ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Elecplay.com Productions Inc., a Canadian corporation located in Vancouver, British Colombia, Canada. The Respondent is Arian Lowe & Travis, an American corporation located in Chicago, Illinois, United States of America.
The domain name at issue is "electricplayground.com", registered with 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 receives 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 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 January 23, 2001. The requested information was received on January 25, 2001.
The clerk then proceeded to send the 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 26, 2001. This date is the official commencement date of the administrative proceeding.
The emails to the email@example.com and to the administrative contact were not returned. 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 February 19, 2001, the Clerk's Office contacted Ms. Christiane Feral-Schuhl and requested that she acts as panelist in this case.
On February 21, 2001, Ms. Christiane Feral-Schuhl, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On February 21, 2001, the Clerk's Office forwarded a user name and a password to Ms. Christiane Feral-Schuhl, allowing her to access the Complaint Form, the Response Form, and the evidence through e-Resolution's Automated Docket Management System.
On February 21, 2001, the parties were notified that MS Christiane Feral-Schuhl had been appointed and that a decision was to be, save exceptional circumstances, handed down on March 7, 2001.
3. Factual Background
The Respondent, Arian Lowe & Travis, registered the Domain Name "electricplayground.com" on February 15, 1996.
The Complainant, Elecplay.com Productions Inc., claims that its has rights in the name "Electric Playground" and seeks the transfer of the Domain Name at issue.
In 2000, the Complainant has applied for Canadian and U.S. trademark status for the mark "Electric Playground" but none of the Offices has rendered any final decision as to the registrability of this mark yet.
Therefore, the Complainant does not rely upon any registered trade marks or service marks but upon its alleged common law rights in the mark "Electric Playground".
4. Parties' Contentions
The Complainant indicates that the Policy does not require that the Complainant have rights in a registered trademark or service mark, if the latter may satisfy the Administrative Panel that it has rights in common law trademark.
The Complainant states that it uses the mark "Electric Playground" in connection with a popular television program and Internet website which, inter alia, provides reviews of videogames and information on the videogame industry. The Complainant states that the website was launched in May 1995, and the television program "Electric Playground" began to air in September 1997. According to the Complainant, this television program is currently aired on many stations in Canada and the United States and will be airing on the Discovery Channels Science Network in the spring of 2001.
Thus, the Complainant pretends that, under the mark "Electric Playground", it has achieved international recognition for entertainment services, namely production of television, video, audio and website content concerning videogames and online services, including maintaining a website concerning videogames, and that the use of the mark has come to be recognized by the general public and within the interactive entertainment industry as indicating an association with the television program and Internet website "Electric Playground".
As a result, the Complainant asserts that it has common law rights in the mark "Electric Playground" which are sufficient for the purposes of this Complaint.
With regards to the registration of the contested Domain Name by the Respondent, the Complainant alleges that this Domain Name is identical in all material respects to the name of the Complainant's television production and Internet website, name in which the Complainant claims it has common law rights.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect of this Domain Name. The Complainant alleges that, since February 15, 1996 (date of registration of the Domain Name), the Domain Name has never been put to use by the Respondent and it was not until after the Respondent received an Offer to Purchase Letter and a Second Transfer Request from the Complainant that the Respondent constructed a website with a home page and two links, without any content. The Complainant further submits that before the Complainant notified the Respondent of the disputed Domain Name, it was not using the Domain Name and was not intending to use it either, and that the website that has been currently activated by the Respondent is not used in connection with the offering of goods or services
In addition, the Complainant submits that there is no evidence indicating that the Respondent has been commonly known by the name "Electric Playground" or has a legitimate non-commercial or fair use of the name.
Finally, the Complainant contends that the Respondent registered the Domain Name and has been using it in bad faith. The Complainant submits that the Domain Name has not been used in commerce on an active website by the Respondent. The complainant further alleges that the Respondent, contrary to the Policy, has offered to sell the Domain Name and that the Domain Name was registered for the purposes of either selling or otherwise transferring it to the Complainant, or a competitor, for valuable consideration in excess of the out of pocket costs directly related to the Domain Name. In the alternative, if the Panel should find that there was not an offer to sell the Domain Name, the Complainant relies on the WIPO decision in Mondich v. Brown (Case D00-0004), that, according to the Complainant, noted that an express offer to sell was not required and that failure to make good faith of the domain name supports the inference that the respondent's primary intent in registering the domain name was to offer it to sell.
The Respondent has failed provide any response or evidence to rebut the Complainant's contentions. Pursuant to paragraphs 5(a) and 14 of the ICANN Rules, the Panel will proceed to a decision on the Complaint.
5. Discussion and Findings
In order to determine whether the Domain Name at issue shall be transferred under the ICANN Policy, paragraph 4a of the Policy provides that the Complainant must prove each of the following:
- that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
a. Identity or Confusing Similarity between the Domain Name and the Trademark
In the case at hand, the first issue that shall be determined is whether the Complainant has rights in the mark, that is, whether "Electric Playground" may qualify as a trademark for the purposes of paragraph 4a(i) of the Policy.
As stated by the Complainant, the Policy also protects unregistered marks. Therefore, the mere fact that "Electric Playground" has not been registered yet does not preclude the Complainant from seeking remedies under the ICANN Policy.
However, such protection will not be granted if the mark in issue is generic, or descriptive.
In "Guideauto.com" (Case AF-0568), the Panel held that " the registration of a common name or a combination of common names, especially without trademark status, cannot qualify as a trademark or a service mark for the purpose of article 4a(i) of the Policy. (…) In the case at hand, it appears that the words "guide auto", together or alone, are generic and purely descriptive".
While the name in issue "Electric Playground" is, like "Guide Auto", made of common words, the combination of these common words, in regard to the goods and services provided by the Complainant under that name, is not purely descriptive or generic, but results in a distinctive mark, entitled as such to protection.
The Panel is therefore satisfied that the Complainant has, for the purpose of paragraph 4a(i) of the Policy, established trademark rights in the mark "Electric Playground" and that the Domain Name at issue is identical to that mark. The Complainant therefore meets the requirements of paragraph 4a(i) of the Policy.
b. Rights or legitimate interests
The Complainant asserts inter alia that, before the notice to the Respondent of the dispute, the Respondent has never used nor intended to use the Domain Name, in connection with a bona fide offering of goods or services.
However, the evidence shown by the Complainant relates to the period between January 2000 and December 2000. Moreover, contrary to the contentions of the Complainant, the Respondent did not admit in its email on January 6, 2000, that "the website is not being used" but that the Respondent did "not use it anymore".
Nevertheless, the Respondent has submitted no evidence of any use or demonstrable plan to use the Domain Name in connection with a bona fide offering of goods or services, nor has it submitted any evidence that it has ever been known commonly by the Domain Name or that it has made a legitimate non-commercial or fair use of the Domain Name.
As a result, and due to the dominance of the Complainant's evidence, the Administrative Panel therefore finds that the Respondent does not seem to have any rights or legitimate interests in the Domain Name.
c. Registration and Use in Bad Faith
Under paragraph 4b(i), evidence of registration and use in bad faith includes circumstances indicating that the Domain Name was registered 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 documented out-of-pocket costs directly related to the Domain Name.
Here, the evidence supporting the Complainant's claim of bad faith includes the Respondent's offer to sell the Domain Name to the Complainant and the failure to make good faith use of the Domain Name by not activating any website under that Domain Name.
Regarding the Respondent's offer to sell, in view of the Complainant's evidence, there is no certainty that the Domain Name was registered "primarily for the purpose of selling" the domain name for "valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Name".
In "americanvintage.com" case (Case D00-0004), the Administrative Panel nevertheless inferred, in a similar situation, that the domain name was registered and used for that purpose: "That inference is supported by the respondent's failure for a substantial period of time [two years] to make good faith use of the domain name for its business. […]. While inclusive, it is possible to infer from this failure of use that the domain name was registered without a bona fide intent to make good faith use".
Here, it appears, without contrary evidence submitted by the Respondent, that the latter has done nothing with the Domain Name for over four years. The Administrative Panel is therefore also entitled, in the case at hand, to infer from the Respondent's failure to make good faith use of the Domain Name, that the Domain Name was registered and used in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name "electricplayground.com" registered by the Respondent, is identical to the Complainant's mark "Electric Playground", that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and used the Domain Name in bad faith.
Accordingly, the Administrative Panel requires that the registration of the Domain Name "electricplayground.com" be transferred to the Complainant.
(s) Christiane Feral-Schuhl