ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant in these proceedings is Travis E. Towle ("Towle") of The Cosmic Entertainment.
The Respondent is Michael J. Preston ("Preston").
The contested domain name is Worldwideradio.com which was registered by the Respondent with Network Solutions, Inc. ("NSI") on February 19, 1998. The Complainant registered the domain name Worldwide-radio.com on October 18, 1996.
The Complaint was brought pursuant to the Uniform Name Dispute Resolution Policy (as approved by ICANN on October 24, 1999).
Pursuant to paragraph 4(d) of the ICANN policy, Towle selected eResolution as the ICANN-approved administrative dispute resolution service provider to administer this proceeding.
The Complainant, Towle has requested that the disputed domain name be transferred to him.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on September 20, 2000. The hardcopy of the Complaint Form and annexes were received on September 29, 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 essential 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 Network Solutions, Inc, 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 obtain confirmation and a copy of the Registration Agreement on October 2, 2000. The requested information was received October 10, 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's 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 October 10, 2000. This date is the official commencement date of the administrative proceeding.
All emails were successful except for those that were sent to the email@example.com, which were returned 'undeliverable'. The faxes failed.
The complaint, official notification and all the annexes were sent to the respondent via registered mail with proof of service. This is confirmed by the Canada Post tracking system.
No response in any form was submitted by the Respondent.
On October 31, 2000, the Clerk's Office contacted me and requested that I act as panelist in this case.
On November 2, 2000, I accepted and filed the necessary Declaration of Independence and Impartiality.
On November 2, 2000, the parties were notified that I had been appointed and that a decision was to be, save exceptional circumstances, handed down by November 15, 2000.
3. Factual Background
Since the Respondent, Preston has failed to respond to the Complaint, the evidence submitted and the facts alleged by the Complainant Towle are accepted for the purpose of the decision in this proceeding. The facts, briefly, are as follows:
Complainant Towle registered the domain name, Worldwide-radio.com, on October 18, 1996, at which time Towle began to use the name. On June 7, 1999, Towle applied for a trade mark registration for the Worldwideradio mark. The mark was registered on March 21, 2000. The mark is for radio entertainment production, namely creating music and political talk-show programming to be heard 24 hours a day on the global computer network.
Towle also operates an on line music store for music CD's and other products such as t-shirts, coffee cups, mouse pads and other promotional products.
Respondent Preston registered the domain name, Worldwideradio.com, on February 19, 1998. This occurred more than a year after Towle registered his domain name and after Towle commenced business under the name Worldwideradio.
When Preston registered the domain name, he put up a Web Site that said "Coming Soon Worldwideradio". At no time has Preston's Web Site actually carried on any business or provided any further information. Preston's Web Site immediately began to draw traffic from the web commerce web site Worldwide-radio.com.
Towle has been corresponding with Preston since Preston first registered the domain name on February 19, 1998. On more than one occasion, Preston has demanded $3 million and threatened that he will "sell" the domain name to someone else. On other occasions, Towle's correspondence has been completely ignored. One example of a communication from Preston to Towle will suffice here. In response to a demand by Towle that the offending web site be taken down, Preston made the following response on July 11, 2000:
'On May 8, you offered to buy this site from me. Now you are trying the strong arm tactic. I am not a new comer to this. So unless you are willing to pay upwards of $50,000 in legal fees (that is out of pocket from you) for a battle that we (sic) cannot win, then I highly suggest you stop harassing me over my property. There is no trademark law regarding generic names. There is no confusion in the market place. You came to me willing to buy the name initially. If you would like my lawyer to contact yours, please advise ASAP. Otherwise, please immediately discontinue the harassment.
PS If you had offered me a reasonable amount in the first place the name may already been yours. It is not any fault of mine that you bought worldwide-radio.com."
Because of Preston's interference with Towle's business by virtue of the use of the domain name Worldwideradio.com, it became necessary for Towle to change the name of his operation to "CosmicRadio.com". According to Towle, this set him back two years in the development of his operation. Towle intends to bring proceedings for damages in the Federal Court of the United States with respect to this matter.
I should also mention that there were periods of time during this dispute when the Respondent's web page address displayed information that would lead an ordinary viewer to believe that Worldwideradio was out of business. The Complainant says this also significantly damaged their business.
Where it is necessary for purposes of this decision to make reference to additional evidence, I will do so in my discussion and findings.
4. Parties' Contentions
The Complainant contends that :
(a) the domain name in question is identical to or so similar to its registered domain name and registered trade mark as to be confusing ;
(b) any rights Preston has to the domain name in question are illegitimate ; and
(c) Preston has registered this domain name in bad faith.
5. Discussion and Findings
I will deal with each of the Complainant's allegations in turn.
On the question of similarity, there is no question that the disputed domain name is virtually identical to Towle's domain name. The only difference is the hyphen in Towle's domain name. This is sufficiently similar to cause a likelihood of confusion to arise between the relevant consumers of the Complainant and those who view the Respondent's domain name. This likelihood is borne out by the Complainant' s evidence that the Respondent's Web Site 'drew from 66% of the total traffic we had when his site was down'.
Furthermore, Towle's registered trade mark is actually identical to the disputed domain name. There is no question there would be confusion between the domain name and the mark.
I now turn to the question of legitimacy. Based on the evidence submitted by the Complainant, it is clear that the Complainant commenced and is running a business that includes an operational e-commence web site. The Respondent, on the other hand, registered a domain name virtually identical to that of Complainant and then did nothing more than put up a Web Site that said, 'Coming Soon Worldwideradio'. In his communications with the Complainant, the Respondent never once alleged that he was operating or intending to operate a legitimate business using the domain name and Web Site. Indeed, the Respondent's position throughout has been that the Complainant should pay him $3 million or some other sum for the transfer of the domain name.
The Respondent has chosen not to respond to this complaint, and failing any evidence from him, the only inference to be drawn in these circumstances is that :
(a) Preston intentionally chose the domain name in question for its nearly identical degree of similarity with the Complainant's domain name under which the Complainant was carrying on business ; and
(b) The principal reason for registration of the domain name was to cause confusion with the Complainant' s domain name and mark with the sole purpose of inducing the Complainant to purchase the domain name from the Respondent.
As a result, I can come to no conclusion but that the Respondent Preston has no legitimate rights in the domain name in question.
For the reasons stated above, I have also concluded that the Respondent's actions in registering the disputed domain name amount to an attempt to hold the name 'hostage' in pursuit of a large ransom from its rightful user. Preston's actions in this regard amount to bad faith.
In light of my findings, I have concluded that the Respondent has registered a domain name that is similar to the Complainant's domain name and identical to the Complainant's trade mark, that Preston's claim to the domain name is not legitimate and that he has acted in bad faith by holding the domain name 'hostage'.
Accordingly, the application by the Complainant is granted and the domain name Worldwideradio.com is ordered to be transferred to the Complainant Towle.
Saskatoon, Saskatchewan, Canada
November 13, 2000
(s) Anne M. Wallace, Q.C.