ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Complainant: Elecplay.com Productions Limited of 603-21 Vancouver, British Columbia, V6B 1A1
Respondent: Netvision of 228 Hillandale, Bloomingdale, Illinois 60108, USA
Contested Domain Names: electricplayground.net/electricplayground.org
Registrar: Network Solutions Inc
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on January 23, 2001. The hardcopy of the Complaint Form and annexes were received on January 26, 2001. 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 Network Solutions Inc., the Whois database contains all the required contact information, the contested Domain Names resolved to active 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 January 23, 2001. The requested information was received January 31, 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 31, 2001. This date is the official commencement date of the administrative proceeding.
Only the emails to the firstname.lastname@example.org and email@example.com, were returned 'undeliverable'.
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 February 22, 2001, the Clerk's Office contacted Ms. Dawn Osborne, and requested that she acts as panelist in this case.
On February 23, 2001, Ms. Dawn Osborne, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On February 23, 2001, the Clerk's Office forwarded a user name and a password to Ms. Dawn Osborne, allowing her to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On February 23, 2001, the parties were notified that Ms. Dawn Osborne had been appointed and that a decision was to be, save exceptional circumstances, handed down on March 8, 2001.
3. Factual Background
The Complainant is a company incorporated under the laws of the Yukon Territories, Canada and is in the process of obtaining trade mark registration for the mark Electric Playground in the USA and Canada. The Complainant relies on its common law rights in the Electric Playground mark. The mark is used in connection with a television program and Internet web site which, inter alia, provides reviews of videogames and information on the videogame industry.
The Complainant's web site was launched in May 1995. The web site receives approximately 250,000 visitors each month. The primary user base is in Canada and the United States, but there is also traffic to the site from Europe, Asia and South America.
The television program which is a weekly interview and review show about the interactive entertainment industry began to air in September 1997 (although promotion of the television program began in early 1995). Sixty five episodes of the program have been produced, aired and rebroadcast continuously since September 1997 on various stations in Canada and in various cities in the US. The program currently has over 200,000 viewers each week in Canada. In addition in the spring of 2001 the program will be delivered to the Discovery Channel's Science Network and also throughout Europe in several languages through a distribution deal with Gameplay LLC. The Complainant also has plans to extend broadcasting of the program to Asia and Australia.
The Respondent has not responded and is in default. The Domain Names point to holding pages bearing the legend "Under Construction". The Respondent did not respond to letters before action from the Complainant. There has been no offer to sell to the Complainant. The Respondent does not appear to have registered any other domain names containing trade marks belonging to third parties.
4. Parties' Contentions
A The Complainant contends:
a. that under the mark Electric Playground it has achieved international recognition for entertainment services, namely production of television, video, audio and web site content concerning videogames and on line services, including maintaining a website concerning videograms.
b. that use of the name has come to be recognized by the general public and within the interactive entertainment industry as indicating an association with the Complainant's television program and Internet website and that the Complainant has common law trade mark rights in the mark which are sufficient for the purposes of this Complaint.
c. that the Domain Names are identical in all material respects to its mark;
d. that the Domain Names which were registered on September 11, 2000 have never been put to use by the Respondent, that there is no evidence that the Respondent has been commonly known by this name or has a non commercial or fair use purpose for the Domain Names and, therefore, the Respondent has no rights or legitimate interest in respect of the Domain Names;
e. That passive holding of a domain name can constitute use in bad faith in certain circumstances. The Complainant suspects that the Domain Names were registered to be sold to the Complainant, that registration of the Domain Names followed the writing of a letter before action to the registrant of electricplayground.com and that the Registrant of the Domain Names is somehow associated with the registrant of that name because they are from the same geographical area. The Respondent did not reply to the letter before action sent to it by the Complainant.
B The Respondent
The Respondent did not submit a Response and is in default.
5. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A Identical or confusing similarity
It is prima facie obvious that the Domain Names are identical to the Complainant's Electric Playground mark in which it has common law rights and therefore that they are confusingly similar.
B Rights or legitimate interest of the Respondent
The Respondent has defaulted and therefore there is no evidence that it has used the Domain Names or the Electric Playground name or that it has any registered trademarks including this name. Accordingly, there is no evidence submitted to the panel proving that the Respondent has rights or a legitimate interest in the Domain Names. The panelist therefore concludes that the Respondent has no rights or legitimate interests in respect of the Domain Names. Mere registration alone cannot constitute such rights or this limb of the test would always be satisfied by Respondents.
C Bad Faith
Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith as follows:
(i) the Respondent has registered or has 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 trade mark 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) the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct: or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the 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 its web site or location or of a product or service on its web site or location.
The Complainant's assertions of bad faith revolve around assertions that the Respondent registered the name with the primary aim of selling the name to the Complainant or a third party, but there is no actual proof of this. If there were a genuine effort to sell I would have expected the Complainant to have submitted some proof of the same. Accordingly, I cannot find bad faith in accordance with section 4 (b) (i) of the Rules.
Further, there is no evidence that the Respondent has engaged in a pattern of cybersquatting conduct or, put another way, has registered a series of domain names containing third party trade marks for gain. The Complainant has failed to prove any connection between the registrant of electricplayground.com and the Respondent the registrant of the Domain Names. Even if there were a connection, the Complainants have not provided any evidence that the registrants of these names are cybersquatters and are in the habit of registering and warehousing domain names containing the trade marks of others. Granted the Respondent has not answered letters before action or this Complaint, but this may have been on grounds of cost. Accordingly, I cannot find bad faith under section 4 (b) (ii) of the rules.
Whilst it is no doubt inconvenient for the Respondent that the Domain Names do not point to its site, there is no evidence that the Respondent registered the Domain Names to disrupt the Complainant's business or intended to create a likelihood of confusion. I cannot, therefore find bad faith under section 4 (b) (iii) and (iv) of the Rules.
The four criteria in section 4 (b) of the Rules are not an exhaustive list of what can constitute bad faith, but no other grounds have been alleged (such as an attempt to provide false contact details by the Respondent). If the Complainant were to subsequently find proof of registration and use in bad faith of the Domain Names by the Respondent it could attempt a further Complaint using the Policy. Quite simply the Complaint does not contain enough evidence to substantiate the claim that the Domain Names were registered and used in bad faith.
In light of the foregoing the panelist decides that, although the Domain Names are virtually identical to the Complainant's trade mark Electric Playground and the Respondent has no rights or legitimate interest in respect of the Domain Names, there is no proof that the Domain Names were registered or used in bad faith.
The Complainant having failed to provide the evidence necessary to satisfy all three limbs of section 4 (a) of the Policy, the Complaint is hereby dismissed.
London, March 6 2001
(s) Dawn Osborne