ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. The Parties and Contested Domain Name.
Complainant is Darin Bournstein dba Roseville On-Line and dba RSVL On-Line. His address is 931 Washington Boulevard, Suite 108, Roseville, California 95661, USA. Email address: email@example.com, Phone (916) 782-4255, Fax (916) 782-4113. His representative is: Ronald J Tocchini, Esq., Christensen and Barrus, 2999 Douglas Boulevard, Suite 185, Roseville, California 95661, USA. Email Address: firstname.lastname@example.org, Phone: (916) 786-9900 Fax: (916) 786-9977.
Respondent is Anita Williams. Her address is 7354 Tartanilla Circle City Citrus Heights, California 95621, United States. Email email@example.com, Phone 916-729-6990.
Contested Domain Name: "rosevilleonline.com". The Clerk of eResolution verified the Registrar as Register.com.
2. Procedural History.
The electronic version of the Complaint form was filed on-line through eResolution's Website on September 1st, 2000. The hardcopy of the Complaint Form was received on September 8, 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 led the Clerk's Office of eResolution to the following conclusions: the Registrar is Register.com, 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 September 1st, 2000. The requested information was received September 5, 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 September 12, 2000. That date is the commencement date of the administrative proceeding.
On September 12, 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 September 13, 2000, the Respondent submitted, via eResolution internet site, his response. The signed version of the response was received on September 14, 2000.
On September 18, 2000, the Clerk's Office contacted Mr. Richard Faulkner, and requested that he acts as panelist in this case.
On September 19, 2000, Mr. Richard Faulkner, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On September 19, 2000, the Clerk's Office forwarded a user name and a password to Mr. Richard Faulkner, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On September 19, 2000, the parties were notified that Mr. Richard Faulkner had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 2, 2000.
Due to unanticipated Internet communication difficulties the time for the handing down of the decision was extended by one day.
3. Factual Background.
Complainant and Respondent are both domiciled in the United States of America.
Complainant, Darin Bournstein asserts that he has obtained the requisite State of California permissions to do business as Roseville On-Line and also to do business as RSVL On Line, and is the applicant for registration of a mark with the United States Patent and Trademark Office Serial No. 75/895577. All supporting documentation of Complainant's rights were annexed to the Complaint as Complainant Attachments.
The Domain Name registered by Respondent and at issue in this Complaint is www.rosevilleonline.com, (the "Domain Name").
The Domain Name resolves to an active web page with a variety of information on Respondents business activities.
Respondent has answered the Complaint and provided documentary support for her contentions.
The statements of the Clerk, the Complainant and the Respondent establish that all parties have actual notice of these proceedings according to the ICANN Regulations.
4. The Parties' Contentions.
The Complainant essentially asserts three claims: that the Domain Name at issue and one of his California assumed business names are identical; that the Domain Name and his second assumed name sound alike; and that the Mark he has applied for, but not yet received, would preclude the Respondent's use of the Domain Name. Therefore, he asserts that he is entitled to obtain the transfer of the Domain Name.
The Complaint's assertions are reproduced here in toto to both delineate those claims and demonstrate the difficulties encountered by this Panel with the pleadings presented to it. Those assertions were stated as follows:
"Mark(s) in Question. The service marks upon which this complaint are based are set forth and described below:
1. Names. "Roseville Online"; "RSVL On-Line"; "rsvlonline" (the second domain is the service mark for which the Complainant claims protection; Complainant also owns "rosevilleonline.net", which he recently purchased to avoid further disputes of this nature)." "RSVL" is a geographical abbreviation for the Roseville California area. [ Emphasis in the original. ]
2. Description: All of the service marks at issue are used in domestic, interstate, and international commerce, and refer to the Complainant's assumed business name - "Roseville Online." See annexed items attached and incorporated by reference (including business registration certificates.) The Complainants business is located in Roseville California USA, and his primary customer base exists in the same region. The marks individually and collectively refer to the Complainant's services - namely,
a. providing multi-user access to a global computer information network,
b. hosting the world wide web sites of others on a computer server for a global computer network, and
c. designing and implementing web services for others.
3. The Complainant registered the second level domain(s) with the applicable internet licensing authority on or about November 1, 1997, and has been using his assumed business name since that time in the capacity described above. On January 15, 2000, the Complainant also applied for U.S. intellectual property statutory protection with the Patent and Trademark Office for statutory protection above and beyond his common law rights, and since received a preliminary serial number: 75/895577. ( USPTO documents.)
Claimant does not assert that the Registrant has no rights nor any legitimate interests in respect of the Domain Name "rosevilleonline.com". The parties concur that Respondent is located near Roseville, California, but do not state whether or not she is in the same county. He makes no representation that the Registrant is not using the Domain Name in connection with a bona fide offering of non - similar and/or non - confusing goods or services. Rather he complains that the Registrant is located in his general geographic area and her business activities may be confused with his business activities, and that she might offer some services now, or in the future, ( ISP services) that might be in competition with him. He does not assert that the Registrant is not commonly known (or was ever was referred to) as "rosevilleonline" or any variant thereof. Furthermore, Claimant does not establish, that the Registrant is not making a legitimate commercial or fair use of the Domain Name. Rather he claims that his state of California granted rights to use a set of assumed business names precludes the Registrant from owning or using the Domain Name. Finally, Claimant makes neither the assertion, nor offers sufficient proof, that the Registrant has ever intended to profit from the sale or transfer to a third party of the Domain Name.
Claimant unequivocally asserts that there is a confusing identity or similarity between his assumed business names and the Domain Name. The relevant sections of his claim, and without any suggestion by this decision of the purported accuracy of these statements, maintain that:
Copy or Similarity (Prong I ). The name "rosevilleonline" is either identical or confusingly similar ( or both ) to the [Complainant's] service marks:
1. "rosevilleonline", the Respondent's registered second-level domain, when stated orally, sounds precisely the same as the Complainant's existing assumed and registered business name.
2. Patent Office Documentation citations omitted here. Claimant asserts that " if the Respondent's "rosevilleonline" causes consumer confusion between its name and the Complainant's commercial identity ( goodwill, reputation, and advertising investment), the Respondent has unfairly infringed upon the Complainant's statutory and common law rights. [ additional documents attached to original. ]
3. Respondent includes "meta tags" in his business' home page that, in an effort to draw customers, include Complainant's various commercial names. [ HTML code printout provided. ] Moreover, in associating her site with "sponsors", Respondent creates the opportunity for confusion regarding Complainant's status as an independent internet service provider.
Complainant has invested significant resources in his business development over as lengthy period. His customers and his potential customers view and distinguish his business identity in a specifically unique manner. Respondent has reacted aggressively and dismissively to a fair request to settle this dispute by way of disclaimer. [ Documents attached to original. ]
4. The services provided by the Respondent, or the services which the Respondent claims she provides, purport to offer, or have purported to offer in the past, multi-user access to the internet, world-wide web hosting, and web service design.
These services are targeted at the consumer group located in the greater Sacramento and Placer County, California areas ( the primary geographical market for the Complainants goodwill, reputation, and advertising investing ). [Emphasis in the original. ]
Claimant attempts to contend that the Registrant illegitimately registered and is using the domain name "rosevilleonline.com" in bad faith. In the "Illegitimacy" Section of the claim, again reproduced in toto and without any suggestion by this decision of the purported accuracy of these statements, he asserts that:
1) Illegitimacy (Prong II). The current Domain Name holder has no rights or legitimate interest in the name "rosevilleonline.com" This is primarily due to the fact that the Complainant preceded the Respondent into the market for the services at issue (by several years),and that the Respondent's efforts have been lightened by the "coat tail" effect of using the name "Roseville On-Line" long before the Respondent even registered its domain name with the Registrar. [ Document schedule annexed to original. ]
"Roseville On-Line" is a service mark used by the Complainant to identify its services to the public, to describe a geographical region in which its services are unique or otherwise special, and to distinguish its services from those of its competitors - Respondent's use of the Domain Name "rosevilleonline.com" has caused damage to the Complainant's business. Consumers constantly contact the Complainant regarding the poor quality of the Respondent's services, having identified the Respondent as being the Complainant.
In the "Bad Faith" portion of the claim, again reproduced in toto, and without any suggestion by this decision of the purported accuracy of these statements, he simply asserts:
Bad Faith ( Prong III ). The Respondent has refused to change its domain name after having been requested to do so by the Complainant. Just as important, the Respondent refused to place a disclaimer upon its web site that clearly disclaimed association with the Complainant.
The Respondent's search terms used to attract search-engine "spiders" for companies like Yahoo! And Google specifically include the Complainant's protected names. [Documents furnished.]
[ Complainant's conclusory summation not reproduced here. ]
The Claimant does not assert, much less prove, that the Registrant is in the business of selling domain names or that she has offered this Domain Name to him or to any person for any purpose, legitimate or nefarious. He does assert that there is a likelihood of confusion with Complainant's assumed business names as to the source, sponsorship, affiliation, or endorsement of the web site. However, he also clearly establishes through his very own documentation that the Respondent acquired the Domain Name years after he established his businesses. Had Claimant bothered to do so, he presumably could have incurred the minimal expense to acquire the Domain Name during any of those multiple intervening years. An attentive internet business would not negligently fail to do so.
Essentially, the Claimant attempts to maintain that the totality of the circumstances he relates demonstrate that the Registrant has illegitimately registered the Domain Name "rosevilleonline.com" and is using it in bad faith. Whilst these allegations may possibly suffice in a California court to demonstrate a prima facia claim to some statutory or common law relief under California law, they fall very far short of establishing the proof required for Claimant to succeed in this forum.
Respondent generally denies Claimant's assertions and that he has the right to any remedy. More particularly, Respondent asserts that she operates a local area computer sales organization and also provides information to the general public about the local community.
Complainant, Darin Bournstein requests that the ownership of the domain name at issue be transferred to him.
4. Discussion and Findings.
The ICANN Policy in Paragraph 4.a. requires Complainant Bournstein to prove, with respect to the Domain Name at issue, each of the following:
(i) The Domain Name at issue is identical or confusingly similar to a trademark or service mark in which Bournstein has rights; and
(ii) Respondent 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 ICANN Policy in Paragraph 4.b delineates four exemplar circumstances, that for the purposes of Paragraph 4(a)(iii), supra, are clear evidence of the registration and use of a domain name in bad faith.
The ICANN Policy at Paragraph 4.c. sets out three exemplar defenses which, if proved by Respondent, shall demonstrate respondent's rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii), supra.
Complainant Bournstein urges the virtual identity of the mark and the Domain Name. Thus, he must prove that the Domain Name at issue is "identical" to his corresponding mark.
The Domain Name at issue is patently identical to the corresponding California granted assumed business names in the context of the Internet. As the United States Court of Appeal for the Second Circuit recently noted in Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., 2000 U.S. App. LEXIS 1246, 53 U.S.P.Q. 2D (BNA) 1570, "For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com. n3" Any consumer attempting to do so presently would not be directed to Complainant. While this Panel questions whether a mere state grant of the right to use an assumed business name in some portion or even all of a political subdivision of a federal state rises to the level required by ICANN Policy to constitute a "mark", a resolution of that issue is not essential to the determination of this dispute.
b. Rights or Legitimate Interests
Respondent's basic defense consists of a reliance that Claimant's assertions are fatally deficient. The Panel recognizes that the registration of an available Domain Name is clearly legal. It also accepts for the purpose of this decision the asserted validity of Claimant Bournstein's assumed business names and potential U.S. marks, his rights in those names and potential mark with respect to some goods and services, that he may have some reputation or goodwill inherently associated with those names and potential mark, and his representations as to his business activities and intended use of the names and potential mark. However, that is not the end of the inquiry. Claimant must establish that the Respondent has no rights or legitimate interests in respect of the domain name. The evidence clearly establishes that the Respondent does have such rights. She now and has for some time operated a business selling computers and apparently provides to the general public a variety of possibly interesting information on the local vicinity. Indeed, much of her information is similar to that expected to be on the web page of any local government or Chamber of Commerce, especially one with the name of Roseville.
The situation presented in this dispute is a problem created by the neglect and/or inattention of the Claimant. He clearly established that he could have acquired the Domain Name at issue at any time over a period of multiple years, but chose or elected not to do so. This situation does not exemplify the activities envisioned by the United States Congress when it articulated the public policy of the United States in the Anticybersquatting Consumer Protection Act of 1999. Whilst this situation may well be one prohibited by California common law or statute, the Claimant will have to establish that claim in an appropriate California or federal court after full discovery and with the attendant risk that he may be taxed with the Respondent's attorney's fees and costs if he fails. . To prevail in this forum the Claimant must properly plead his case and meet the burden of proof required by ICANN Regulation and Policy. He has not done so on this element and it is not the province of this Panel to undertake that responsibility for him.
c. Bad Faith.
The registration and use of the Domain Name at issue in bad faith according to the exemplars contained in the ICANN Regulations is readily determined. Claimant has failed to properly allege, much less establish, the mandatory bad faith. If the mere refusal of a person to comply with a questionable demand constituted "bad faith", then that term would lose all meaning and significance.
d. Due Process.
The parties knew, or reasonably should have known, that when they registered the Domain Name at issue, they agreed to and accepted the procedures, rules and regulations established by the Registrar and its' successors. The Claimant has not established the prerequisites articulated in the ICANN Regulations. Whilst some individual Panels have expansively interpreted their powers to draw certain inferences and logical conclusions when deciding these disputes, they have only done so when provided with properly plead claims and facts. The specific issue of the juridical weight and authority to be accorded to the right to use assumed business names granted by a political subdivision of a federal state is present here. However, the parties did not brief that issue nor did they provide any guidance to the Panel. As that is at the heart of the Complainant's case, at least some authority would have been helpful.
The Panel recognizes it has a duty to treat the parties equally and to afford each of them a fair opportunity to present their case. Likewise the Panel is expressly acknowledged to possess the power to determine the admissibility, relevance, materiality and weight of the evidence. The Parties' submissions, statements and representations have been very carefully considered for their relevance, materiality and admissibility. All have been given due and appropriate weight.
5. Conclusions and Decision.
The evidence, submissions of the parties, ICANN Regulations and guidance provided by the laws of the United States and the jurisprudence interpreting them lead this Panel to conclude and decide that (a) the Domain Name registered by Respondent, Anita Williams, and at issue herein is effectively identical to the Claimant's assumed business names and potential registered mark. However, Claimant has not met any other portion of its' burden of proof under the ICANN Regulations or Policy.
Accordingly, the Panel hereby Awards, directs, requires and orders that the registration of the Domain Name at issue, "rosevilleonline.com" remain with Respondent, Anita Williams.
Thus done and signed in Dallas, Texas, United States of America on October 3, 2000.
(s) Hon. Richard D. Faulkner, J.D., LL.M., F.C.I.Arb.