ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution Policy
1. Parties and Contested Domain Name
Complainant is Jazid, Inc./Michelle McKinnon (hereinafter referred to as the
“Complainant”), with an address at 1342 Washington Avenue, Miami Beach,
Florida, 33139 USA. The Complainant’s Prime Contact or Representative is
Gabriel Santiago, 323 Elm Street, Hollywood, Florida, 33019, U.S.A. Telephone :
(954)-927-0051; e-mail :
respondent is Rennemo Steinar (hereinafter referred to as the “Respondent”),
with an address at Waldemar Tranesgt. 17, Oslo, 0171
Norway. Respondent has no Prime Contact or Representative; Telephone 47
23 19 85 19; e-mail : email@example.com
dispute concerns the domain name “jazid.com” (hereinafter referred to as the
Domain Name). The Registrar with whom the Domain Name is registered is Network
Solutions Inc. (hereinafter the Registrar).
2. Procedural history
Complaint submitted by the Complainant was filed on-line through eResolution’s
website on April 18, 2001. The hardcopy of the Complaint form and annexes were
received on April 19, 2001 by the eResolution Centre (hereinafter the Centre).
Payment was received on April 19, 2001.
Upon receiving all the required information, the Centre then 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 the
Verify whether the contested Domain
Name related to an active Web page;
Verify whether the Complaint was administratively compliant.
Registrar is Network Solutions, inc.;
the required contact information for the Respondent was found in the Whois
The contested Domain Name resolved to an inactive Website;
The Complaint is administratively compliant.
email dated April 19, 2001 the Centre wrote to the Registrar to obtain
confirmation and a copy of the Registration Agreement; the requested information
was received on April 23, 2001.
Centre then proceeded to send a copy of the Complaint Form and the required
Cover Sheet to the Respondent, in accordance with paragraph 2 (a) of the
ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter
referred to as the”Rules”). The Centre fulfilled all of its
responsibilities under paragraph 2 (a) by forwarding the Complaint to the
Respondent, notifying the Complainant, the concerned Registrar and ICANN on
April 19, 2001, this date being the official commencement date of the
Respondent did not submit a response neither via eResolution’s website nor a
Centre then contacted Me Hugues G. Richard on May 16, 2001 and invited him to
act as Panelist in this case.
May 17, 2001, Me. Hugues G. Richard accepted to act as Panelist in this case and
on the same day filed the necessary Declaration of Independence and
Impartiality. The Panel believes it was duly constituted in compliance with the Rules.
May 17, 2001, a user name and a password was forwarded by the Clerk’s Office
to Me Hugues G. Richard, allowing him to access the Complaint Form, the Response
Form, and the evidence through the Centre’s Automated Docket Management
May 17, 2001, a notification was sent to the parties that Me Hugues G. Richard
had been appointed and that a decision was to be, save exceptional
circumstances, handed down on May 31st, 2001.
the language of the Domain Name Registration is the English language and as the
Complainant has filed his complaint in English, the proceeding will be led in
English, according to paragraph 11 (a) of the Rules.
3. Factual Backgrounds
Complainant has indicated that it has been operating a jazz club in Miami Beach,
Florida (USA) under the name "JAZID" for over five years.
to the research conducted in the WHOIS database proprio motu by the
Panel, it appears that the Respondent registered the Domain Name, jazid.com on
April 19, 1999 with the Registrar.
April 14, a third party (Jazid Club and Records, in Norway) to these
proceedings, received an e-mail (annex F) from the Complainant’s
representative which basically related the message that arbitration proceedings
regarding the Domain Name were being arranged and to not accept transfer of the
Domain Name until the proceedings were resolved.
April 15, 2001 the aforementioned third party responded to the Complainant’s
representative in an email (annex G-1) which stated that Jazid Club and Records
own a registered trademark since 1995, and that the domain name, jazid.com was
On April 18, 2001 the Complainant’s representative received an e-mail (annex E-1) from the Trademark Electronic Application System (TEAS) Service, confirming that it had received the Complainant’s trademark application for the mark, JAZID, and that it had assigned serial number ‘78/058922’ to that application. This e-mail further stated that the Complainant would here from the assigned examining attorney in 4 to 5 months.
4. Parties' Contentions
respect to the similarity of the Domain Name, the Complainant alleges that:
domain name at issue is patently, substantially identical and confusingly
similar to that of the
corresponding mark of the Complainant's business. The domain name at issue is
www.jazid.com. The Complainant's trademark/service mark is "JAZID".
Respondent purchased the domain name on April 19, 1999. At no time since then, has he either possessed a trademark/service mark or a valid interest in the name "JAZID". The Respondent is not commonly known, and never has been identified with the name "JAZID".
Respondent processed an information update to the domain registration record on June 14, 2000. At that time, the domain remained unused and he remained as sole registrant of the domain.
Respondent has possessed the domain name for a period of two years and has not used the domain name in connection with a bona fide offering of goods or services.
The domain name has not, and is not, being used as an active address.
Respondent is not making a legitimate non-commercial or fair use of the domain name.
Respondent's sole purpose for registering the domain name was to profit from its sale or transfer to a third party.
Respondent registered the domain
name in order to prevent a trademark/service mark from being used in a
corresponding domain name.
Respondent admitted to purchasing the domain name "for fun", yet went on to elaborate that he had intended to gain some form of consideration in return for transfer of the domain name.
Respondent confirmed that he had attempted
to transfer the name in exchange for consideration from the Norwegian club, but
that he had not been successful.
also acknowledged Complainant having inquired about obtaining the domain name
from him in early February of 2000. Respondent admitted replying to Complainant
at that time that he was in the process of selling the Domain Name to the
Complainant requests an order for the transfer of the Domain Name
The Respondent failed to file a timely Response with the Centre (neither electronically or by remittance of a hard copy).
5.1 Discussions and Findings
Pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter the ICANN Policy) the Complainant must convince the panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
That the Domain Name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
That the Respondent has no rights or legitimate interests in respect of
the domain name; and
(iii) That the domain name has been registered and is being used by the Respondent in bad faith.
having reviewed the Complainant's allegations as well as all the evidence
provided therewith, the Panel hereinafter considers each of these three elements
to analysing each of these three elements, the Panel deems it appropriate to
make some preliminary comments.
5.2 General Considerations
15 (a) of the Rules instructs the Panel as to the principles the Panel is
to use in determining the dispute: "A Panel shall decide a Complaint on the
basis of the statements and documents submitted and in accordance with the
Policy, these Rules and any rules and principles of law that it deems
The word "and" is a conjunction. Consequently, the Panel shall not decide on a Complaint solely on the basis of the allegations submitted by the parties; nor is it the burden of the Panel to seek further evidence (other than judicial knowledge) to sustain the parties’ allegations, as this may be disruptive of the arbitration process. Therefore, the burden rests on the parties to either support or sustain their allegations with the appropriate documentation whenever possible.
might be worth mentioning that while the Policy and Rules clearly impose a
burden of proof upon the Complainant, in the present matter, the Complainant did
not provide any evidence supporting its statements except for e-mail
correspondences between the Complainant, the Respondent and a third party (Jazid
Club and Records) as well as a confirmation notice (e-mail) from the TEAS. The
Panel is of the view that these documents are in themselves not sufficient to
sustain any allegation, at least as it relates to rights in a trademark or
most if not all of the statements made by the Complainant appear on their face
to be incomplete and certainly not corroborated by any documentary evidence.
Therefore, the Panel has based its decision on the grounds of the supported
statements and documents submitted.
Identity or Confusing Similarity
to paragraph 4 (a) (i) of the ICANN Policy, the Complainant must prove that the Domain
Name is identical or confusingly similar to its trademark, and prove
that it has rights in said trademark. From the statements and evidence
presented, the Panel finds that the Domain Name jazid.com is identical or
confusingly similar to the Complainant’s alleged mark. However, the
Complainant has failed to show that it has rights, whether registered or not, in
the trademark JAZID.
Complainant has implied that it is the owner of the trademark/service mark JAZID,
but it did not provide the Panel with any kind of evidence whatsoever to sustain
that allegation. In fact, the only evidence presented to support the said
allegation is a copy of an e-mail sent to the Complainant by TEAS confirming
that the administrative procedures concerning the Complainant’s application
for the registration of the mark JAZID was underway. This is a self serving
document, dated April 18, 2001 which also happens to be the date that the Centre
first received the Complaint (via email). The Panel cannot and does not
regard this document as satisfactory evidence supporting the allegation that the
Complainant has rights in the trademark or service mark JAZID.
that point, the Complainant does not need to prove rights in a registered
trademark, as the Policy does not require that the Complainant must have rights
to a "registered" trademark. However, in the absence of a
registration, the Complainant has to be able to satisfy the Panel that it has
sufficient rights, which would give rise to an action for passing off. See Jeanette
Winterson v. Mark Hogarth, WIPO Case No. D2000-0235. In that matter, as in
the one presently before the Panel, the complainant did not provide any evidence
of use of the trademarks nor evidence showing substantial
goodwill and reputation as well as secondary association of the trademarks with
the complainant. Simply alleging that it operates a jazz club in Miami Beach
under the name JAZID is not enough.
to the above mentioned reasons, it is the Panel's view that the Complainant did
not satisfy the burden imposed upon it to prove that the Domain Name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights.
to the Rules, which specify that a complainant must cumulatively establish all
three elements (rights, illegitimate use, bad faith) to be successful in its
complaint. The finding that the Complainant has failed to demonstrate rights in
the mark JAZID, alone, is fatal to the Complainant’s case. Consequently, the
Panel is not obligated to address the issues of legitimate use and bad faith.
Nevertheless, the Panel has decided to address these issues.
Rights or Legitimate Interests
Paragraph 4 (a) (ii) of the ICANN Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4 (c) of the Policy illustrates how a Respondent can demonstrate rights or interest in the Domain Name at issue. This paragraph sets out three non-exhaustive examples, such as:
before any notice to you of the dispute, your use of, or demonstrable
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
you (as an individual, business or other organisation) have been commonly
known by the domain name, even if you have acquired no trademark or service mark
you are making a legitimate non-commercial or fair use of the domain
name, without intent for commercial gain to misleading divert consumers or to
tarnish the trademark or service mark at issue.
In the case at hand, Complainant alleged that the Respondent was not making legitimate use of the Domain Name. The Complainant did not produce any evidence in support of its claim that the Respondent did not use the Domain Name in connection with a bona fide offering of goods and services. However, as previously indicated in the section entitled “Procedural History”, the Centre did conclude that the contested Domain Name resolved to an inactive website.
Although the Panel is not required to investigate and/or research on its own initiative, it proceeded to verify the Whois database for the relevant information concerning the Domain Name, as well as verify if the Domain Name lead to an active website. The results of this research corroborate the Complainant’s allegations that the Domain Name is not being used in a legitimate manner. In fact, the Respondent has held the Domain Name for more than two (2) years and does not seem to have used it at all.
in this case, as was the case in LLS International vs. MarkFreeman,
Wipo Case No.D2000-1080 and Altavista Company v. Grandtotal Finances
Ltd., Wipo Case No. D2000-0848, the Panel finds it appropriate in this
the Panel is of the view that the Complainant has satisfied its
burden of showing that Respondent did not have any rights or legitimate
to paragraph 4 (a) (iii) of the ICANN Policy it is incumbent upon the
Complainant to prove that the Respondent has registered and is using the Domain
Name in bad faith.
4 (b) of the ICANN Policy states:
“For the purposes of Paragraph 4 (a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain in bad faith:
circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for
valuable consideration in excess of your documented out-of-pocket costs directly
related to the domain name; or
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; or
you have registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your web site or other on-line location,
(v) by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
There has been absolutely no evidence presented by Complainant before the Panel to show that the Respondent acquired the Domain Name to either sell it or otherwise transfer the registration to the Complainant for a valuable consideration; not only did the Respondent not initiate contact with the Complainant, but more importantly, when contacted by Complainant who wished to obtain the Domain Name from him (February 2000), the Respondent did not attempt to transfer said Domain Name (Complainant’s own admission).
While the Complainant has expressed the view that the Respondent has either tried to prevent the Complainant from reflecting the mark in a corresponding Domain Name, or attempted to disrupt the business of the Complainant, there has been no evidence showing or corroborating these allegations.
As the circumstances referred to above are not exhaustive, and absent evidence of any of the said circumstances, it was still open to the Complainant to show evidence that the Respondent acted in bad faith, due to other circumstances. However, Complainant chose not to do so. It is trite law that bad faith cannot be presumed in the absence of any proof to the contrary. Here again the Complainant has failed.
light of the foregoing, the Administrative Panel therefore concludes that the
Complainant has failed to meet its burden as required by all of the three
elements, cumulatively, under paragraph 4 (a) of the ICANN Policy.
the remedy sought in the Complaint is denied.