ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
1.1 See caption above.
2. Procedural History
2.1 The electronic version of the Complaint form was filed on-line through eResolution's Website on March 9, 2001. The hardcopy of the Complaint Form and annexes were received on March 14, 2001. Payment was received on March 14, 2001.
2.2 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.
2.3 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 Name resolves to an active Web page and the Complaint is administratively compliant.
2.4 An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on March 9, 2001. The requested information was received March 12, 2001.
2.5 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 March 15, 2001. This date is the official commencement date of the administrative proceeding. Only the emails to the email@example.com 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.
2.6 On April 10, 2001, the Respondent submitted after the deadline of April 4, 2001, via email, his response. On April 9, 2001, the Clerk's Office contacted Jean-François Buffoni, and requested that he acts as panelist in this case. On April 18, 2001, Jean-François Buffoni, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality. On April 19, 2001, the Clerk's Office forwarded a user name and a password to Jean-François Buffoni allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System. On April 19, 2001, the parties were notified that Jean-François Buffoni had been appointed and that a decision was to be, save exceptional circumstances, handed down on May 3, 2001.
3. Factual Background
3.1 The contested domain name was registered in February 2000.
3.2 The contested domain name is composed of the name of the complainant, Ms. Barbara Kingsolver, an author of a number of bestselling books of fiction and nonfiction, including The Bean Trees, Homeland and Other Stories, Animal Dreams, Pigs in Heaven, The Poisonwood Bible, and Prodigal Summer. In this and several other respects, the complainant's claim is the same as the claim sustained on January 8, 2000 against this same respondent, Old Barn Studios, Limited, in a proceeding brought by the The Authors Guild on behalf of nine authors, The Authors Guild, Inc. Paul Aiken, Ex. Dir. v. Old Barns Studios, Ltd., Case No. AF-0582 (a, b, c, d, e, f, g, h and i). That decision rendered by a three-member panel is hereafter referred to as "the Authors Guild Decision."
4. Parties' Contentions
4.1 The complainant contends that (i) she has common law trademark rights in her name by virtue of her international reputation and the contested domain name is virtually identical to such trademark, (ii) the respondent has no legitimate proprietary rights in her name and (iii) the respondent has registered and used the domain name in bad faith.
4.2 The respondent claims that the contested name is not a trademark.
5. Discussion and Findings
5.1 The panel will first address the procedural issue related to the fact that the respondent has defaulted to file its response in time and then analyse the evidence to determine whether the complainant has proven, in accordance with article 4(a) of the ICANN Policy:
i. that the contested domain name is identical or confusingly similar to a trademark in which the complainant has rights, and
ii. that the respondent has no rights or legitimate interests in the contested domain name, and
iii. that the domain name has been registered and is being used in bad faith.
The procedural issue related to the default of the respondent
5.2 As indicated above, the respondent has previously been involved with at least one other similar case, the one which resulted in the Authors Guild Decision and must therefore have been well aware of the deadline. Nevertheless, the respondent filed its response six days after the deadline without offering an excuse or an explanation and without even asking for an extension. That being said, this delay caused no harm to the complainant since the Clerk's Office was then in the process of appointing a panelist. In the present circumstances, this panel shall accept the response as if it had been filed in time.
Analysis of the evidence in this case
5.3 Similarity between the trademark and the domain name
5.3.1 The complainant has presented evidence that her name enjoys 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 (author Jeanette Winterson), Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (actress Julia Roberts), Cho Yong Pil v. ImageLand, Inc., WIPO case No. D2000-0229 (Korean pop music artist), Anne McLellan v. Smartcanuk.com, eResolution case No. AF-0303 (Minister of Justice and Attorney General of Canada Anne McLellan), and, obviosly, the Authors Guild Decision mentioned earlier.
5.3.2 The contested domain name clearly is at least confusingly similar to the name of the complainant (if not identical), since the only difference between the domain name and the name of the complainant is the addition of ".com" after the author's name.
5.4 Lack of rights or legitimate interests in the contested domain name
5.4.1 The complainant has presented evidence and argued convincingly that, given her reputation, and her works being widely sold in the USA and the UK, as was decided in the Authors Guild Decision, it is hard to understand in the instance how the respondent could have any rights or legitimate interests in the contested domain name.
5.5 Bad faith registration and use of the contested domain name
5.5.1 The respondent is not actually using the contested domain name to point to a web site. Thus the question arises whether mere registration of the domain name constitutes use. This question was addressed by the three-member panel in the Authors Guild Decision as follows:
"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."
5.5.2 The same reasoning applies particularly well to the instant case. Furthermore, the respondent has gone one step further. The complainant has filed evidence that the respondent had offered to sell the name to the complainant at increasing prices over the six-month period preceding the filing of the complaint and that it had attempted to sell this name at auction, along with more than one hundred other names of famous authors. These facts clearly establish bad faith under clauses 4(b)(i) and (ii) of the Policy.
6.1 This panel concludes that the claimant has proven that the contested domain name is confusingly similar to the trademark consisting of the complainant's name, that the respondent has no rights or legitimate interests in the contested domain name, and that the respondent has registered and used the contested domain name in bad faith.
6.2 Accordingly, pursuant to the ICANN Policy and Rules, the panel therefore orders that the registration for the domain name barbarakingsolver.com be transferred to the complainant.
Montreal, Canada, April 25, 2001
(s) Jean-François Buffoni