ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: BACKRIVER COMMUNICATIONS INC.
Respondent: THOMAS THURSTON
Case Number: AF-0667
Contested Domain Name: backriver.com
Panel Member: Michael P. Marsalese
 

 

1. Parties and Contested Domain Name

The Complainant is Backriver Communications Inc. of Cambridge, Massachusetts (USA). In its Complaint, filed online with eResolution on January 6, 2001, Backriver Communications Inc.sought the transfer of the domain name backckriver.com registered in the name of Respondent Thomas Thurston and the Registrar is Network Solutions, Inc.

2. Procedural History

The electronic version of the Complaint form was filed on-line through eResolution's Website on December 26, 2000. The hardcopy of the Complaint Form and annexes were received on January 9, 2001. Payment was received on December 26, 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 December 28, 2000. The requested information was received January 3, 2001.

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 January 9, 2001. This date is the official commencement date of the administrative proceeding.

On January 12, 2001, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on the same day.

On January 15, 2001, the Clerk's Office contacted Mr. Michael Marsalese, and requested that he act as Lead Panelist in this case.

On January 16, 2001, Mr. Michael Marsalese, accepted to act as Lead Panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On January 16, 2001, the Clerk's Office forwarded a user name and a password to Mr. Michael Marsalese, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On January 16, 2001, the parties were notified that Mr. Michael Marsalese had been appointed and that a decision was to be, save exceptional circumstances, handed down on January 30, 2001.

On January 30, 2001, Lead Panelist exercised his power to prorogate the term for rendering the final decision until February 1, 2001.

3. Factual Background

Backriver Communications, Inc., is a Massachusetts corporation, which provides goods and services, including web site designs and development, interactive and promotional CD-ROMs, print materials, advertising, and various other marketing communications materials for companies headquartered or located in the United States, Belgium, and the United Kingdom. In the coming months, Backriver expects to perform work under in Canada, Mexico, Australia and France. (See Annex 1 to Complaint Form).

The domain name in question, www.backriver.com was created on December 23, 1997 on behalf of the company but prior to its incorporation on January 1, 1998. The original registration of the domain name was on behalf of the company but paid for by Respondent Thomas Thurston with subsequent reimbursement by the company to Mr. Thurston. It appears that the predominant reason for the individual registration was the result that Backriver Communication's corporate roles had yet to be established. Once the company had been incorporated, the registration was not modified. (See Annex 2 to Complaint Form). Respondent sets forth that domain name registration was never registered for the company's use. (See Page 3 of Respondent's Response Form). On October 15, 1999, Complainant registered the domain www.backriver.net and announced the change to its customers and world at large.

The Complainant does not have either a trademark or service mark registration with the United States Patent and Trademark Office, however, Respondent states that there exists an application for trademark and service mark for backriver.com on file and assigned serial number 78/042699. Neither party submitted any evidence corroborating this application. Respondent sets forth that the Complainant has failed to pursue the requisite means to preserve its trademark or service mark registration. (See Page 2 of Respondent's Response Form).

The Complainant has utilized the domain name since its inception up and until December 9, 1999, the date that the Respondent re-registered the domain name, changed the hosting ISP and removed the domain parking/forwarding capabilities. (See Annex 3 to Complaint Form).

The service mark in question was developed shortly after the company's incorporation. The Respondent was the President of the company at the time the service mark was developed. The service mark has been in use by the Complainant continuously since its inception.

According to Complainant's statements, the first issue of the ownership and registration of the domain, www.backriver.com, did not surface until January 1999 at the time the company realized that the domain contract information had been modified by the Respondent. Respondent renewed the registration in his name for an additional four years until December 24, 2004. Respondent further states that he has never conducted or infringed upon Complainant's business; utilized Complainant's name nor has he elicited business from any of Complainant's customers or clients. (See Annex 3 to Complaint Form).

4. Parties' Contentions

(I) COPY OR SIMILARITY

Complainant states that the domain names in question was created on behalf of the company on

December 23, 1997, prior to the company's incorporation on January 1, 1998, and it utilized the domain until December 9, 1999, when Respondent re-registered the domain, changed the hosting ISP and removed the domain parking/forward capabilities. Complainant further states that the re-registration was done after it registered www.backriver.net on October 15, 1999 and announced said change to its customers and the rest of the world via the world wide internet. (See Annex 2 to Complaint Form).

Respondent challenges Complainant's claim stating that the Complainant does not have either a trademark or service mark registration with the United States Patent and Trademark Office and that the Complainant has failed to vigorously and diligently pursue the requisite means to preserve its trademark or service mark registration. (See Page 2 of Respondent's Response Form).

(II) ILLEGITIMACY

As far as illegitimacy is concerned, Complainant remarked that Respondent has no legal or ownership right to the domain name backriver.com. Complainant further underlines that the domain name in question, www.backriver.com was created on December 23, 1997 on behalf of the company but prior to its incorporation on January 1, 1998. The original registration of the domain name was on behalf of the company but paid for by Respondent Thomas Thurston with subsequent reimbursement by the company to Mr. Thurston. It appears that the predominant reason for the individual registration was the result that Backriver Communication's corporate roles had yet to be established. Finally, Complainant states that the Respondent is not making any use of the domain name in question. (See Annex 3 to Complaint Form).

Respondent's position is based upon the premise that the domain name registration occurred prior to the incorporation of the Complainant and that the registration was never for the Complainant's use. This premise assumption is, in turn, based on the circumstance that the domain name was never registered in the company's name. (See Page 3 of Respondent's Response Form).

(III) BAD FAITH

In Complainant's opinion Respondent registered and is using the domain name in bad faith. In particular, Complainant states that Respondent's behavior falls within the scope of application of:

    - Article 4(c)(i) of the ICANN Uniform Dispute Resolution Policy since the domain name is idle and maintained without content on the server NS1.FROGSPACE.NET;

    - Article 4(c)(ii) of the Policy since the original registration made on behalf of the Complainant, it utilized the domain until December 9, 1999, the date that the Respondent re-registered the domain name, changed the hosting ISP and removed the domain parking/forwarding capabilities;

    - As well as of Article 4(c)(iii) of the Policy since the domain www.backriver.com has had no active web site associated with it since October 15, 1999.

Respondent replied, inter alia, that:

    - Complainant has no legal interest or ownership rights to the domain www.backriver.com;

    - Respondent has never conducted or infringed on Complainant's business, utilized Complainant's name nor elicited business from Complainant's customers or clients.

(IV) OTHER PROCEEDINGS

On July 19, 1999, Complainant filed a written request, after attempting to unsuccessfully to change the registration information over the telephone, with Network Solutions, Inc. requesting that Network Solutions change the registrant information from Respondent to Complainant. Apparently Network Solutions, Inc. did not honor Complainant's request.

5. Discussion and Findings

This procedure is regulated by the ICANN Uniform Domain Name Dispute Resolution Policy and by the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). According to Article 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), Complainant must submit evidence confirming that in a specific case all of the following three elements are present:

    (i) that the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Copy or Similarity); and

    (ii) That Respondent has no rights or legitimate interests in respect of the domain name (Illegitimacy); and

    (iii) That the domain name has been registered and is being used in bad faith (Bad Faith).

Parties submissions and evidence relating to each of the above three elements will be dealt with in the following paragraphs.

(I) IDENTITY OR SIMILARITY

Lead Panelist is of the opinion that the domain name in question, is strikingly similar if not confusingly similar to the Complainant's name and servicemark.

Complainant failed to provide any evidence of registration of the trademark or service mark of www.backriver.com. It further stated that Complainant's service mark has been used in connection with its business since January 1, 1998 and thus having considerable goodwill in the same. Respondent did not dispute the above circumstances and the same should therefore be considered as proven.

Respondent's argument is that Complainant does not have a trademark or service mark registration with the U.S. Patent and Trademark Office and as a consequence thereof, may not claim any right with respect to the domain name in question. Moreover, Respondent asserts that since Complainant failed to vigorously and diligently pursue any means to preserve its trademark or service mark registration, Claimant should benefit from such misfeasance.

The question to be answered is, therefore, whether the holder of a unregistered trademark or service mark has the right to prevent a third party from owning or making use of a domain name similar in nature to its corporate name and similar to its service mark.

The Complainant aggravated the situation by not having registered the domain it wanted earlier. The situation presented in this dispute is a problem created by the neglect and/or inattention of the Complainant. It clearly has established that it could have acquired the domain name at issue at any time over a period of a few years, yet for whatever reasons, chose or elected not to do so.

A Complainant's best position is to have an existing federal trademark registration that is identical to the disputed domain name. For example, in the arbitration of World Wrestling Federation Entertainment, Inc. v. Michael Bosman, the Complainant owned a registered federal trademark for WORLD WRESTLING FEDERATION. As the domain name in dispute was worldwrestlingfederation.com a decision was entered unanimously in favor of the Complainant. In Bournstein d/b/a Roseville On-Line and RSVL On-Line v. Williams, eResolution, Case No. AF-0388, 10/3/00), the panel held that registration of a domain name identical to another party's registered trademark is not necessarily a violation of the Uniform Dispute Resolution Policy. The panel observed the Complainant's problem was his failure to promptly register his mark.

On the facts, the domain name backriver.com is a combination of the Complainant's corporate name and substantially similar to its registered service mark www.backriver.net, which Complainant has undisputed goodwill, while Respondent has certainly not presented any evidence of any goodwill in the domain name provided on his part except as the former president of the Complainant. Lead Panelist further holds that the above conclusion is further supported by the fact that Complainant reimbursed Respondent for the cost of creating the domain name and the registration after Complainant's incorporation.

(II) ILLEGITIMACY

Complainant has failed to presented prima facie evidence of Respondent's lack of legitimate right or interest in the domain name in question. In particular, Respondent did not conduct business or infringe upon Complainant's business or elicit business from Complainant's customers or clients.

As a consequence, the burden of proof of the legitimacy element does not pass to Respondent in accordance with paragraph 4(c) of the Policy. See Spincycle Inc. v Spin Cycle, Case No. AF-0176.

Complainant sets forth that on January 4, 2001, Respondent uploaded a web site to the domain name www.backriver.com, which had been inaccessible and unused since December 1999. Complainant further states that Respondent's actions were in direct response to the filing of the underlying dispute herein.

Under the Uniform Dispute Resolution Policy, which is in force for all names in the .com top-level domain, an arbitrator has the authority to cancel or transfer a domain name registration if:

    the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the respondent has no rights or legitimate interests in the domain name, and the domain name was registered and is being used in bad faith.

Also, the domain name need not be identical to the trademark to receive a favorable result. In the case of EFG Bank European Financial Group SA v. Jacob Foundation, EFG Bank European Financial Group SA owned a European Community trademark for EFG. Although the trademark was only for EFG, the arbitration panel ruled in favor of the Complainant and ordered the transfer of the domains efg-private-bank.com, efgpb.com, efgprivate.com, and efgprivatebank.com.

Lead Panelist holds that Respondent failed to submit evidence of his legitimate interest or ownership right in the domain name after he was reimbursed for all costs associated with the creation and registration of the domain name after Complainant was incorporated. Even though, Complainant aggravated the situation by not having registered the domain name it wanted earlier and neglected to require the respondent to tender the registration to the company during respondent's tenure as president or at the time of Respondent's termination from the company, Complainant has taken substantial steps and actions, which has resulted in goodwill and a correlation between its business activities and its name. Respondent, on the other hand, is not closely related to or associated with the domain name.

Finally, both parties have failed to present or submit any evidence, which set forth the terms and conditions of respondent's termination from the company and any subsequent agreement relating to the ownership of the domain name. The continued inattention of the Complainant to the ownership issue of the domain name has greatly contributed to this dispute.

(III) BAD FAITH

Bad faith registration and use is established where any one of the four criteria listed in Paragraph 4(b) of the Uniform Domain Name Dispute Resolution Policy, which provides guidelines for demonstrating a registrants rights to and legitimate interests in the domain name. Specifically Paragraph 4(c) speaks to the registrant and provides the following three factors that can undermine a claim of bad faith:

    (i) before any notice of the dispute, the registrant has used, or can demonstrate preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

    (ii) the registrant has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or

    (iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Attention must be paid to section 4(c)(i) as it provides that "notice of the dispute" is the cut-off date for a registrant showing use or preparations to use the domain name for the purposes of showing good faith. In the present dispute Complainant states that on January 4, 2001, Respondent uploaded a web site to the domain name www.backriver.com, which had been inaccessible and unused since December 1999. Respondent remains silent as to this action, whereas Complainant alleges that Respondent's actions were in direct response to the filing of the underlying dispute herein. This action can be imputed as the Respondent desire to make a bad faith profit from the goodwill the Complainant has built up over the past few years as well as Complainant's investment of time, energy and money in the development of the domain name and web site.

These allegations coupled with Complainant's reimbursement to Respondent of all costs associated with the creation and registration of the domain name are enough to constitute an allegation of bad faith registration and use of the domain name.

In the present dispute, the Complainant satisfied and proved that Respondent had a bad faith intent to profit from the domain name. The Respondent does not appear to fit the "classic" cybersquatter profile, i.e., a person who registers multiple domain names and attempts to sell them for the highest price obtainable, however, Respondent was reimbursed for his costs as well as he became the president of the company in short order after the creation and registration of the domain name.

Additionally, the domain name is patently "identical" to the Complainant's business name and service mark www.backriver.net. The Complainant has presented evidence sufficient to meet burden of establishing bad faith on the part of the Respondent.

As the Lead Panelist stated in Consorzio Tutela del Formaggio Grana Padano v. Colombi, Case No. AF - 0252), the circumstance surrounding the manner in which the domain names were registered and have been used in bad faith inevitably implies that Respondent may not claim to have legitimate interest or right in the domain names according to paragraph 4(c)(i) or (iii) of the Policy since both these provisions require the good faith of registrant.

(IV) CYBERSQUATTING

The activity known as "cybersquatting" involves registering well-known marks and names of others as domain names for the sake of selling the domain name to the trademark holder or so-named person at a premium price.

Collectively, "cybersquatting," activities have raised the eyebrows of legislators and Internet regulators intent on preventing the infringement of trademark holders' rights. Congress has recently enacted the Anticybersquatting Consumer Protection Act ("A.C.P.A.") as a means for resolving disputes between domain name owners and trademark holders. Under the A.C.P.A., a domain name owner is liable for cybersquatting if he has a bad faith intent to profit from that trademark or service mark and registers, traffics in, or uses a domain name that is identical or confusingly similar to a distinctive trademark or service mark or is dilutive of a famous trademark or service mark.

To prove a claim under the ACPA, a plaintiff must demonstrate the following:

    - the plaintiff's mark is distinctive or famous;

    - the defendant's domain name is identical or confusingly similar;

    - and the defendant used, registered, or trafficked in the domain name with a bad faith intent to profit from the sale of the domain name; 15 U.S.C. 1125 (d)(1)(A)

A Web site operator does not violate the Anticybersquatting Consumer Protection Act, 15 U.S.C. 1125(d)(1)(A), when it lacks a bad faith intent to profit from the registration and use of the domain name. The factors set forth under the A.C.P.A. to determine a bad faith intent to profit, however, are rather general and have put domain name owners on the defensive. These factors include, but are not restricted to:

    1. The trademark or other intellectual property rights of the person, if any, in the domain name;

    2. The extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;

    3. The person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;

    4. The person's legitimate noncommercial or fair use of the mark in a site accessible under the domain name;

    5. The person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either from commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;

    6. The person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for substantial consideration without having used, or having intent to use, the domain name in the bona fide offering of any goods or services;

    7. The person's intentional provision of material and misleading false contact information when applying for the registration of the domain name; and

    8. The person's registration or acquisition of multiple domain names which are identical or confusingly similar to trademarks or service marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous trademarks or service marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of such persons.

Domain names using the names of businesses that are not trademarked are protected as long as efforts have been made to develop that business name, then the name of the business would be considered common law trademarks and are therefore protected under the A.C.P.A."

In the present dispute, the domain name utilizes the name of the Complainant's business as well as its service mark www.backriver.com, which was not trademarked, however, is protected since the Complainant has expounded great effort in developing its business, its name. In this regard, the name of Complainant would be considered common law trademarks and would therefore protected under the A.C.P.A.

6. Conclusions

For the above reasons, Lead Panelist holds that Complainant has established and proved all the elements requested by the Policy and consequently orders that the domain name backriver.com be transferred to the Complainant.

7. Signature

For the above reasons, Lead Panelist holds that Complainant has established and proved all the elements requested by the Policy and consequently orders that the domain name backriver.com be transferred to the Complainant.

(s) Michael P. Marsalese

Presiding Panelist