ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant in this case is Carta, Incorporated of 9343 Tech Center Drive, Suite 110, Sacramento, California 95827. The Respondent is Oasis Telecommunications, Inc. of 1541 Alta Drive, Suite 302B, Whitehall, Pennsylvania 18052. The contested domain name is carta.com and the Registrar is Network Solutions, Inc. ("NSI").
2. Procedural History
The electronic version of Complainant Carta's Complaint form was filed on-line through eResolution's Website and in hardcopy on October 2, 2000. eResolution's Clerk confirmed that the Registrar for "carta.com" is NSI, confirmed that the WHOIS database contains all of the required contact information (excepting only the billing information), confirmed that the contested domain name resolves to an active Web page, and confirmed that the Complaint is administratively compliant. Complainant requested a one-member panel.
An email was sent to the Registrar, NSI, by the Clerk to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on October 2, 2000. The requested information was received on October 3, 2000.
On October 11, 2000, the Clerk then sent a copy of the Complaint and cover sheet to the respondent in accordance with paragraph 2(a) of ICANN's Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). October 11, 2000 is, therefore, the commencement date of this administrative proceeding. On October 11, 2000, the clerk notified the Complainant, the Respondent, the Registrar, and ICANN of the date of the commencement of the administrative proceeding.
On October 27, 2000, Respondent Oasis filed its Response, via eResolution's Internet site. The signed version of the response was received by the Clerk on October 31, 2000.
On November 6, 2000, this panelist, Mr. Andrew Mansfield, was selected as the Panel in this case and on November 7, Mr. Mansfield accepted the position. The Parties were notified of this selection on November 8, 2000.
Also on November 8, 2000, the Complainant sought permission to submit further information to the panel in response to the Respondent's Response. On November 14, 2000 the Panel, seeking to obtain all relevant information in rendering this decision, requested additional written information, styled by each as a Further Statement, from the Parties pursuant to Rule 12 of the Rules. Complainant was requested to submit no more than 2 pages by November 15, 2000. Respondent was requested to submit no more than 2 pages by November 16, 2000. Each Party was directed to address only those issues not discussed in that Party's prior submission. The Complainant provided its Further Statement on November 15, 2000, while the respondent declined the opportunity to supplement its initial filing.
3. Factual Background
On August 24, 1995, Oasis, a regional Internet Service Provider in Pennsylvania, registered the domain name carta.com with NSI in preparation for a planned Web site to serve as the Web page for an affiliated network of Internet Service Providers and Web Design firms. Although Oasis and its proposed joint venturer, General Mortgage Company, did not continue to pursue the affiliated network, Oasis has maintained the registration carta.com domain name to the present.
On August 26, 1996, more than a year after Oasis had initially registered carta.com, Carta, Inc. was incorporated in the State of California. Four years later, in April, 2000, Carta, Inc. filed an application with the United States Patent and Trademark Office (the "PTO") to register the word mark Carta as a trademark. No information submitted to the Panel indicates whether the PTO has provided a Notice of Allowance or responded with an Office Action to the Complainant's application.
On March 9, 2000, a month before Carta, Inc. filed its application with the PTO, Carta contacted Oasis in an attempt to acquire the carta.com domain name. The evidence before the Panel indicates that negotiations over a potential transfer of the domain name took place. Oasis claimed during these negotiations that it had been offered $40,000 by an Italian corporation for the carta.com domain name and had declined to sell the domain name at that price. The Parties could not agree on a price for transfer of the domain name from Oasis to Carta and Carta subsequently initiated this action.
4. Parties' Contentions
The Parties agree that Oasis only recently displayed a Web page at the "carta.com" domain and that Oasis has never made commercial use of the domain name. Complainant states that it used the domain name with respect to the Carta Affiliates venture in July, August and September 1995. Complainant and Respondent disagree significantly, of course, over the import of the long period of non-use. Carta contends that Oasis' non-use constitutes evidence of illegitimacy and bad faith sufficient to warrant Oasis' forfeiture of the carta.com domain name under the Rules. Indeed, Carta contends that Oasis' "only purpose for holding the domain name now is to sell it to the highest bidder." (Complaint at 4.c). Oasis counters with the contention that "its failure to use the domain name should have no bearing on its continued ownership, and right to use the domain name." (Response at 3.b).
5. Discussion and Findings
A. Governing Regulations
The regulations governing this proceeding are ICANN's Uniform Dispute Resolution Policy (the "Policy"), the Rules, and the eResolution Supplemental Rules (the "Supplemental Rules"). In accordance with Rule 15(a), the Panel considers other authority, including other decisions issued under the Policy and Rules, as persuasive, but not binding, precedent in the current matter.
Paragraph 4(a) of the Policy requires Carta to prove each of three elements to merit a finding in its favor. These elements that must be proved by Carta are:
(i) that the domain name in issue "is identical or confusingly similar to a trademark or service mark in which the complainant has rights;"
(ii) that Oasis "has no rights or legitimate interests in respect of the domain name;"
(iii) that the domain name in issue "has been registered and is being used in bad faith."
B. Identity or Confusing Similarity
There is no question that the common law mark, Carta, first used in commerce in 1996, and the domain name, carta.com, are identical but for the com suffix. Respondent Oasis makes no attempt to dispute this similarity. On this record, the Panel finds that Complainant has proven that the domain name is identical to a trademark in which it has rights.
C. Legitimate Interest
Neither party questions that Oasis had a legitimate interest in the carta.com domain name at the time of initial registration in 1995. A joint venture between Oasis and General Mortgage, to be called Carta Affiliates, was in negotiation between the potential joint venturers and the domain name was registered as the main Web page for that joint venture. Had Carta Affiliates been successfully consummated, there would be no basis to dispute the legitimacy of Oasis' use of the carta.com domain name.
But the Carta Affiliates joint venture did not mature into a successful business, but rather was abandoned by the joint venturers, who agreed that the registration should be maintained and considered, between the potential joint venturers, the property interest of Oasis. This case accordingly presents a difficult question that does not appear to have been analyzed in reported Policy decisions. The question is whether, and under what circumstances, an indisputably legitimate initial interest may become illegitimate due to changed circumstances or a period non-use. Another way to analyze this question is to ask whether an initial legitimate interest, at the time of registration, continues to provide a legitimate interest to the registrant under the Policy after the basis of the legitimate interest has changed.
The Panel rejects a bright-line rule, advocated implicitly by Complainant, that if a domain name registrant's initial, legitimate interest dissipates, the registrant must cede the domain name back to the registrar or to any holder of later developed trademark rights identical or similar to the domain name. Similarly, the Panel rejects the opposite rule that an initially legitimate interest may shield, without temporal or circumstantial limitation, a domain name holder who, due to changed circumstances, later has no legitimate interests in his domain name. The first rule would label as illegitimate all of those persons or entities that reasonably register a domain name in anticipation of a legitimate business enterprise that fails to mature. The second rule would provide a safe harbor for the later extortion of trademark holders so long as the registrant proffered a past, legitimate interest in the domain name.
This Panel adopts, instead, a flexible inquiry which seeks to balance former and current interests the Respondent has held or holds in the domain name, while also seeking to prevent extortion or unreasonable demands for remuneration by registrants whose legitimate interests in the domain name have passed.
Oasis had a legitimate interest in the domain name Carta.com at the time it registered the domain name. Oasis was not informed of Carta's trademark interests, if any, until 2000. Oasis has developed a number of community or not-for-profit Web sites in association with its Internet Services. Oasis maintains that it has "never internally abandoned" the use of the domain name and has considered operating a community or not-for-profit Web site at this address. (Response at 4). The Panel finds that Oasis intends to make use of the domain name.
The Policy, the Rules, the Supplemental Rules, and even the prior Policy decisions, provide little guidance on the question of which interests count as legitimate and which are deemed illegitimate, the temporal aspect of legitimacy, and the weight to be afforded a registrants present, but unfulfilled, intention to make use of a domain name. We are called upon to decide today whether Oasis' interests in the carta.com domain name, though not of a present, commercial character, nevertheless rise to a level of legitimacy sufficient to prevent the domain name from being wrested from Oasis's control. We conclude that they do.
Oasis present interest in developing content at the domain name, when analyzed in the context of its past conduct, is neither spurious nor false. When coupled with its legitimate interest at the time of registration, the present interest appears to be even stronger. As the Panel will discuss below, the holding of the domain name and the conduct of Respondent do not lead to a finding that Respondent is a bad actor or has undertaken any action in bad faith.
Were we to hold otherwise, we would recognize a rule of decision that present, commercial interests, even if later formed, supercede non-commercial interests. Perhaps worse, we would recognize a rule that would encourage a race to develop a Web site in competition with better-funded rivals or risk losing the domain name, even though a registrant may have a legitimate but future interest in a domain name.
The Panel does not find that Complainant has established that Respondent has no legitimate interest in the domain name.
D. Bad Faith
Even if the panel were to resolve the difficult question of the legitimacy of respondent's interest in favor of Complainant, Complainant has not carried its burden of proving Respondent's bad faith. Paragraph 4(b) of the Policy sets forth a representative, though not exhaustive, list of circumstances indicating a respondent's bad faith:
(i) circumstances indicating that 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 the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's web site or location or of a product or service on respondent's web site or location.
The record presents no facts indicating that any of the circumstances described in subparagraphs 4(b)(ii)-(iv) exist. Subparagraph (ii) is clearly inapplicable, because Carta did not exist at the time Oasis initially registered the carta.com domain name. Even if Oasis was aware of Carta's existence when it re-registered the domain name, there is no indication in the record that it re-registered for the purpose of preventing Carta from using the carta.com domain name or for the purpose of demanding excessive consideration. Finally, there is no evidence that Oasis "has engaged in a pattern of such conduct."
Subparagraphs (iii) and (iv) are also unsupported by the evidence. There is no indication that Oasis has ever had any intention of "disrupting the business of a competitor." Similarly, the fact that Oasis has not and does not use the domain name for commercial purposes renders inapplicable subparagraph (iv), which requires a motive of "commercial gain."
Perhaps recognizing these limitations, Complainant makes an unavailing argument that a variant of the circumstances contemplated by subparagraph (i) apply. Complainant contends in its further statement that Oasis is "trafficking in" and "hoarding" the carta.com domain name in an attempt to sell it either to the Complainant or to the highest bidder. Respondent's evidence indicates otherwise. Respondent avers, and Complainant does not dispute, that it has declined offers as high as $40,000 for the carta.com domain name and that it has, thus far, been unwilling to sell the domain name to Complainant. The Parties' inability to agree on the price or value of the domain name does not automatically make Respondent's desire not to transfer the domain name an act of bad faith.
The Panel must still decide whether re-registering a domain name that the registrant now knows to be a valid trademark constitutes bad faith. But for the possibility of receiving valuable consideration from Carta for the carta.com domain name, would Oasis have been likely to register or subsequently re-register that domain name? For any of the reasons listed above, Oasis would likely have seen fit to have paid the re-registration fee and maintained their ownership of the carta.com domain name, as it had done in the four preceding years. Re-registration under such circumstances does not give rise to a finding that Respondent acted in bad faith.
The Panel does not find that Complainant has established that Respondent has registered or is using the domain name in bad faith.
Because the Complainant has failed to prove two of the three elements necessary to entitle it to relief, the Complaint is rejected.
Dated: November 23, 2000
(s) Andrew S. Mansfield