ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is California Hardbodies, of Petaluma, California, U.S.A.
The Respondent is Interactive Electronic Media Inc. of Montreal, Quebec, Canada.
The Domain name at issue is californiahardbodies.com, registered by the Respondent with Network Solutions.
The remedy sought is the transfer of the Domain Name californiahardbodies.com from the Respondent to the Complainant.
2. Procedural History
The complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy ("ICANN Policy") adopted by the Internet Corporation for Assigned Names and Numbers on October 24, 1999.
The electronic version of the Complaint form was filed on-line through eResolution's website on August 21, 2000. The hardcopy of the Complaint Form and annexes were received on September 7, 2000. Payment was received on August 28, 2000
Upon receiving all the required information, eResolution's Clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Check the Registrar's Whois Database and confirm all the essential contact information for Respondent;
- Verify whether the contested Domain Name resolved to an active Web page;
- Verify whether the Complaint was administratively compliant.
This inquiry led eResolution's Clerk to the following conclusions: the Registrar is Network Solutions, the Whois database contains all the required contact information, the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.
On August 24, 2000, the eResolution Clerk's Office sent the Registrar an email requesting confirmation and a copy of the Registration Agreement. The requested information was received on August 28, 2000.
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's Office fulfilled all its responsibilities under Paragraph 2 (a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on September 7, 2000. This date is the official commencement date of the administrative proceeding.
The complaint, official notification and all the annexes were sent to the Respondent via registered mail with proof of service. According to the Canada Post tracking system, delivery was made to the prime contact only.
The emails to the Electronic Media Inc. Interactive were returned as 'undeliverable'. All the faxes failed.
On September 26, 2000, the Respondent requested and was granted a 24-hour extension. On September 27, 2000, the Respondent submitted his reply via eResolution's Internet site. The signed hardcopy was received on September 28, 2000.
Between October 2 and October 4, 2000 the Clerk's Office contacted another panelist and requested that he act in this case. The person in question was unable to do so at this time.
On October 5, 2000, Mr. Enzo Fogliani agreed to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On October 5, 2000, the Clerk's Office forwarded Mr. Fogliani a user name and a password, thereby enabling him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On October 5, 2000, the parties were notified that Mr. Enzo Fogliani had been appointed and that, barring exceptional circumstances, a decision would be handed down on October 18, 2000.
On October 6, 2000 the appointed Panelist verified the contested Domain Name and found that it resolved to an active Web page. A further check on October 16, 2000, led to the same conclusion.
3. Factual Background
The Complainant claims he has been using the name California Hardbodies in interstate commerce for live performances and merchandise sales since 1990. He also affirms that:
a) on March 19, 1993, he was granted trademark registration 097311 by the State of California;
b) on November 16, 1994, Clark County, Nevada issued him promoter's license no. 000708-561-I;
c) on December 3, 1999, he filed a United States Federal Trademark application (serial # 751862688);
d) he is the lawful owner of the domain names "californiahardbodies.net" and "califbodies.com".
The assertions at points (a), (b) and (c) are proved by documents sent with the Complaint form. The assertion at point (d) is proved by the Whois database, which shows that the domain name "californiahardbodies.net" was registered on July 8, 1999, and "califbodies.com" on October 20, 1995.
The Respondent replies that Californiahardbodies.com is a virtual business that was created in January of 1997 and has existed since then solely in that form. The Whois database inquiries confirmed that the domain name was registered on January 30, 1997.
4. Parties' Contentions
The Complainant claims that the domain name "californiahardbodies.com" is similar to his name and to another domain name he registered (californiahardbodies.net). Further, he claims that the website www.californiahardbodies.com is used merely as a "redirect page" to the actual adult sites run by Interactive Electronic Media Inc. of Montreal, Canada. This misleads people searching for entertainment services offered by the Complainant, because they are immediately redirected to www.sexshows.com, another website run by Interactive Electronic Media Inc.
Finally, the Complainant claims that Respondent is acting in bad faith because Interactive Entertainment Media Inc (a) does not use the name in any way that would relate it to anything suggesting "California" or "hardbodies", but simply to connect to a portal for their sex site www.sexshow; and (b) uses Complainant's brand name recognition to mislead the latter's customers into accessing Respondent's site because they are given to understand that "California Hardbodies" is behind the site to which they are redirected.
The Respondent admits that the domain name "californiahardbodies.com" is very similar to the Complainant's name, but denies that the domain name was registered in 1997 in order to take advantage of the Complainant's brand name or to divert Complainant's costumers to the Respondent's sites. Further, Respondent claims there is no chance of confusion because Complainant's customers are presumably looking for an "escort," not for adult pictures, which is the content of the sites run by Interactive Entertainment Media Inc.
5. Discussion and Findings
Under Paragraph 4 (a) of the ICANN Rules, the Complainant is required to prove that (a) the domain name at issue is identical or confusingly similar to the Complainant's trademark; (b) the Respondent has no rights or legitimate interest in the domain name; and (c) the domain name was registered and is being used in bad faith.
These are the three matters at issue in this case.
(a) Identity or confusing similarity
The Respondent recognizes and does not dispute that the domain name "californiahardbodies.com" is similar to the Complainant's name.
In the opinion of this Panel, this suffices to create confusion in the marketplace.
(b) Rights or legitimate interests
Under Paragraph 4, (c) (i), a circumstance demonstrating the Respondent's rights or legitimate interests in the domain name would be that the Respondent was using the domain name "in connection with a bona fide offering of goods or services" prior to receiving notice of the dispute.
As appears from the Whois database, the contested domain name was registered by the Respondent in January 1997. The Complaint itself alleges that the Respondent was using the name since well before the beginning of this procedure, in order to redirect Internet users to other adult sites and gain a share of the business.
Redirection of traffic is not illegitimate per se; it is one of the ways of using a domain name. In this case, the services offered by the Respondent (access to adult sites) are different from the ones offered by the Complainant ("escort services", as per its home page at www.californiahardbodies.net).
Moreover, the trademark registered in California in 1993 and attached by the Complainant to its Complaint form referred to "video tapes," not to the activities the Complainant seems to be carrying on today through the domain names "californiahardbodies.net" and "califbodies.com".
The latter trademark, for which the Complainant produced a "filing receipt for trademark application" dated December 3, 1999, seems to be the one relevant to this case. It is clear that when the Respondent registered the domain name at issue, the domain name californiaherdbody.net had not yet been registered and the United States Federal Trademark application had not yet been filed.
The Panel takes this fact as evidence that the Respondent is making legitimate commercial use of the domain name.
(c) Registration and use in bad faith
Absence of the conditions required by paragraph 4, (a) (ii) suffices to reject the complaint. However, the Complainant also failed to prove that the Respondent was acting in bad faith.
The Complainant believes that bad faith is demonstrated by the fact that "Interactive Entertainment Media Inc (IEM) does not use the name in any way to relate to anything california or hardbodies", but just as "a portal for their sexsite." The ICANN Rules do not consider this a circumstance indicating bad faith in registration and use of the domain name; as noted above at point (b), it should be considered evidence of the Respondent's right or legitimate interest in the domain name at issue.
Nor does the second circumstance affirmed by the Complainant come within the scope of the ICANN Rules' bad-faith provision. Were the Respondent found to be purposely using the Complainant's brand name recognition to mislead Complainant's customers and induce them to go to Respondent's site thinking that Complainant is behind the redirected site - but this has not been demonstrated - the circumstance might prove that the domain name is being used in bad faith, but not that it was registered in bad faith.
On the other hand, the fact that the Respondent registered the domain name at issue (a) more than two years before the Complainant registered the same name under TLD .net, and (b) almost three years before the Complainant filed an application for a United States Federal Trademark, leads this Panel to believe that the domain name californiahardbodies.com was registered by the respondent in good faith.
Since the ICANN Rules require bad faith to be established as regards both the registration and the use of a domain name, as grounds for transferring it to the Complainant, this Panel cannot grant the award requested by the Complainant.
The Panel concludes that the Complainant did not prove any of the circumstances which Paragraphs 4 (b) and (c) of the ICANN Rules require to be established.
Accordingly, the Complainant's petition is rejected.
Rome, 18 October 2000
(s) Enzo Fogliani