ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
PARTIES AND CONTESTED DOMAIN NAME
1. The Complaint was filed by UNITED WAY OF AMERICA on August 21, 2000 on-line through eResolution's web site and also by hardcopy. The named Respondent is THE RUPPANNER COMPANY LLC, which is the registered owner of the disputed domain name: tocqueville.net. The Registrar is Network Solutions Inc. The Complainant seeks transfer to it of the disputed domain name.
2. The procedural history of this case, including the steps taken by the Clerk's Office of eResolution to notify the Respondent of the commencement of this proceeding, is set out in detail in the letter dated September 22, 2000 sent by eResolution, to Mark R. Joelson, lead panelist appointed to hear this case, which is attached to this decision as Exhibit 1. The Respondent has not submitted a Response to the Complaint.
3. Paragraph 5 (e) of the Rules for Uniform Domain Name Resolution Policy (hereafter "ICANN Rules") provides that, if the Respondent does not submit a Response, "in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."
Accordingly, since the Panel knows of no exceptional circumstances here, it shall decide the dispute based upon the Complaint.
4. The Complaint asserts that Complainant, a New York not-for-profit corporation, created the Alexis de Tocqueville Society in 1972 to recognize persons who have rendered outstanding service as volunteers in their own community or on a national level. The de Tocqueville name was chosen because of that historic individual's admiration, expressed in his writings, for early America's spirit of voluntary association and effort on behalf of the common good. The Complaint further alleges that Complainant is the owner of several United States registered trademarks for service marks, using the name "de Tocqueville", namely: The Alexis de Tocqueville Society Award (Reg. No. 1983794) for recognition of outstanding volunteer services; the Alexis de Tocqueville Society Program (Regs. No. 1916987 and 1922643) for association services; and the Alexis de Tocqueville Society (Reg. No. 1929291) for various eleemosynary and consulting services. The Complaint asserts that each of the marks has been used in connection with the services rendered by Complainant and its member organizations since at least as early as 1979. Complainant further asserts that it is the owner of the domain names alexisdetocqueville.org and alexisdetocqueville.net.
5. The Complaint also alleges as follows: Respondent, the Ruppanner Company LLC, was formed by Thomas Ruppanner, a former employee of the United Way of the Bay Area in California and a member of that local Alexis de Tocqueville Society; in registering the domain name "tocqueville.net," Mr. Rupanner was deliberately incorporating in its entirety the most recognizable and distinctive portion of Complainant's service marks, so that the web site is "likely to be confused with complainant and its Alexis de Tocqueville programs, to the irreparable injury of complainant and the good will associated with these valuable marks and programs"; prior to the registration of the domain name, the Ruppanner Company and Mr. Ruppanner had no connection with the "tocqueville" name except through Complainant; the web site in question has no content, nor is it used in connection with any legitimate business purpose; and Mr. Ruppanner told Complainant that he would sell and transfer the domain name to Complainant for $4000.
6. As previously noted, the Respondent has not filed a Response to the Complaint.
DISCUSSION AND FINDINGS
7 Paragraph 1 of the Uniform Domain Name Dispute Resolution Policy (hereafter the "ICANN Policy") states that the ICANN Policy is incorporated by reference in each Registration Agreement and sets forth the terms and conditions in connection with a dispute between the Registrant and any party other than the registrar over the registration and use of any Internet domain name registered by the Registrant. The ICANN Policy further states, in Paragraph 4 (a), that the Registrant is required to submit to a mandatory administrative proceeding in the event that a third party asserts to the applicable dispute-resolution service provider and proves in the administrative proceeding that (i) the registered domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and (ii) the Registrant 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. The Respondent is therefore bound to submit to this proceeding initiated by Complainant, which is subject to the provisions of the ICANN Policy and the ICANN Rules.
8. Paragraph 14 (a) of the ICANN Rules provides that, in the absence of exceptional circumstances, if a Party fails to comply with any requirement of those Rules, the Panel shall draw there from such inferences, as it deems appropriate. Here the Respondent has failed to file a Response as required by Rule 5 of the ICANN Rules. Respondent's failure to dispute the allegations of the Complaint permits the inference that the allegations are true. Accordingly, the Panel will decide the matter on the basis of that inference, as well as on the basis of the statements and documents submitted by the Complainant.
9. The Complainant in this proceeding has made the three assertions required by Paragraph 4 (a) of the ICANN Policy, namely (i) that the registered domain name is confusingly similar to the Complainant's registered service marks, (ii) that the Respondent has no legitimate right in respect of the domain name, and (iii) that the contested domain name has been registered and is being used in bad faith. The question before this Panel, therefore, is whether the Complainant has proved that each of these elements listed by Paragraph 4 (a) of the ICANN Policy is present.
10. Is the disputed domain name identical or confusingly similar to the Complainant's service mark? The Panel finds that the Complainant has satisfied its burden of proof in this regard.
The disputed domain name "tocqueville.net" is confusingly similar to the service marks registered by Complainant. It is also confusingly similar to the domain names owned by Complainant, "alexisdetocqueville.net" and "alexisdetocqueville.org."
11. Does the Respondent have any rights or legitimate interests in respect of the domain name?
The Panel finds, on the record before it, that Complainant has satisfied its burden of proof in this regard. There is no Response from the Respondent indicating that it has any rights or legitimate interests in the disputed domain name. In view of this fact and the substantial evidence submitted by Complainant of its long-held, legitimate interest and right in the use of the name of Alexis de Tocqueville in connection with its programs, the Panel accepts as conclusive Complainant's proof on this issue. This finding is based in significant part on the documents from the United States Trademark Electronic Search System (TESS) submitted with the Complaint.
12. Was the contested domain name registered and is it being used in bad faith? The Panel finds that the Complainant has satisfied its burden of proof in this regard. To show such bad faith, the Complainant has demonstrated that circumstances of the type set forth in Paragraph 4 (b) of the ICANN Policy are present. Although a registrant's offer to sell a domain name is not necessarily evidence of bad faith, a finding of bad faith in the registration and use of the name can be made where, as here, the registrant has no demonstrated legitimate interest in the domain name and, knowing of another party's interest therein, registers and then offers to sell the domain name to the other party for substantial consideration. Accordingly, the Panel finds that there are circumstances indicating that the Respondent has registered or has 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 similar service marks, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name.
13. Pursuant to Paragraph 2 of the ICANN Policy, setting forth the representations and warranties made by the Respondent in applying to register the contested domain name, the Panel finds that Respondent falsely and in bad faith represented and warranted that, to its knowledge, the registration of the domain name would not infringe or otherwise violate the rights of any third party.
14. Complainant has therefore met its burden of proof as against Respondent. Having found for the Complainant, the Panel must now determine the appropriate remedy. Under Paragraph 4 (i) of the ICANN Policy, the remedies available to a complainant in this type of proceeding are limited to the cancellation of the contested domain name or the transfer of the domain name to the complainant. Complainant requests that the Panel order the transfer of the contested domain name to the Complainant. However, the Panel takes judicial notice that, inasmuch as there exists in the United States a widespread interest in the historical figure, Alexis de Tocqueville, and in his writings, including Democracy in America, Complainant is not the only party that may be able to claim a legitimate interest and right in the domain name tocqueville.net. The question of the appropriate remedy in this case is therefore a close one. On balance, the Panel concludes that, given the variety of domain names available to persons having an interest in Alexis de Tocqueville, there is no harm to the public interest in permitting transfer of the contested domain name to Complainant, as it has requested. Accordingly, the Panel ORDERS that the domain name tocqueville.net be transferred to the Complainant.
This decision was rendered on October 3, 2000.
Original Signed by
(s) Mark R. Joelson