ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: KEN DONE, KEN DONE & ASSOCIATES PTY LIMITED, AND KEN DONE DOWN UNDER PTY LIMITED
Respondent: TED GIBSON
Case Number: AF-0638
Contested Domain Name: kendone.com
Panel Member: Joel R. Reidenberg
 

 

1. Parties and Contested Domain Name

The complaint was filed jointly in the name of three parties to be referred collectively as the "Joint Complainants:" (1) Ken Done, an individual; (2) Ken Done & Associates Pty Limited, a company with an unknown place of incorporation ("KDA"); and, (3) Ken Done Down Under Pty Limited, a company with an unknown place of incorporation ("KDDU"). The Joint Complainants have identified a single address in Sydney, New South Wales (Australia) for their identity and are represented in this proceeding by counsel, Ann Slater of PricewaterhouseCoopers, 201 Sussex Street, GPO Box 427, Sydney, New South Wales (Australia.) The Respondent is Ted Gibson of Mooloolba, Queensland (Australia.) The contested domain name is KENDONE.COM.

2. Procedural History

The electronic version of the complaint form was filed on-line through eResolution's Website on December 6, 2000. The hardcopy of the complaint Form and annexes were received on December 12, 2000. Payment was received on December 13, 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.

The Clerk of eResolution concluded that: the Registrar is eNom, the Whois database contained all the required contact information, the contested Domain Name resolved to an inactive Web page and the complaint was 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 December 8, 2000. The requested information was received December 8, 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 ("ICANN Rules"). The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the complaint to the Respondent, notifying the Joint Complainants, the concerned Registrar and ICANN on December 15, 2000. This date is the official commencement date of the administrative proceeding.

An email notice of this proceeding and a copy of the complaint sent to the Respondent at the email address of record with the Registrant was not rejected by the Respondent's mail server. However, an additional email notice and a copy of the complaint sent to the address postmaster@kendone.com was returned 'undeliverable." Nevertheless, the fax containing the notice and a copy of the complaint was successfully transmitted.

The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the Respondent. A receipt for the registered mail was signed by the Respondent on January 4, 2001.

The Respondent submitted no response and no request for an extension of the time to file a response by January 4, 2001, the end of the 20 day filing deadline.

On January 5, 2001, the Clerk's Office contacted the undersigned, and requested that he act as panelist in this case.

On January 9, 2001, the undersigned accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On January 10, 2001, the parties were notified by email that the undersigned had been appointed and that a decision was to be, save exceptional circumstances, handed down on January 24, 2001.

On January 10, 2001, following receipt of notification of the appointment of a Panel, the Respondent stated by email to the Clerk that he received "the file only on 08 January" and stated that he required time to submit a response.

In reply, the Clerk informed the Respondent that "unless you had an exceptional circumstances not to answer before, it's too late to answer the complaint Form."

On January 10, 2001, the Respondent sent the Clerk another email stating: "Email is not an acceptable method of official notification. In any case I have recently returned from several months in Ukraine and Russia. Due to the difficulty in communications in these countries, I have been unable until now to study the material submitted I do not acknowledge receiving any request from you for a response until I received the registered mail package from you on 080101, for which I signed on receipt."

On January 17, 2001, the Panel requested through the Clerk that the Joint Complainants submit various items of documentation that were referenced in the complaint including copies of US trademark registration certificates and art exhibition materials for the preceding two years. The same request asked the Joint Complainants to provide a copy of an email allegedly sent by the Respondent to the Joint Complainants, to indicate clearly the allocation of ownership among the Joint Complainants of the relevant trademarks noted in the complaint, and to specify which of the three parties sought ownership of the domain name KENDONE.COM. The Panel sought this additional information to clarify the otherwise ambiguous relationships among the Joint Complainants and their respective interests in the trademarks and domain name. The request also stipulated that if the Joint Complainants would be unable to provide the supplemental information within the allotted seven days, then the Joint Complainants could request an extension prior to January 22, 2001.

On January 18, 2001, the Panel received and reviewed the email correspondence of January 10, 2001 between the Clerk and the Respondent and for the reasons discussed below did not grant an extension of time for filing a response to The complaint.

On January 24, 2001, the Joint Complainants requested a three week extension of the filing deadline for the requested additional information. The Panel denied this request because it was not made in a timely fashion.

3. Factual Background

The complaint in this case is novel in that it has been filed on behalf of three parties: Ken Done, KDA and KDDU. Ken Done is an Australian artist. According to The complaint, he has a controlling interest in KDA and KDDU and the two companies "were formed for taxation purposes." KDA is the registrant of the domain name DONE.COM.AU. KDA uses its Internet site to promote and offer for sale merchandise bearing the trademarks "KEN DONE" and "DONE" registered in Australia to KDA. The complaint lists KENDONE.COM.AU as the URL of the Joint Complainants. This domain name, however, is registered to KDDU. [See AUNIC Registration Services http://www.aunic.net/namestatus.html]. The complaint states that KDDU is the owner of US trademarks, but does not identify those trademarks and has not provided copies of any trademark registration certificates. The complaint states that Ken Done's reputation is closely associated with KDA and KDDU and that the trademarks associated with the Ken Done name are internationally recognized. The complaint states that the Respondent sought by email to offer the domain name for sale to the Joint Complainants for a price between USD $9000 - USD$10000. The complaint does not indicate to which one of the Joint Complainants the offer was made and, despite a specific request by the Panel, the Joint Complainants did not provide a copy of the alleged email.

Ted Gibson is the registrant of the web site KENDONE.COM. This is an inactive web site.

4. Parties' Contentions

The Joint Complainants contend that "there is no inherent conflict for all three entities to make this complaint jointly" because Ken Done has a controlling interest in each of the company-complainants and each of the parties has a vested interest in the notoriety of the international reputation attached to "Ken Done's name and the associated trade marks." The Joint Complainants contend that the domain name KENDONE.COM is a direct copy of the personal name of Ken Done and that the domain name KENDONE.COM is substantially identical or deceptively similar to KEN DONE and DONE. The Joint Complainants argue that this identity or similarity creates a high risk that potential customers of the Joint Complainants will be misdirected to KENDONE.COM when searching for the Joint Complainants. The Joint Complainants assert that since KENDONE.COM is not a descriptive term and Respondent "does not own nor is he entitled to use the words KEN DONE," the Respondent does not have a legitimate interest in the domain name. The Joint Complainants contend that the Respondent registered the domain name in bad faith because the Respondent allegedly sent the Joint Complainants an email offering to sell the name and allegedly procured the domain name for the purpose of selling it to the Joint Complainants.

The Joint Complainants further assert that they intend to use the association of KEN DONE with Internet services, retailing and marketing of services on-line.

The Joint Complainants seek transfer of the domain name KENDONE.COM. However, the desired recipient is somewhat ambiguous. In the complaint section designated for describing the marks, the Joint Complainants ask for transfer to KDDU, but then later, in the section on remedies, the Joint Complainants ask generically for a transfer of the domain name to the "complainant" without specifying which of the Joint Complainants.

The Respondent has not provided an answer to the complaint, but has alleged in email that these proceedings are "prejudiced and discriminatory" and that there is an "inconsistency between the way [Eresolution] treats the complainant (who pays you) and the respondent." The Respondent made these contentions in connection with the rejection by the Clerk and Panel of an extension of time for filing a response to the complaint.

5. Discussion and Findings

Before the Panel can reach the merits of this claim, two novel issues must be addressed: (A) the request by the Respondent for an extension of the time to file based on late notice and (B) the legitimacy of a multi-party complaint.

    A) Respondent's Request for an Extension of the Twenty Day Filing Deadline

As the registered owner of the domain name KENDONE.COM, Ted Gibson is required to submit to this proceeding according to Section 4(a) of the Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("ICANN Policy"). The rules of procedure for this proceeding are set forth in the ICANN Rules and, under 5(a) of those rules, the owner of a domain name must respond to any complaint within 20 days. Mr. Gibson has failed to satisfy this requirement, but has raised an objection to its application.

The Panel recognizes that the filing schedule contained in the UDRP can result in prejudice to Respondents, particularly non-corporate Respondents or relatively inactive business Respondents. This may occur because the time period begins to run upon "the commencement of the administrative proceeding." [ICANN Rules 2(a) and 4(c)]. The commencement date is defined as the date when postal mail, fax and email notification are dispatched to the Respondent [ICANN Rules 4(c )]. Yet, there is the exceptional possibility that an international postal delivery will not arrive prior to the expiration of the filing period and that the fax and email message will not actually be received within the twenty day period by the Respondent. Such a situation is more likely to occur in disputes involving registrants who are infrequent Internet users without ready access to facsimile services and whose physical contact address is outside the country of the Complainant's chosen forum as well as registrants who are regularly absent from their home or place of business without any message forwarding service or mail monitoring. Similarly, the situation is more likely to occur during certain holiday periods when messages might not be viewed contemporaneously and when postal mail delivery may be delayed. If through no fault of the Respondent, the Respondent does not receive actual notice of the complaint until after the expiration of the filing period, the procedural rule designed to promote the expeditious resolution of domain name disputes would instead unfairly penalize the Respondent.

The Provider, however, has the power to extend the time period in "exceptional cases" [ICANN Rules 5(d)]. Similarly, the general powers accorded to the Panel allow the Panel to "extend, in exceptional cases, a period of time fixed by these Rules." [ICANN Rules 10(c )].

In the event that the Respondent has not received actual notice prior to the filing deadline and the Respondent shows good faith in an attempt to expeditiously act upon the notice when received, the Panel should be lenient and allow an extension of time to assure that the Panel fulfills its obligation of ensuring that the parties "are treated with equality and that each Party is given a fair opportunity to present its case." [ICANN Rules 10(b)].

In this case, however, the Respondent has not made a credible showing of a notice failure nor demonstrated a good faith effort to respond. While the Clerk's records do not prove actual receipt by the Respondent of the email message or the fax, the confirmation of the successful fax transmission and the non-rejection of the email sent to the Respondent's listed email address (ted@aclama.com) create a rebuttable presumption of timely notice. The Respondent's actions and statements provide unsatisfactory evidence to refute the presumption of timely notice. The Clerk's records further show that the Respondent signed the registered mail receipt on January 4, 2001 and, thus, did acknowledge actual receipt of the complaint by the filing deadline itself. Rather than act on that day to request a filing extension, the Respondent did nothing until notified by email of the appointment of the Panel on January 10th, 2001. At that point, the Respondent replied the same day and asked for an extension. The Respondent asserted that he had not received the materials until January 8, 2001 in contradiction to the Clerk's postal receipt signed by the Respondent on January 4th, 2001. The Clerk indicated that the Respondent would need to have exceptional circumstances to justify an extension. Shortly thereafter also on January 10th, the Respondent replied again by email and challenged the use of email for notification, stated nebulously that he had been traveling without easy communications access, gave a vague statement that he had been ill and repeated the false assertion that he had not received the materials prior to January 8th , 2001. While the Respondent has the right to specify a preferred means of communication in the answer to the complaint [ICANN Rules 5(b)(iii)], this right does not affect the legitimacy of the means used to initiate a proceeding. Indeed, Respondent's very active use of email on January 10, 2001 suggests that email was an effective way to initiate contact with the Respondent. In fact, the messages do not actually deny receiving the December 15th 2000 email and fax, but rather refuse to "acknowledge" their receipt. The Respondent in his own words also seems to indicate that he had received the complaint at a prior date when he stated that "it is ridiculous to give me only two weeks to prepare an answer and get it to you." The delay in contacting the Clerk following receipt of the mailed complaint and the Respondent's assertions that are contradicted by the Respondent's own signed postal receipt demonstrate that the Respondent did not act in good faith to expeditiously request an extension.

Furthermore the Panel finds that Respondent's messages of January 10, 2001 were lacking in credible evidence to support a request for an extension otherwise based on "exceptional circumstances" under Sections 5(d) and 10(c ) of the ICANN Rules. The Respondent's explanation of the situation to justify an extension was inadequate. The Respondent alleged that travel made communications difficult, but failed to indicate any actual dates when communications facilities were unavailable. The Respondent also claimed that an unspecified illness incapacitated him, but failed to indicate periods of incapacity and the nature of the incapacity that would compromise the Respondent's ability to respond prior to the filing date of January 4, 2001.

The Respondent is, thus, not entitled to an extension of the filing deadline and the failure to comply with the deadline must be treated as a default. However, the default of a respondent does not automatically result in a judgment for the complainant. [See ICANN Rules 14(b)].

    B) The Legitimacy of Multiple Party Complainants

This complaint was filed jointly be three related parties. The ICANN Rules specifically allow for a single complaint to contest multiple domain names held by the same respondent [ICANN Rules 3(c )] and do not specifically address a single complaint brought by multiple parties. Although the ICANN Rules do not specifically address this type of multi-party claim, the ICANN Rules do contemplate that complaints be brought by a single party. Section 4(a) of the ICANN Policy refers to "a third party (a 'complainant')" and the ICANN Rules define "Complainant" in Section 1 as "the party initiating a complaint" while Section 3(a) permits "any person or entity" to initiate a complaint. No provision explicitly excludes a single complaint brought by multiple related parties with a common interest in the disputed domain name.

In such cases, however, the complaining parties must be meticulous in delineating the relationships among the parties, the relevant trademark ownership interests of each party, and each party's stake in the remedy to comply with Rules 3(b)(viii) - (ix). If these elements are not clear, then a Panel cannot adequately evaluate the claim and the integrity of the domain name dispute settlement process is jeopardized. In fact, complainants would then be able to use the domain name dispute settlement process for improper purposes in violation of Section 3(b)(xiv) of the ICANN Rules. For example, joint parties could then use the dispute settlement process to bypass the legal separation of corporate entities and effect a hidden transfer of the interest in a valuable good-will asset, the domain name, from the actual trademark owning party to another member of the group.

This case illustrates the need for high clarity in the joint filing by multiple parties. The complaint fails to identify completely each of the corporate parties; the Joint Complainants did not even state the corporate domiciles of either KDA and KDDU. The complaint claims the existence of various worldwide trademarks without any clear showing of each party's ownership interest. Under ICANN Rule 3(b)(xv), the Joint Complainants were required to submit the trademark registrations. They did not do so. Instead, a listing compiled on PriceWaterhouseCoopers Legal stationary purporting to be "registered Australian trademarks" of KDA was attached as an Annex without any other trademark registration information. Nevertheless, the complaint did, at one point, ask for a transfer of the domain name to KDDU "being the owner of the US trade mark registrations." The Joint Complainants failed to provide any information concerning any US trademarks in the complaint and failed to respond in a timely manner to the request of Panel for copies of the US registrations that would show the relationship between the parties and the trademarks. At a later point, the complaint requested as a remedy "transferred [sic] to complainant" without specifying which of the three Joint Complainants should be assigned the domain name. If this remedy contemplated Ken Done, the complaint never indicated that Mr. Done owned any of the trademarks. If the remedy intended to transfer the domain name to either KDDU or KDA, the complaint never identified why one of the two owners of the alleged trademarks should have precedence over the other in winning the domain name. The obscured relationship among the parties and ownership interests makes the task of assessing Respondent's rights with respect to any of the Joint Complainants impossible and with respect to any of the trademarks unclear.

In addition, the Panel infers by the Joint Complainant's failure to respond to the request for additional information that the Joint Complainants willfully made the relationship obscure. Such willful obscurity suggests that the joint parties might be seeking to use the domain name dispute settlement process for inter-corporate asset-management purposes. Indeed, the complaint points out that KDA and KDDU "were formed for tax purposes."

The Joint Complainants have, thus, inadequately presented their claims for the Panel to evaluate the relationship of the parties, the ownership interests of each party-complainant, the remedy sought and the stake of each party-complainant in that remedy. Consequently, the complaint must be rejected.

    C) The Merits of the Claim

Because the Joint Complainants have not properly identified the trademarks on which the complaint is based, described the rights of each of the Joint Complainants in such trademarks and clearly specified the remedy sought, the claim must be rejected and there is no need to address each of the criteria set out in Section 4(a) of the ICANN Policy to determine if the Respondent had legitimate rights to the domain name.

6. Conclusions

The Panel concludes that a complaint may be submitted by multiple related parties where there are common interests in a single domain name, but that the Joint Complainants failed to present their claim adequately by obscuring the trademark ownership interests among each of the parties, requesting an ambiguous remedy and avoiding the identification of each party's stake in the remedy. The complaint is therefore rejected.

The Panel further notes that the Respondent failed to provide a credible justification for an extension of the filing deadline and was therefore not entitled to an extension of the deadline.

7. Signature

New York, NY

January 25, 2001

(s) Joel R. Reidenberg

Presiding Panelist