ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1 Parties and Contested Domain Name
The Complainant is Miles D., Ltd. dba Jazz Alley, of 2033 Sixth Avenue, Seattle, Washington, U.S.A. 98121-2526.
The Respondent is Tokaido Shosha of 0026Chuo-ku, Tokyo-to, Japan.
2 Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on August 16, 2000. The hardcopy of the Complaint Form was received on August 22, 2000. Confirmation of payment was received on August 18, 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.
This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Capital Networks Pty., Ltd., the Whois database contains all the required contact information, the contested Domain Name jazzalley.com resolves to an inactive Web page. The Complaint is administratively compliant.
An e-mail was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement on August 7, 2000. Numerous reminders were sent. The requested information was received August 29, 2000.
The Clerk's Office 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 29, 2000. That date is the commencement date of the administrative proceeding.
On August 29, 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 emails to the domain name holder at the Hotmail email address in the Registrar's database were successful. The emails to the email@example.com were returned 'undeliverable'. The faxes failed.
The complaint, official notification and all the annexes were sent via registered mail with proof of service to the respondent. The documents were returned.
The Respondent did not submit a response, neither via the eResolution Internet site nor a signed version.
3 Factual Background
The Complainant does business under the name "Dimitriou's Jazz Alley" and is known as "Jazz Alley". Jazz Alley is a premiere jazz club in the United States, and is well known in Seattle, the West Coast of the United States, and amongst jazz lovers internationally.
The club has been in operation at its present location since 1985. The Complainant has been using JAZZ ALLEY as the name (or part of the name) for this club continuously since 1985. John Dimitriou is the manager of the club. A predecessor in interest, also associated with John Dimitriou, used the name JAZZ ALLEY since as early as 1980. John Dimitriou is the prime contact of the Complainant in relation to this dispute.
The Complainant is the owner of three United States Trademark Registrations in respect of the mark JAZZ ALLEY. The Trademark Registrations are: U.S. Reg. No. 2,341,397 (filed on July 1, 1999), U.S. Reg. No. 2,341,396 (filed on July 1, 1999) and U.S. Reg. No. 2,351,829 (filed on July 1, 1999).
The Complainant is the applicant in respect of two United States Trademark Applications in respect of the mark JAZZ ALLEY. The Trademark Applications are: U.S. Application No. 75/741,023 and U.S. Application No. 75/739,913.
The Respondent became the Registrant of the contested domain name on July 29, 2000.
The prior registrant of the contested domain name is said to be Island Palms Group, Inc. ("Island"). Island's administrative, billing and technical contact for the contested domain name was Clark Shipley. Shipley is a former employee of the Complainant. In 1997, Shipley offered to sell the domain name to the Complainant for US$5,000. In March 2000, Shipley emailed the Complainant as follows: "Thank you for your inquiry. We are always open to offers for any of our domain names. What do you have in mind?" The Complainant's attorney wrote to Island in June 2000 alleging trademark infringement by Island in relation to the contested domain name, and requested transfer of the domain name.
The domain name was transferred to the Respondent on July 29, 2000.
When the panel visited the website www.jazzalley.com on September 14, 2000, the panel found that the address did not resolve to an active website.
When the panel visited the website www.jazzalley.com on September 26, 2000, the panel found a single page displaying the message "Jazz Alley FashionsTM Fine designer cases and handbags from Tokyo, Japan since 1974. Now on the web - soon commerce enabled". The website did not provide any contact details.
4 Parties' Contentions
The Complainant claims that its business is recognised nationally and internationally as one of the premiere jazz clubs in the United States, particularly on the West Coast. The Complainant states that "for two decades, Complainant has hosted many of the most famous jazz artists under the JAZZ ALLEY mark at its Seattle, Washington venue."
The Complainant contends that the transfer by Island of the contested domain name to the Respondent was not a legitimate transfer, but an attempt to shield the previous Registrant from liability and to keep the Complainant from rightfully possessing the contested domain name.
The Complainant states that the relationship between Island and the Respondent is unclear.
The Complainant provided the panel with copies of correspondence to Island from both the Complainant and its attorneys dated June 8, 2000 and June 26, 2000.
The Complainant contends that the Respondent provided false contact details to the Registrar, Capital Networks Pty Ltd, when applying for the contested domain name. The Complainant provided the panel with copies of correspondence to the Respondent from the Complainant's attorneys. The Complainant's attorneys sent emails to the Registrant on August 4, 2000 and August 7, 2000. The Complainant received no response to the emails. The Complainant's attorneys attempted to send a letter to the Respondent by Federal Express. Federal Express attempted to deliver the letter in Japan, to the address supplied by the Respondent to the Registrar, on August 7, 2000 and August 10, 2000. These attempts were unsuccessful.
The Respondent failed to file a Response within the time limit set by the Clerk's office. Thus, in accordance with Rule 5(e) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules"), this dispute shall be decided on the basis of the Complaint alone.
The panel was concerned that the Respondent may have not received adequate notice of this dispute. The panel has carefully reviewed the evidence and queried the case officer of the Dispute-Resolution Service Provider, and has concluded that the Respondent received adequate notice of this dispute.
5 Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("ICANN Policy"), namely:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(b) the respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is that of the Complainant.
5.1 Identical or confusingly similar to a trademark or service mark
The panel finds that the Complainant is the owner of the registered trademark "Jazz Alley".
The panel finds that the Jazz Alley club is famous and an "institution" in Seattle.
The panel finds that the contested domain name is identical to the trademark owned by the Complainant. The only difference between the domain name and the trademark is the deletion of a space and the addition of the suffix ".com". See Microsoft Corporation v. Amit Mehrotra WIPO D2000-0053.
As a result, the panel finds that the Complainant has established this element.
The Complainant contends that the Respondent has no legitimate interest in the use of the contested domain name as the Respondent:
(a) improperly acquired the contested domain name from the previous Registrant. The transfer by the previous Registrant to the Respondent was an attempt by the previous Registrant to shield itself from liability and keep the Complainant from rightfully possessing the contested domain name;
(b) is not using the contested domain name in connection with a bona fide offering of goods or services, and the contested domain name is not being used as an active address; and
(c) is not making a legitimate commercial, noncommercial or fair use of the domain name and does not use the domain name as a trademark in connection with any goods or services.
The panel has not been presented with any evidence that shows that the contested domain name was improperly acquired by the Respondent. The Complainant could not advise the panel of the relationship between the Respondent and the previous Registrant. In relation to illegitimacy, the panel makes no finding in relation to the Complainant's assertion referred to in paragraph (a) above.
The panel agrees with the Complainant's assertions in paragraphs (b) and (c) above, but the panel must also consider the fact that the Respondent only became the registrant of the contested domain name on July 29, 2000. As a result, the Respondent has only had a limited amount of time in which to develop its website.
Paragraph 4(c) of the ICANN Policy sets out three elements, any of which shall demonstrate the Respondent's legitimate rights in the contested domain name. The Respondent does not meet any of the three elements in this paragraph.
Before notice of the dispute, the Respondent had not used the domain name, and presented no evidence as to demonstrable preparations for use. The Respondent has recently posted a placeholder at the website www.jazzalley.com that indicates that the website will soon be commerce enabled, but after this matter formally commenced.
The Respondent has presented no evidence that it is commonly known by the domain name.
The Respondent has used the symbol TM after the words "Jazz Alley Fashions" on its recently created website accessed via the contested domain name. This is not sufficient for the panel to find that the Respondent is commonly known by the domain name.
The intended use of the domain name, as set out on the recently created website, is not a legitimate noncommercial or fair use of the domain name.
Based upon the evidence contained within the complaint form, the panel finds that the Respondent has no rights or legitimate interests in respect of the domain name. There is no evidence that the Respondent was using jazzalley in any way prior to registration of the domain name. The Respondent's registration of the domain name and subsequent use of it does not provide the Respondent with a right or legitimate interest in the domain name. Drew Kaplan Agency; Inc. v. DAK.com, NAF FA0094328.
5.3 Bad Faith
Both registration and use in bad faith are required. The panel notes that the elements listed in paragraph 4(b) of the ICANN Rules are examples of circumstances of bad faith, and that these elements are not a complete list.
The panel concludes that the Respondent is using the domain name for the purposes of the ICANN Policy. The development of the placeholder and the intended use of the domain name that is indicated on the website by the words "Now on the web - soon commerce enabled" constitutes "use" of the domain name for the purposes of the ICANN Policy.
If Island was the current domain name owner, the panel would have no hesitation in finding bad faith.
However, recently, after receiving correspondence from the Complainant's attorney, the domain name was transferred by Island.
The Complainant has no knowledge or evidence regarding this transfer.
Accordingly, the transfer could be:
(a) a legitimate sale to a bona fide third party without notice of the Complainant's rights;
(b) a sale to a third party who is aware of the Complainant's rights;
(c) a transfer to a friend of Island, for the purpose for making it more difficult for the Complainant to succeed in a dispute such as this; or
(d) a sham transfer to a non-existent person.
Based on a detailed reading of the evidence, the panel draws the inference that the transfer of the domain name from Island to the Respondent was made with an improper motive, for the purpose of making it more difficult for the Complainant to succeed in a dispute such as this, and that the Respondent is associated with Island. Accordingly, the panel finds that the Respondent registered and is using the domain name in bad faith.
The Respondent had the opportunity to respond and present evidence that it is a legitimate business that purchased the domain name without knowledge of the Complainant's rights and claim. The Respondent chose not to do so. The Complainant is not entitled to relief simply by default, but the Panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales (eResolution Case No. AF-0147, May 1, 2000)
Paragraph 14 of the ICANN Rules provides that:
"(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."
In addition, the panel finds that Island registered the domain name primarily to sell to the Complainant and for disrupting the Complainant's business.
One cannot pass good title to a domain name where it does not have good title. Similarly, in certain circumstances, illegitimacy and bad faith of a prior domain name owner may "attach to" the domain name, and pass with the transfer to a subsequent domain name owner. This would be the case, for example, where the transfer was a sham or to a related entity.
When the transfer to the Respondent took place in July 2000, the Respondent had received notice from the Complainant's attorney and had offered to sell the domain name to the Complainant. When Island realised that its aim to make money from the Complainant was not succeeding, it transferred the domain name. In this circumstance, the subsequent transferee is tainted by Island's bad faith. Accordingly, in addition to the findings above, the panel finds that Island's conduct amounts to bad faith that follows the domain name and can be used to satisfy the requirements of Paragraph 4(a)(iii).
As a result, the panel finds that the Complainant has established this element.
The panel does not need to decide whether the Respondent provided incorrect contact details when registering the transfer of the domain name, or whether that also amounts to bad faith.
The Complainant has established all required elements.
For the reasons set forth above, the Complainant's request to transfer the domain name jazzalley.com to the Complainant is granted.
Dated September 28, 2000 at Brisbane, Australia
(s) John V. Swinson