ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
Under the ICANN Uniform Domain Name Dispute Resolution Policy
1. Parties and Contested Domain Name
The Complainant in this proceeding is Worldblackbelt, Inc., a company engaged in the promotion of martial arts. The Respondent is Nationwide Communications, with its postal address listed as 432 Broadway, #212, San Diego, CA 92111. The contested domain name is worldblackbelt.tv. The Complainant requests that a transfer of the domain name take place.
2. Procedural history
The electronic version of the Complaint and annexed documents were filed on line through eResolution’s website on June 11, 2001. The hardcopy of the Complaint and annexes were received on June 13, 2001. Payment was received on June 22, 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; and
- verify if the Complainant was administratively compliant.
This inquiry led the Clerk of eResolution to the following conclusions: the Registrar is the .tv corporation, the Whois database contains all the required contact information, the contested domain name resolves to an inactive 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 June 11, 2001. The requested information was received on June 11, 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 June 28. This date was the official commencement date of the administrative proceeding.
The emails to the email@example.com and to firstname.lastname@example.org 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, but the mail was not delivered.
No response in any form was submitted by the Respondent.
On July 19, 2001 the Clerk’s Office contacted me and requested that I act as panelist in this case.
On July 20, 2001, I accepted the position of panelist in this case and filed the necessary Declaration of Independence and Impartiality.On July 20, 2001, the parties were notified that I had been appointed and that a decision was to be, save exceptional circumstances, handed down on August 3, 2001.
3. Factual Backgrounds
The Respondent, Nationwide Communications, has failed to respond to the Complaint; therefore, the evidence submitted and facts alleged by the Complainant, World Blackbelt, Inc., are accepted for purposes of the decision in this proceeding. The facts, briefly, are as follows:
The Complaint is based upon Complainant’s WORLD BLACK BELT trademark for which it applied, but did not yet receive a U. S. federal registration, in International Class 005 for nutritional and dietary supplements. Complainant also has trademark registrations or pending trademark applications in several countries for the BLACK BELT trademark in International Class 005 for nutritional and dietary supplements, and International Class 036 for the provision of credit card services.
Complainant has registered the following domain names: worldblackbelt.com, worldblackbelt.org and worldblackbelt.net. Complainant is extensively engaged in the provision of martial arts and has sponsored, and continues to sponsor, martial arts events. Complainant has expended over $500,000 in the development of its worldblackbelt.com website, which includes substantial information and links related to martial arts. In addition, Complainant has spent, and continues to spend, approximately $10,000 per month for website server and maintenance fees. Further, Complainant has expended over $60,000 in developing a directory of martial arts schools throughout the world, accessible only through its website.
Complainant received an email message from Respondent, dated May 8, 2001, stating, inter alia, that it is “currently in the process of building a website … which will focus on live martial arts tournaments, shows and more via the Internet.” In that email, Respondent additionally informed Complainant that it was “open to receiving an offer” for worldblackbelt.tv from Complainant (emphasis added).
The email further stated:
We believe that the .tv domain names will be the biggest attraction in the nearest future and thus laid our main focus on reserving domain names which are related to martial arts with tv to serve as redirections to our site (emphasis added).
Although Complainant’s counsel apparently responded to Respondent’s May 8, 2001 email, that email was not submitted with its Complaint. Respondent’s two subsequent emails, however, were submitted.
In a June 11, 2001 email from Respondent to Complainant’s counsel, after receiving a copy of the Complaint about to be sent to eResolution.com, Respondent stated in pertinent part:
We write this email with hopes of settling this so that no one comes out a loser in this situation….We feel that $2,500 is reasonable and we can produce receipt for you per request that the expences (sic) of building this website exceeded $10,000 to date (emphasis added).
On June 13, 2001, Respondent further informed Complainant’s counsel:We reject offers to settle the transfer of said domain name, except for a full reimbursement of all our costs to build this site which exceed $10,000 (USD) (emphasis added).
4. Parties' Contentions
Complainant contends that:
1. The Respondent’s domain name worldblackbelt.tv is identical to Complainant’s WORLD BLACK BELT trademark and is confusingly similar to its BLACK BELT trademark;
2. Respondent has no rights or legitimate interests in the disputed domain names because Respondent has not offered any goods or services under the WORLD BLACK BELT mark, Respondent’s website is not a live web page nor does the domain name point to any live web page; and
3. Respondent has registered and used the disputed domain name in bad faith because it has stated its intent to use the domain name to redirect internet traffic to Respondent’s own website and Respondent has stated in the emails submitted by Complainant that it would accept a substantial payment of money in exchange for the transfer of the domain name
5. Discussions and Findings
Paragraph 1 of the Rules of the ICAAN Policy (the “Policy”) makes it clear that the ICANN Policy is incorporated in each Registration Statement by reference and that the Registrant is considered to know its contents. Paragraph 4 of the ICANN Policy further states that a Registrant is bound by this Policy and that disputes between the Registrant and a third party over a domain name must be resolved by the system of arbitration conducted under the ICANN Rules, which is a “mandatory administrative proceeding”. Other panels have had to address the situation in which the Respondent is in default. In this regard, I agree with the statement of the Lead Arbitrator, Maurice Wolf in Noodle Time, Inc. v. Max Marketing, Case AF-0100 that:
[t]he ICANN Policy was adopted in order to ensure that disputes arising from domain names could be resolved in an efficient manner equitable to the parties to the dispute. Such parties are given the opportunity to present evidence to an independent and impartial arbitrator to support the claims made by the Complainant, on the one hand and for the Respondent, on the other, to demonstrate that the use of the disputed domain name is proper and in accordance with the ICANN Policy…. Of course, when one party to such a dispute fails to abide by the ICANN Rules and does not submit a response to the Complaint, it is difficult for any arbitrator to view the merits of the case from the perspective of the Respondent and must rely on the statements and evidence submitted by the Complainant and the provisions of the ICANN Policy applicable to these facts.” [See paragraph 5 of the decision.]
Paragraph 14(2) of the Rules provides that if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In Noodle Time, Inc. v. Max Marketing, Arbitrator Wolf held that:
[t]he arbitrator may properly draw an inference that the failure of the Respondent to answer the claims of the Respondent should be considered as an admission that such claims are true. [Paragraph 14 of the ICANN Rules]. Accordingly, if the Complainant’s claim includes sufficient credible evidence that the Respondent has violated the ICANN Policy, the arbitrator must find for the Complainant and order the appropriate action taken with respect to the registration of the disputed domain name. This, it is to be noted, is not a default award but an award based on the evidence before the Panel which is unrefuted. [See paragraph 5 of the decision.]
Paragraph 4(a) of the Policy requires the Complainant to demonstrate that three elements of a case are present for either cancellation or transfer of the disputed domain name. These are: that the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the domain name; and the domain name was registered and is being used in bad faith. The question before this Panel, therefore, is whether the Complainant has satisfied the requirements of Paragraph 4(a) with respect to these three elements, all of which must be proved.
The Complainant has demonstrated that it has a pending trademark application in the mark WORLD BLACK BELT and a common law trademark in same; and trademark registrations in various countries in the mark BLACK BELT.
Thus, I conclude that the top level domain portion of the Respondent’s domain name, worldblackbelt.tv, is identical to Complainant’s WORLD BLACK BELT trademark and is confusingly similar to the Complainant’s BLACK BELT trademarks. There is no question that there would be confusion between the disputed domain name and the marks.
With respect to the question of whether the Complainant has shown that the Respondent has no rights or legitimate interests in respect of the domain name, I find that the Complainant has met its burden of proof. I consider it appropriate to draw an adverse inference from the Respondent’s failure to reply to the Complaint and to articulate its rights or legitimate interests in the domain name worldblackbelt.tv. The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstance, giving rise to a right to or legitimate interest in this domain name. Accordingly, I accept the statements of the Complainant that the Respondent has no such rights or interest.
With respect to the question of whether the domain name was registered and is being used in bad faith, I find that the Complainant has met its burden of proof. Paragraph 4 of the Policy provides a non-exhaustive list of circumstances that “shall be evidence of registration and use of a domain name in bad faith”. In particular, paragraph 4(b)(iv) provides this circumstance of bad faith: “by using the domain name, [a registrant has] intentionally attempted to attract, for commercial gain, internet users to [its] website 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] website or location or of a product or service on [its] website or location.” I find that the Complainant has demonstrated that the Respondent, by registering and using the domain name worldblackbelt.tv, is intentionally attempting to attract internet uses to its website for commercial gain by creating confusion with the trademarks of Worldblackbelt, Inc. I consider it appropriate to draw an adverse inference from the Respondent’s failure to reply to the Complaint on this point.I further find that Respondent’s attempt to request a payment of $10,000, or such other substantial sum of money from Complainant for the transfer of the domain name amounts to bad faith. Since Respondent has chosen not to respond to this Complaint, I also consider it appropriate to draw an adverse inference from Respondent’s failure to reply on this additional point.
For the reasons set forth above, the Complainant’s request is granted and in accordance with Paragraph 3(c) of the Policy, the Panel orders that the domain name of worldblackbelt.tv be transferred to the Complainant.