ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution Policy
1. Parties and Contested Domain Name
Complainant Lambda Publications, Inc. is the owner of the mark Windy City Times (the “Mark”). The Mark has been used in commerce for approximately 16 years in association with a publication in Chicago aimed at the gay and lesbian community. The Mark was registered with USPTO of the United States of America on June 28, 1994 and was sold by Sentury Publications, Inc. to Lambda Publications, Inc. on September 1, 2000.
Respondent, although adequately notified of this proceeding, failed to respond in any manner to the Complaint. The Panel finds that Respondent is a photographer for and part owner of The Chicago Free Press, a publication that competes for the same audience in the same geographic location as that served by the Windy City Times. Prior to these roles, Respondent worked as a photographer for a period of seven years for the Windy City Times.
Windycitytimes.com currently resolves to an “under construction” Web page displayed by Network Solutions, Inc.
2. Procedural history
The electronic version of the Complaint form was filed on-line through eResolution’s Website on July 24, 2001. The hardcopy of the Complaint Form and annexes were received on July 24, 2001. Payment was received on July 24, 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
- 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 inactive 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 July 24, 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 July 25, 2001. This date is the official commencement date of the administrative proceeding.
Only the emails 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. 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 August 15, 2001, the Clerk’s Office contacted Mr. Andrew Mansfield, and requested that he act as panelist in this case.
On August 16, 2001, Mr. Andrew Mansfield accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On August 17, 2001, the Clerk’s Office forwarded a user name and a password to Mr. Andrew Mansfield, allowing him to access the Complaint Form and the evidence through eResolution’s Automated Docket Management System.
On August 17, 2001, the parties were notified that Mr. Andrew Mansfield had been appointed and that a decision was to be, save exceptional circumstances, handed down on September 3, 2001.
3. Factual Backgrounds
Respondent has registered numerous domain names that appear related to his current employer.
4. Parties' Contentions
Complainant asserts that the Mark is incontestable and that Respondent either registered and held the mark, unused in commerce, for the purpose of selling the Mark back to Windy City Times or for the purpose of diverting traffic from those Chicago citizens seeking the Windy City Times to the Chicago Free Press.
5. Discussions and Findings
Pursuant to section 4 of the Uniform Dispute Resolution Policy adopted by ICANN (“UDRP”), this Panel has authority to order the transfer of this domain name to Complainant if:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
Section 4(b) discusses those indicia of “bad faith” that a Panel should note:
(i) Circumstances indicating that Respondent has registered or has 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 Respondent’s documented out-of-pocket costs directly associated with the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a correspondent domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Web site 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 Respondent’s Web site or location or of a product or service on that Web site or location.
The Panel finds that the domain name windycitytimes.com is identical to the Mark. Further, Respondent has no rights or legitimate interests in the domain name. Finally, it is clear that the domain name was registered in bad faith and is being used in bad faith.
Among the indicia of bad faith provided by UDRP, Respondent appears to have many. The domain name appears to have been acquired during the time the Respondent was a photographer for Windy City Times for the purpose of later selling the domain name back to the trademark holder. The registration and continued non-use of the domain name disrupts the business of the Windy City Times, a company in competition with another company associated with Respondent. Finally, Respondent has a record of registering and holding domain names relating to the businesses of others.
The Panel hereby orders the transfer of Windycitytimes.com to Complainant.