1. Parties and Contested Domain Name
The Complainant is Dark Winters having a postal address at Gruener Deich 165, Hamburg 20097, Germany.
The Respondents are Paula Sahraoui /Dark Pages Bookstore having a postal address at 309 Eckford St., Brooklyn, NY 11222, USA.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's www site on August 24, 2001. The hardcopy of the Complaint Form and annexes were received on September 12, 2001. Payment was received on September 17, 2001.
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.
These inquiries led the Clerk of eResolution to the following conclusions: the Registrar for <darkpages.com> is Network Solutions, Inc and for <darkpages.net> is Namesdirect.com, Inc. The Whois database contains all the required contact information, the contested domain names resolve to an active www page and the Complaint is administratively compliant.
An email was sent to the Registrars by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on August 23, 2001. The requested information was received on August 24, 2001 from Network Solutions and on August 28, 2001 from Namesdirect.com, Inc.
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 Policy"). The Clerk's Office fulfilled all its responsibilities under said Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on September 17, 2001. This date is the official commencement date of the administrative proceeding.
Only the emails to the email@example.com and firstname.lastname@example.org were returned 'undeliverable'. All the faxes were successful.
The Complaint, official notification and all the annexes were sent to the Respondent via registered mail with proof of service. According to the Canada Post tracking system, all were delivered.
On October 7, 2001, the Respondents submitted the Response via eResolution Internet site. The signed version of the Response was received on October 2, 2001.
On October 10, 2001, the Clerk's Office contacted James Jude Bridgeman, and requested that he acts as panelist in this case.
On October 11, 2001, James Jude Bridgeman accepted to act as Administrative Panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On October 12, 2001, the Clerk's Office forwarded a user name and a password to James Jude Bridgeman, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On October 12, 2001, the parties were notified that James Jude Bridgeman had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 26, 2001.
This Administrative Panel is satisfied that proper procedures were followed and this Administrative Panel was properly appointed.
3. Factual Background
The Complainant is the owner of USA registered trademark and service mark DARK PAGE Reg. No. 2,383,030, registered on September. 5, 2000 in classes 16 and 42 in respect of "general feature newsletters in class16" and "providing a web site on the global computer network featuring information about poetry, books, music, gossip and pornography, in class 42" respectively."
The Application for said registration was filed by the Complainant on August 16, 1999.
The Respondent is the owner of the two domain name registrations in issue viz. <darkpages.net> registered by the Repondent on May 5, 1999 and <darkpages.com> registered by the Respondent on January 11, 2000.
4. Parties' Contentions
The Complainant's Submissions
The Complainant submits that this Complaint is filed only to claim the rightful ownership of the <darkpages.com> and <darkpages.net> domain names and requests that the domain names in dispute should be transferred to the Complainant.
The Complainant states that there is no malicious intent in bringing this Complaint and submits that the Complaint is not geared to harm, harass or disrupt the Respondents, the bookstore or the Respondent's current presence on the world wide web in any way other than as described in the Complaint.
The Complainant submits that the domain names in issue are identical to the Complainants registered trademark and service mark DARK PAGE. The Complainant submits that said registered trademark and service mark is protected under the U.S. trademark law both in the singular and plural forms viz. DARK PAGE and DARK PAGES.
The Complainant submits that the Respondents have "a store front business, namely book store" and "interacts mainly with actual customers on a personal basis and only secondarily, if at all in virtual reality (the internet)".
The Complainant further submits that the goods and services described in international class 42 require that a domain name is per se necessary before provision of such services is even possible.
As to the question of bad faith, the Complainant submits that the Respondents have established an internet presence for commercial gain with their domain names creating a likelihood of confusion with the service mark DARK PAGE. The Complainant further submits that the Respondents have created an association of a product and service with the Respondents' www site under the disputed domains
The Complainant does not object to the presence of the Respondents on the world wide web per se but argues that the use by the Respondents of the domain names in issue is confusingly similar to the goods and services in the classes in which the said registered trademark and service mark has been registered. The Complainant submits that it follows that the Complainant's registered trademark and service mark is infringed by the mere use of the said domain names by the Respondents.
The Complainant submits that there is a definite risk of confusion because the gTLDs .com and .net do not deliver any clues to the content of a www site, other than that the gTLD .com is indicative of commercial, for profit organizations and whereas the gTLD .net is indicative of network infrastructure machines and organizations.
The Complainant submits that as an international company, it is essential that it should claim the two domain names in dispute because "a turning point has been reached" and "[i]t is vital to establish the possibilities of .com and .net advertising to prevent financial corruption."
The Respondent's Submissions
As to similarity between the Complainant's DARK PAGE registered trademark and service mark and the <darkpages.net> and <darkpages.com> domain names, the Respondents submit that although they are similar, the final "s" separates them and makes them distinct. A viewer with the correct URL will not confuse the two. Although when utilizing a search engine both www sites would undoubtedly show up, any viewer when expressly addressing the www sites, would not be confused between the two. The Respondents suggest that, since the possibility of confusion is the primary concern of the Complainant, as a courtesy each www site could have a prominently placed link pointing to the other Party's www site to help avoid confusion and help viewers find their intended and ultimate destination should any such confusion arise.
The Respondents further submits that although the Complainant has alleged similarity in the content of the Parties respective www sites, this is clearly not the case as the Complainant's www site deals with heavy metal music, band play dates, highlighted art, namely graffiti and contests, currently a beauty and beast party. The only printed matter sold on the Complainant's site is a newsletter titled "The Dark Page". The Respondents on the other hand offer used books in the horror and suspense genre, book reviews and recommended reading material in these genres.
As to whether the Respondents have rights or a legitimate interest in the domain names in issue, the second named Respondent is a home based bookshop dealing in the sale of used books and book reviews of genre fiction namely horror and suspense, hence the choice of the domain names <darkpages>. As co-owner, the first named Respondent is a book reviewer for "Horror World" a UK based site that hosts numerous author message boards by published and successful authors from around the world. Since May 1999, the Respondent have gained a reputation with over 14,000 hits on its www site and it is well recognized and regarded by authors and readers alike as representing the Respondent's Dark Pages Bookshop with the top level domains of <darkpages.net> and <darkpages.com>. Accordingly, the Respondents submit that the Respondents' provision of these services is legitimate, as is the Respondents' use of the said domains.
The Respondents further submit that the Complainant's mark has only been in effect since September 05, 2000 whereas the Respondents commenced use of the <darkpages.net> domain on May 5, 1999 and the Respondents' use of the <darkpages.com> domain commenced in January 2000. The Respondents submit that their use of said domain names pre-date the registration and use by the Complainant of the word mark on which the Complainant bases its case. The fact that the Complainant selected words already in active use by the Respondents makes it clear that it is the Complainant and not the Respondent that is guilty of malice.
Since the Respondents' use of the domain names precede the registration of the Complainant's service mark, and since common law rights arise from actual use of a mark, generally the first to use a mark commercially has the ultimate right to use and register a mark. The domain name <darkpages.net> was first used publicly and commercially by the Respondent in May of 1999 and the Respondents seek to exercise its right to fair use, and if not permitted to continue said use, the Respondents may have to challenge the legitimacy of use by the Complainant.
With regard to the allegation that the Respondents registered and are using said domain names in bad faith, the Respondents submit that this is not possible as the Respondents' registration and use of the said domain names predate the actual registration date of the Complainant's said DARK PAGE trademark and service mark on September 5, 2000. Upon the registration of a service mark, then and only then can a service mark be claimed as active.
The Respondents submit that the registration of the <darkpages.net> domain name predates even the date on which the Complainant filed the Application for registration of said trademark.
The Respondents assert that their use of said domain names has been a fair use and that the Respondents have not used said domain names in bad faith. The Respondents were first to use the words <dark pages> and the Respondents had no prior knowledge of the Complainant or his intended future use of the DARK PAGE trademark.
Furthermore, the Respondents argue that said domain names have resolved to an established www site owned by the Respondents that has been operating for nearly last three years and the Complainant had the opportunity to copy the name from the Respondents. Furthermore the Complainant should have conducted a full search before he attempted to use and register the DARK PAGE trademark. The Complainant's allegations are totally unsupportable and improper.
Although the Complainant should properly be prevented from use of said trademark, it is the Respondent's belief that both individual top level domains should be able to co-exist peacefully each with their respective www sites, each www site having a prominently placed link pointing to the other Party's www site.
The Respondents submit that they should be allowed to peacefully keep the ownership of said domain names without further
5. Discussion and Findings
In order to succeed in its application paragraph 4(a) of the Policy places on the Complainant the onus of proving in respect of each of the domain names in dispute that:-
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the said domain name; and
(iii) the said domain name has been registered and is being used in bad faith.
This Administrative Panel accepts that the domain names in issue are clearly similar to and almost identical to the trademark and service mark DARK PAGE in which the Complainant has rights. The similarity is so close namely the addition of the letter "s" to produce the plural of the word PAGE, that this Administrative Panel has no difficulty in agreeing with the Complainant that the domain names are confusingly similar to the Complainant's registered trademark and service mark.
While the Respondents argue to the contrary, the reality is accepted by the Respondents' in their statement "when utilizing a search engine both sites would undoubtedly show up", although the Respondents go on the argue that " any viewer when expressly addressing the sites, would not be be (sic) confused between the two."
In putting this argument the Respondents are referring to the content of the Parties' respective www sites as distinct from the domain names themselves.
As the Respondents have identified, in their submissions, the Complainant's case is based essentially on the Complainant's ownership of the DARK PAGE registered trademark and service mark in classes 16 and 42 of the Register and his allegation that the use by the Respondents of confusingly similar domain names is likely to cause confusion among users of the Internet and so damage the Complainant's goodwill.
This Administrative Panel accepts that there is a likelihood of confusion as alleged by the Complainant. This is not however sufficient for the Complainant to satisfy the three element test set out in paragraph 4 (a) of the Policy in order to succeed in its application in these Administrative Proceedings.
The Complainant has not established that the Respondent has no rights or legitimate interest in the domain names.
Paragraph 4 (c) of Policy provides that any of the following circumstances, in particular but without limitation, if found by an administrative panel to be proved, based on its evaluation of all evidence presented, shall demonstrate a respondent's rights or legitimate interests to a domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to the respondent of the dispute, the respondent's 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
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent 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.
The Respondent registered the darkpages.net domain name on May 5, 1999 and the darkpages.com domain name was registered by the Respondent on January 11, 2000
The Respondent claims that the Complainant's rights commenced on the date of registration of the DARK PAGE trademark and service mark viz. September 5, 2000. This is not correct as the registration details provided by the Complainant state that when filing the application for registration of the trademark and service mark, the Complainant claimed a first use in commerce in respect of goods and services in classes 16 and 42 since January 2, 1996 and November 13, 1998 respectively. Furthermore the application for registration was filed on November 16, 1999.
The Complainant has not furnished any evidence of any such use prior to the date of Application for registration of said trademark viz. November 16, 1999 and by that date the Respondents had already registered the <darkpages.net> domain name.
It would appear that the Respondent's bookshop was using the name DARK PAGES, being a name corresponding to the domain names in connection with a bona fide offering of goods or services from at least May 5, 1999, and possibly, although it is not clear from the submissions, from an even earlier date. It would therefore seem to follow, that before any notice to the Respondents of the present dispute, the Respondents had made active use of the domain names in issue on their www site and bookshop.
Furthermore it would seem from the submissions that the second named Respondent (as an individual, business, or other organization) has been commonly known by the domain name DARK PAGES. Since there is a registered trademark owned by the Complainant it is beyond the jurisdiction of this Administrative Panel to determine whether the Respondent has acquired trademark or service mark rights as a result of such use.
The Respondents have therefore made out a prima facie case that they have rights and a legitimate interest in the said domain names.
The Complainant has not furnished any evidence whatsoever that the Respondents have registered and are using the said domain names in bad faith.
It follows that the Complainant has not satisfied the burden of proof imposed by paragraph 4(a) of the Policy and the application must be refused.
The Claimant has failed to establish that the Respondents had no rights or legitimate interest in said domain names <darkpages.com> and <darkpages.net> or that the Respondents registered and are using said domain names in bad faith as required by paragraph 4(a) of the Policy and the Complainant's application must therefore be refused.
(s) James Jude Bridgeman
October 26, 2001