference between the domain name and the service mark is the capitalization of the words « Westport » and « Online,» the space between the two words, and the addition of the « .com » to those words. See case no. AF-0148 (May 14, 2000) (http://www.eresolution.com/services/dnd/decisions/0148.htm).
Second, Respondent has no right or legitimate interest in the domain name westportonline.com because it registered the name over four years after Complainant began using its service mark "Westport Online" and did not launch a website using the contested domain name until Complainant had already launched its website using a virtually identical domain name.
Although a close question, Complainant has also successfully demonstrated that the domain name was registered and is being used in bad faith, thus satisfying the requirements of section 4(a)(3). According to the UDRP Policy, evidence that section 4(a)(3) has been violated can be proven by, among other things, establishing "(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark . . . for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or . . . (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location of a product or service on your web site or location."
Complainant contends that both sections 4(b)(i) and 4(b)(iv) are satisfied because Respondent has attempted to sell the domain name to Respondent and has used the domain name to intentionally attract, for commercial gain, Internet users to the Respondent's web site.
This Panel concludes that Complainant can satisfy the provisions of section 4(b)(iv) but not 4(b)(i). Section 4(b)(i) contemplates that the Respondent acquired the domain name "primarily" for the purpose of selling the domain name registration to Complainant, the service mark owner, for "valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name." See section 4(b)(i). Respondent's use of the domain name to create a functioning and active website suggests that it did not register the domain name "primarily" to sell it to Complainant. Moreover, although Respondent did suggest, via e-mail, that it was willing to sell the name to Complainant, there is no evidence that it ever demanded a price for the name. Thus, it is difficult to conclude that Respondent demanded consideration in excess of its costs. The elements of section 4(b)(i), therefore, are not satisfied.
Complainant's evidence does, however, satisfy section 4(b)(iv). That section requires that Respondent use the domain name to intentionally attract, for commercial gain, Internet users to the Respondent's web site. Again assuming the validity of the Complainant's service mark and its alleged seniority of use of the mark, the Panel concludes that the similarity between the Respondent's domain name and Complainant's service mark and domain name is remarkable and will clearly cause consumer confusion that will injure Complainant's business. The remaining question, then, is whether Respondent intended to exploit this confusion to attract visitors to its web site for commercial gain. See AF-230a and AF-230b (www.eresolution.com/services/dnd/decisions/0230.htm) Given the similarities between the names, the conclusion that Respondent must have been aware of Complainant's service mark and established web site at the time it finally launched its own web site seems inescapable. The extraordinary similarities between the services offered by Respondent's web site and Complainant's as well as the similarities in the looks of the two sites further suggest the likelihood that Respondent was attempting to divert Internet users from Complainant's to Respondent's web site for purposes of commercial gain. Respondent's failure to file a response offering a legitimate reason supporting its decision to use a virtually identical domain name to offer virtually identical services strengthens the inference that Respondent has acted in bad faith. In light of this evidence, Complainant has established that Respondent used the contested domain name in order to attract Internet users to its site, for commercial gain.
For the reasons set forth above, the Complainant's request to transfer the contested domain name is granted.
July 11, 2000
Columbus, Ohio USA
(s) Sarah Rudolph Cole