ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is ecast, Inc. of San Francisco, California. The Respondent is Ecorp.com of Indianapolis, Indiana. The contested domain name is ecast.com.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on August 4, 2000. The hardcopy of the Complaint Form was received on August 7, 2000. Payment was received on the same date.
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 and to obtain a copy of the Registration Agreement on August 7, 2000. The requested information was received August 9, 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 August 16, 2000. That date is the commencement date of the administrative proceeding.
On August 16, 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 complaint, official notification and all the annexes that were sent by Fedex to the respondent's various addresses, all were delivered according to the Fedex tracking system checked on August 22, 2000.
On September 4, 2000, the Respondent failed to respond to the complaint. On September 5, 2000, the Respondent's representative contacted the clerk's Office in order to submit his response for this case. Clerk's Office informed this party that according to ICANN Rules and eResolution Supplemental Rules, the due date for submitting a Response in this case was September 4, 2000.
On September 6, 2000, the Respondent's representative submitted a late response for the consideration of the appointed Panelist. The Respondent's Representative was informed that this document would be forwarded by the Clerk's Office to the appointed Panelist, at his request, according to the mandate of Art. 5(e) and Art.12 of ICANN Rules.
On September 6, 2000, the Clerk's Office contacted Mr. G. Peter Albert, Jr., and requested that he act as panelist in this case.
On September 8, 2000, Mr. G. Peter Albert, Jr. accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On September 8, 2000, the Clerk's Office forwarded a user name and a password to Mr. G. Peter Albert, Jr., allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On September 8, 2000, the parties were notified that Mr. G. Peter Albert, Jr. had been appointed and that a decision was to be, save exceptional circumstances, handed down on September 21, 2000.
On September 8, 2000, the appointed Panelist, Mr. G.P. Albert, was informed by the Clerk's Office of the Respondent's requests to submit a late response and to appoint a three member Panel for this case. On the same date, Mr. Albert accepted the Respondent's late response and the Clerk's Office proceeded to forward the response to the Panelist. The parties were informed accordingly.
On September 14, 2000, Mr. Albert granted the Respondent's request regarding the constitution of a three member Panel to decide this case. On September 15, 2000, the parties were informed accordingly.
On September 18, 2000, the Clerk's Office informed Mr. Albert that the appointment of a 3 member Panel as a consequence of a late response request is an exceptional situation, and therefore, the selection of the Panel will be done according to eResolution Supplemental Rules Sub-section 3, Art.8 (e) and to eResolution previous practice. Therefore, a preliminary signed decision was requested from the Panelist, acknowledging the Respondent's requests (accepting the Respondent's late response and accepting the 3-member Panel). Mr. Albert was also informed that he will be proposed as candidate to the Presidency of the Panel and that the Parties will have the final decision on his appointment.
On September 18, 2000, Mr. Albert submitted the signed version of his preliminary decision as requested by the Clerk's Office. On the same date, the Clerk's Office informed the Parties of the instructions to be followed in order to select the members of the Panel.
On September 19, 2000, the Representative of the Complainant agreed to the candidacy of Mr. Albert as President of the Panel. The Respondent's Representative agreement was received on September 22, 2000.
On September 22, 2000, the Clerk's Office informed Mr. Albert of the Parties' decision and requested his services to act as President of the Panel for this case. On the same date, Mr. Albert accepted to act as President of the panel and forwarded his signed Declaration of Independence and Impartiality to the Clerk's Office.
On September 25, 2000, the Clerk's Office confirmed the appointment of Mr. Albert as President of the Panel to the Parties. On the same date, the Representative of the Complainant submitted her list of three candidates to act as Co-Panelists.
On September 26, 2000, the Clerk's Office received the Complainant's additional fees for the constitution of the three-member Panel. The Respondent's fees were received on September 28, 2000.
On September 28, 2000, Clerk's Office contacted Mr. David Sorkin and Mr. Scott Donahey and requested that they act as Co-Panelists for this case.
On September 28, 2000, Mr. Sorkin accepted to act as a Co-panelist in this case and forwarded his signed Declaration of Independence and Impartiality. On September 29, 2000, Mr. Donahey forwarded his signed Declaration of Independence and Impartiality, accepting to act as Co-Panelist.
On September 29, the Clerk's Office forwarded a user name to each of the two Co-Panelists, allowing them to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System. Mr. Albert was given access to the case on September 8, 2000.
On September 29, 2000, the parties, the Registrar and ICANN were notified that Mr. G.P. Albert has been appointed President of the Panel and that Mr. David Sorkin and Mr. Scott Donahey have been appointed as Co-panelists, and that a decision was to be, save exceptional circumstances, handed down on October 12, 2000.
3. Factual Background
Complainant incorporated in Delaware under the name e-cast, Inc. on October 15, 1998. Complainant contends that since April 13, 1999 it has been exclusively using the name Ecast and began using the mark Ecast in commerce in July, 1999. On July 12, 2000, Complaint filed an intent-to-use trademark application for the mark Ecast in the U.S. Patent and Trademark Office.
Respondent registered the domain name ecast.com on October 24, 1997. Respondent contends that the domain name was registered as part of Respondent's business strategy to provide an "interlinking of numerous web-based businesses." As part of this business strategy, Respondent has registered several hundred domain names including numerous domain names combining the letter "e" with a word or phrase and numerous domain names including the term "cast."
4. Parties' Contentions
Complainant contends Respondent's real intention in registering hundreds of domain names, including the ecast.com domain name, is to resell, rent, or otherwise transfer the domain names for profit. Complainant further contends that Respondent's posting "Coming Soon" and "Coming in Summer 2000" messages at the ecast.com and other of Respondent's domain names is a ruse to create the illusion of preparations to use the domain names in order to meet ICANN's rules and policy's regarding establishing Respondent's rights or legitimate interests in the domain names.
Respondent contends that it selects domain names based on market appeal and industry trends, not on the existence of trademarks. Respondent contends that because its business strategy involves developing interlinked domain names, it has focused its efforts over the last couple of years on obtaining domain names rather than the construction of websites. Respondent has already established operating websites at several of its domain names such as dsl.com, thevibe.com, and ecorp.com and claims that content is now being developed for other of its domain names.
5. Discussion and Findings
Paragraph 4(a) of ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) requires that Complainant prove each of the following:
1) that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2) the respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
Typically, Complainant attempts to establish that the domain name was registered and is being used in bad faith by submitting evidence of bad faith with the Complaint. Paragraph 4(b) of the UDRP sets forth four possible circumstances evidencing bad faith. In response, Respondent attempts to establish its rights or legitimate interests in the domain name by submitting evidence with the Response. Paragraph 4(c) of ICANN's Policy sets forth three circumstances for establishing Respondent's rights or legitimate interests in the domain name.
Paragraph 4(b) of ICANN's Policy states that bad faith registration and use can be proven by submitting evidence estabishing:
1) the respondent registered or 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 a trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
2) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
3) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4) by using the domain name, the respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or a product or service on the respondent's website.
Complainant alleges that Respondent "has registered the Ecast name, and dozens of others, primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the rightful owner of the Ecast name." In support of its position, Complainant has submitted an April 19, 2000 press release in which Respondent invited interested parties to submit bids to purchase some of Respondent's domain name collection, including ecast.com and dtv.com, in order to raise capital to develop some of Respondent's other key domain names.
A respondent's offer to sell a domain name does not necessarily prove that its primary purpose in registering the domain name was to sell it. In this case, Complainant's earliest alleged use of the term Ecast is October 15, 1998, the date Complainant filed incorporation papers in the state of Delaware. Respondent claims to have registered ecast.com on October 24, 1997, almost a year before Complainant's first use. Respondent submitted a copy of the ecast.com Whois record indicating the record was created on October 24, 1997. There is no evidence that Respondent knew of Complainant or had the requisite bad faith at the time Respondent registered the domain name. Thus, Complainant has failed to establish bad faith registration and use as required by ICANN's Policy.
REVERSE DOMAIN NAME HIJACKING
Paragraph 15(e) of ICANN's Rules states that if Panel finds that the complaint was brought in bad faith, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding." Respondent contends that Complainant is guilty of reverse domain name hijacking because Complainant clearly could not satisfy the elements under the UDRP due to the fact that Respondent registered the domain name before Complainant began using the term Ecast. Respondent further contends that even an initial investigation into the date that Respondent first registered the domain name would have revealed this fact.
One panelist believes that these facts, all of which were or should have been known to Complainant when it filed the complaint, clearly demonstrate the impossibility of proving that the domain name was registered in bad faith. Thus, the panelist would find that Complainant has abused the UDRP process in an attempt at reverse domain name hijacking. See, e.g., K2r Produkte AG v. Trigano, ICANN Case No. D2000-0622 (WIPO Aug. 23, 2000); Loblaws, Inc. v. Presidentchoice, Inc., ICANN Case No. AF-0170 (eResolution June 7, 2000); Shirmax Retail Ltd. v. CES Marketing Group Inc., ICANN Case No. AF-0104 (eResolution Mar. 20, 2000). However, a majority of the panel finds that Complainant's reliance on Respondent's offer to sell the domain name and the offer for sale's applicability under the UDRP precludes a finding of reverse domain name hijacking.
For the reasons set forth above, the panel finds that Complainant has not met all of the requirements of the UDRP. Thus, Complainant's request to transfer the ecast.com domain name to Complainant is DENIED.
(s) G. Peter Albert, Jr.
(s) David E. Sorkin
(s) M. Scott Donahey