ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant, Wildlife Surveillance Systems Inc., brings this action against the Respondent, Doug Hassell, pursuant to ICANN's Uniform Dispute Resolution Policy (the "Policy") seeking transfer of the registration of the domain name trophyview.com (the "Domain Name"). The Domain Name was registered through the domain name registrar Network Solutions Inc. (the "Registrar").
2. Procedural History
The Complainant filed the Complaint online through eResolution's web site on September 1, 2000. Payment was received on September 1, 2000. The hardcopy of the Complaint Form was received September 20, 2000. On September 21, 2000 the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On October 4, 2000, the Clerk's Office sent the Complaint to the Respondent by email and facsimile. On October 11, 2000, the Clerk's Office notified the Complainant and the Respondent that the Respondent had failed to respond to the Complaint. On October 18, 2000, the Respondent sent an email message to the Clerk's Office asking that his late response be taken into consideration. The Respondent stated that he had « been out of town for most of the past 8 weeks with our business. » Citing Section 5(d) of ICANN's Rules for the Policy and Section 3(a) of eResolution's Supplemental Rules, the Panel agreed to accept a late response. Because it was not clear whether the Respondent intended his October 18 email message to serve as the response, the Panel permitted the Respondent to submit any additional response on or before October 23, 2000 and stated that in the event that no further response was received by that date, the Panel would consider the Respondent's email message of October 18 as the response. The Clerk's Office sent an email message notifying the parties of the Panel's decision to accept the Respondent's late response on October 19, 2000. On October 24, 2000, the Respondent sent an email message to the Clerk's Office stating that he « could not find a response form at the link you sent me » and reiterating the arguments in his email of October 18. Because the Respondent did not give any excuse for missing the deadline, the Panel will not consider his email message of October 24. (It makes little difference whether the Panel accepts the October 24 communication as its content is substantially the same as that of the October 18 message.)
3. Factual Background
The facts discussed herein are derived from the Complaint. The Respondent has not expressed disagreement with or made any attempt to refute any of the facts described in this section.
The Complainant markets a portable video observation system designed to monitor and observe game animals under the name «Trophyview. » The Complainant has used the mark in commerce in the U.S. since July 1, 1999. The Complainant has filed an application to register its TROPHYVIEW trademark with the U.S. Patent and Trademark Office. The Complainant «has invested an extremely large amount of money » since June, 1999 in advertising at trade shows, in nationally distributed publications and on television.
The Respondent contacted the Complainant on or about April 1, 2000 and requested a full color brochure and information packet. On or about April 24, 2000 the Respondent ordered a Trophyview video observation system from the Complainant.
The Complainant subsequently tried to register the domain name trophyview.com and discovered that it had been registered by the Respondent after the Respondent had requested information and purchased the Trophyview system from the Complainant. The Complainant's president, Keith Sherrill («Sherrill ») contacted the Respondent to ask why the Respondent had registered the domain name. The Respondent replied that he had been considering this name for a commercial venture and when he discovered the name was available, he had «better grab it .» The Respondent further explained that his proposed business venture was to charge visitors a fee to view video footage of whitetail deer on his web site. Sherrill told the Respondent that the TROPHYVIEW was the Complainant's trademark. The Respondent replied that he would be willing to share the web site with the Complainant, or provide a link to the Complainant's site.
4. Parties' Contentions
The Complainant contends that the Domain Name is identical to its trademark, that the Respondent has no legitimate interest in the Domain Name, and that the Respondent registered and used the Domain Name in bad faith.
The Respondent states that he "came up with" the TROPHYVIEW name several years ago. He states that he has been working on a Net Cam project for about 3 years but has been unable to get it up and running because he cannot get an Internet connection with enough bandwidth. He contends that he was not trying to sell the Domain Name at a profit, as his offer to provide a link to the Complainant's site was at no charge. He argues that the Complainant can use trophyview.net as its domain name and does not need to use trophyview.com.
5. Discussion and Findings
Section 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
The Complainant alleges that it owns trademark rights in the mark TROPHYVIEW. The Respondent has not refuted the Complainant's allegations. The second level of the Domain Name is identical to the Complainant's trademark.
B. Respondent's Interest in Domain Name
A respondent can demonstrate a legitimate interest in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue
The word «Trophyview» does not form any part of the Respondent's name. Although the Respondent argues that he «came up with [the TROPHYVIEW name] several years ago,» the Panel finds that this assertion lacks credibility in light of the Respondent's failure to refute the Complainant's allegation that the Respondent registered the Domain Name after requesting information and ordering a system from the Complainant. Presumably, a reasonable business person who had been planning to use the TROPHYVIEW name for a business to be run on a web site would reserve the domain name corresponding to his business name at the beginning stages of planning such a business. The Respondent offers no explanation of why he happened to register the trophyview.com domain name after having ordered the Complainant's TROPHYVIEW product. Because the Respondent appears to have adopted the Domain Name with the intent to mislead and divert consumers who seek information about the Complainant's products, the Respondent's preparations to use the Domain Name cannot be viewed as preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Respondent has not argued that he is making any sort of noncommercial or fair use of the domain name without intent for commercial gain. Accordingly, the Panel finds that the Respondent does not have any right or legitimate interest in respect of the Domain Name.
C. Bad Faith
Section 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has 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 the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) 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
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
This list of bad faith factors is not exclusive. Other circumstances can demonstrate bad faith.
The Respondent registered the Domain Name after contacting the Complainant and ordering a TROPHYVIEW product from the Complainant. Thus, the Respondent's motive in registering the Domain Name was likely either (a) to be able to sell it to the Complainant; (b) to disrupt the Complainant's business; or (c) to drive traffic to his proposed site, which would feature a service that is highly related to the Complainant's goods. The Respondent's offer to share the site with the Complainant demonstrates that the Respondent probably would like visitors to his site to believe that the site was affiliated with the Complainant. Accordingly, the Panel finds that the Domain Name was registered in bad faith.
The inquiry, however, does not end there. In order to grant relief under the Policy, the Panel must also find that the Domain Name was used in bad faith. This is a more difficult issue, as the Complainant has not alleged that a web site is running on the Domain Name at the present time and the Respondent's allegations suggest that he is not yet actively using the Domain Name to operate a site. Nevertheless, even when no business has been conducted over a web site using the domain name, the Panel may still find that the Domain Name is «in use» if it is being used by the Respondent to harm the Complainant. For example, intent by a domain name registrant to sell a domain name has been found to be a «commercial use» that supports the transfer of the domain name under the Policy. See, e.g., Ellenbogen v. Pearson (WIPO Case No. D00-0001). The Panel finds that under the circumstances described above the Respondent's offer to link to the Complainant's site is a commercial use of the Domain Name that supports transfer of the Domain Name under the Policy.
Because the Complainant has proved the three elements required for transfer of the Domain Name, the Panel orders that the Domain Name be transferred to the Complainant.
Signed, this 26th October, 2000 in Boston, Massachusetts
(s) Michelle Brownlee