ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The parties in this case are The Author's Guild, Inc. as complainant and Old Barn Studios, Ltd. as respondent. There are nine contested domain names: RLSTINE.COM, JOHNBERENDT.COM, CHARLESFRAZIER.COM, THOMASLFRIEDMAN.COM, JOHANNALINDSEY.COM, LOUISSACHAR.COM, BILLIELETTS.COM, ELIZABETHSTROUT.COM, and SUSANELIZABETHPHILLIPS.COM
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on November 7, 2000. The hardcopy of the Complaint Form and annexes were received on November 10, 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 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 Register.com, the Whois database contains all the required contact information, the contested Domain Names resolves to inactive Web pages 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 November 7, 2000. The requested information was received on November 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 November 14, 2000. This date is the official commencement date of the administrative proceeding.
Only the emails to the postmasters to the domain names were returned 'undeliverable'. All the faxes were successful.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.
The Respondent did not submit a Response neither via eResolution's website nor a signed version.
On December 7, 2000, the Clerk's Office contacted the Complainant's Representative in order to enquire as to the Complainant's opinion to change the size of the Panel from three members to a single member, due to the fact that no response was received on the case and the Panel selection process could not be completed as established in eResolution Supplemental Rules, Sub Section III, Article 8.
On December 11, 2000, the Complainant's Representative informed the Clerk's Office of the Complainant's decision to continue the proceedings with a three member Panel, despite the absence of the Respondent on the Panel's selection process. The Clerk's Office therefore, chose Mr. David Perkins, as a Co-Panelist proposed by the Complainant, Mr. Edward Chiasson as a Co-Panelist on behalf of the Respondent and Mr. Richard Hill as the President of the Panel.
On December 14, 2000, the Clerk's Office contacted Mr. David Perkins and Mr. Edward Chiasson, and requested that they act as Co-panelists in this case. On the same date, Mr. Richard Hill was contacted to act as the President of the Panel.
On December 14, 2000, Mr. Richard Hill, accepted to act as President of the Panel in this case and filed the necessary Declaration of Independence and Impartiality. On the same date Mr. Chiasson accepted to act as Co- Panelist, filing the necessary declaration of independence and impartiality on December 15, 2000. On December 19, 2000, Mr. Perkins accepted to act as Co-Panelist on this case filing the necessary declaration of independence and impartiality.
On December 19, 2000, the Clerk's Office forwarded a user names and passwords to all Panel members, allowing them to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On December 19, 2000, the parties were notified of the Panel appointment and that a decision was to be, save exceptional circumstances, handed down on January 17, 2000.
On December 24, 2000 the respondent sent an E-Mail to the Clerk's office, with the following content:
We sincerely apologize for submitting this late statement, but we would like to explain to the panel why we have not submitted a full Response.
We had believed that the Complaint embodied multiple-Complainants (Billie Letts, R.L. Stine etc.), which is not permitted under ICANN rules. We had therefore assumed the case would be dropped.
However, the Clerk has kindly explained that technically there is only one Complainant in this case, i.e. The Authors' Guide [sic].
We acknowledge that each of these writers has a case to argue for a particular domain name. But The Authors' Guild, a third party, surely has no case of its own, even if it has the support of some writers who might individually have a case. (This is why we had assumed there were multiple-Complainants.)
In accordance with its powers under clauses 10(d) and 12 of the ICANN Policy, the panel has decided to take this submission into account.
3. Factual Background
The contested domain names were registered in February 2000. A change in the registration (presumably a transfer to the respondent) took place in August 2000.
Each of the contested domain names includes the name of an author.
The authors in question have authorized the complainant to take action on their behalf to recover the contested domain names.
4. Parties' Contentions
The complainant contends that the nine contested domain names which have been registered by the respondent all contain the names of famous authors. Furthermore, it contends that (i) each of the authors whose names have been co-opted by the respondent has common law trademark rights in his or her name by virtue of the international reputations of such authors, (ii) the respondent has no legitimate proprietary rights in the names and (iii) respondent has registered and used each of the domain names in bad faith.
The respondent has defaulted and hence makes no contentions, apart from its contention (quoted above) that the case should be dropped because it concerns multiple complainants.
5. Discussion and Findings
The panel will first address the procedural issues related to the fact that the respondent has defaulted (I) and that the several authors involved in the case are represented by The Authors Guild (II), and then analyse the evidence to determine whether the complainant has proven, in accordance with article 4.a of the ICANN Policy that (III):
I. The procedural issue related to the default of the respondent
Since the respondent has defaulted, this panel must first determine what the procedural implications are of a default. Should the complainant automatically prevail, or should the panel anyway examine the evidence and base its decision on its determination of the relevant facts and laws?
While the ICANN Policy, Rules and the Supplemental Rules that govern these proceedings do not explicitly address this question, they do give some guidance. Notably, article 4.a of the ICANN Policy states:
"In the administrative proceeding, the complainant must prove that each of these three elements are present." [emphasis added]
This panel therefore holds that it cannot grant the claimant's request automatically, but that it must instead examine the evidence presented to determine whether or not the complainant has proven its case as required by the ICANN Policy.
II. The issue of representation of multiple authors
The respondent argues that the case should be dropped because there are "several complainants". But this is not in fact the case. Each of the concerned authors has requested that the complainant of record (The Authors Guild) represent him/her in ICANN proceedings to recover the contested domain names. Furthermore, the complainant has been authorized by the individual authors to bring this proceeding.
Clause 3(a) of the ICANN Rules provide that "any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy". And clause 1 (Purpose) of the ICANN Policy states that the Policy applies to "a dispute between you [the respondent] and any party other than us (the registrar) over the registration and use of an Internet domain name registered by you". In this case the provider (eResolution) considered that the Authors Guild had the necessary locus even though the common law trade mark rights relied upon are those of the individual authors rather than of the Guild. The panel concurs with the provider on this issue: the concerned authors have transferred, for the purposes of these proceedings, their rights to their names to the complainant of record, in so far as those rights are infringed by the respondent.
Multiple domain names may be contested in a single ICANN proceeding, in accordance with clause3(c) of the ICANN Rules, which states "the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." In the present case, the domain names are indeed registered by the same domain name holder, so the panel may examine together all the disputed domain names.
Furthermore, clause 3(b)(ii) of the ICANN Rules makes it clear that a complaint may be submitted by a representative of the complainant, as in the present proceeding.
Finally, clause 4(f) of the ICANN Policy provides for consolidation of related cases. Although consolidation is not the issue here, it is clear that the intent of the Policy is to allow related domain name disputes to be handled by a single panel, as in the present proceedings.
The complainant has presented evidence that it represents the authors whose names are part of the contested domain names, and that it intends to transfer each of the contested domain names to the concerned author.
The panel therefore rejects the respondent's request to dismiss the proceedings.
III. Analysis of the evidence in this case
Similarity between the trademark and the domain name
The complainant (acting on behalf of the concerned authors) has presented evidence that the names of these authors enjoy common law trademark protection in at least the USA and the UK (there are several relevant precedents under the Policy, for example Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, relating to the famous author Jeanette Winterson and Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210, relating to the name of the world famous actress Julia Roberts). The contested domain names clearly are at least confusingly similar to the names of the authors (if not identical), since the only difference between the domain name and the name of the authors is the addition of ".com" after the authors names.
Lack of rights or legitimate interests in the contested domain name
The complainant has presented evidence and argued convincingly that, given the reputation of the authors in question, and their works being widely sold in the USA and the UK, it is hard to understand how the respondent could have any rights or legitimate interests in any of the contested domain names.
Bad faith registration and use of the contested domain name
The respondent is not actually using any of the contested domain names to point to a web site. Thus the question arises whether mere registration of the domain name constitutes use. While there may be differences of opinion regarding the general answer to that question, it is commonly accepted that there are situations in which passive use (that is, mere registration without an active web site) can lead to a conclusion of bad faith use. In Salvatore Ferragamo Italia S.P.A. v. Ashot Rostomian, WIPO case no. D2000-1187, the Panel held: "Mere registration without a legitimate interest does not necessarily establish bad faith. An Administrative Panel must examine the overall conduct of the parties." That is, mere registration of a domain name may constitute some evidence of bad faith use of that domain name.
Since there is no direct evidence of what the respondent intends to do with the domain name, the panel will have to make inferences from the available facts.
In this context, we cite WIPO decision D2000-0003, regarding telstra.org. Although there are significant differences in the facts of the present case and the facts of the Telstra case, nevertheless the inferences made by the panel in the Telstra case do appear relevant for the present case. (The reasoning and wording below are directly derived from those of the Telstra case.)
In particular, this panel, as did the Telstra panel, must determine whether in the circumstances of this particular case, the passive holding of the domain name by the respondent amounts to the respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) the complainant's trademarks (names) are widely known,
(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, an infringement of the concerned authors' rights under trademark law, or a violation of Article 4(b)(i), (ii), or (iv) of the ICANN Policy.
Furthermore, the respondent has registered a large number of authors' names as domain names. Such block registration is indicative of a bad faith intent to profit from names in which the respondent has no rights. Indeed, such block registration is indicative of the pattern of conduct that is held to be an example of bad faith under clause 4(b)(ii) of the Policy. This clause states that the following shall be evidence of the use and registration of a domain name in bad faith:
(ii) you have 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 you have engaged in a pattern of such conduct
In light of these particular circumstances, this panel concludes that the respondent's passive holding of the domain names in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name "is being used in bad faith" by the respondent.
This panel concludes that the claimant has proven that the contested domain names are confusingly similar to the trademarks consisting of the authors' names, that the respondent has no rights or legitimate interests in the contested domain names, and that the respondent has registered and used the contested domain names in bad faith.
The panel therefore orders all nine contested domain names be transferred to the complainant.
(s) Richard Hill, Presiding Panelist
Geneva, Switzerland, 8 January 2000
(s) Mr. Edward Chiasson, Co-Panelist
Vancouver, Canada, 8 January 2000
(s) David Perkins, Co-Panelist
London, UK, 8 January 2000