eGalaxy Multimedia Inc. v. ON HOLD By
Owner Ready To Expire
Claim
Number: FA0305000157287
Complainant is
eGalaxy Multimedia Inc., Toronto, ON, CA (“Complainant”) represented
by David Warga of Warga Professional Corporation. Respondent is
ON HOLD By Owner Ready to Expire, Neuchatel, CH (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <nakednewsradio.com>, registered with Tucows,
Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically May 9, 2003; the Forum received a hard copy of the Complaint May
12, 2003.
On
May 12, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <nakednewsradio.com> is registered with Tucows, Inc. and that
Respondent is the current registrant of the name. Tucows, Inc. verified that
Respondent is bound by the Tucows, Inc. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
May 15, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 4, 2003, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@nakednewsradio.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods used for the Commencement Notification, the Forum transmitted to the
parties a Notification of Respondent Default.
On
June 12, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum discharged its responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<nakednewsradio.com>, is confusingly similar to Complainant’s
NAKED NEWS mark.
2. Respondent has no rights or legitimate
interests in the <nakednewsradio.com> domain name.
3. Respondent registered and used the <nakednewsradio.com>
domain name in bad faith.
B.
Respondent did not submit a Response in this proceeding.
C. Complainant
submitted an Additional Submission.
Complainant
carbon copied the Provider in an email exchange with the Registrar in this
dispute and that email exchange was included in the submission to the Panel.
The Panel chose to view this exchange as an Additional Submission pursuant to
Forum Supplemental Rule 7.
Complainant
established in this proceeding that it has rights in the NAKED NEWS mark
through registration in as many as five nations or territories and by pending
registration applications in fifteen other states or territories.
Complainant
consistently and successfully has defended its exclusive rights in NAKED NEWS
against others claiming a right to use the two terms. See eGalaxy
Multimedia, Inc. v. T1 (Nat. Arb. Forum Case FA0111000101823, Dec.23,
2001); eGalaxy Multimedia, Inc. v. Complete Digital Marketing (Nat. Arb.
Forum Case FA0203000105975, Apr. 30, 2002).
Further,
Complainant, through its agent, sent Respondent a cease and desist letter March
24, 2003, giving notice of Complainant’s continued intent to vigorously defend its
rights in the mark.
Respondent
registered the disputed domain name April 4, 2001. After receiving notice of Complainant’s challenge to Respondent’s
right to register the disputed domain name, Tucows, Inc., the domain name
Registrar placed the domain name on Registrar Lock on April 7, 2003.
The Record permits the Panel to find that
Complainant has expended considerable sums
in developing
the mark and that the mark has international recognition.
The Record also
permits the Panel to take notice that litigation is pending that arises from
this same dispute and involving these same parties. That lawsuit was filed by
this Complainant April 3, 2003, against this Respondent and several other
entities and was filed more than a month before this Complaint was filed on May
15, 2003.
When a court
action is pending at the time a Complaint is filed, or when it is filed
contemporaneously with a Complaint, a Panel may choose not to decide the case
on the merits, pursuant to UDRP Rule 18(a).
The remedy in that event would be to suspend or terminate the
administrative proceeding. In light of
the fact that the Panel’s decision may be superseded by a subsequent Order or
Decision by another Court, the Panel also may choose not render a decision on
the merits. See Lutton Invs., Inc. v. Darkhorse Distrib., Inc., FA
154142 (Nat. Arb. Forum June 6, 2003) (stating that “[t]he pending arbitration
between the parties to this dispute, touching on matters directly relevant to
the resolution of a claim under the UDRP, justifies terminating the present
administrative proceeding” and deciding to dismiss the Complaint without
prejudice).
Should a Panel
determine that it will not decide this case on the merits, it may choose, at
its discretion, to issue a stay pending determination of the concurrent Court
proceeding in Canada, or to dismiss the Complaint without prejudice.
In this case,
Complainant initiated both a court action and an ICANN Complaint. While the Respondent did not bother to file
a Response in this ICANN proceeding, and while the Panel has reviewed the
Complaint to determine if Complainant established Complainant’s right to
recover under ICANN rules and decisions, at least one Panel has held that it is
contrary to the purposes of ICANN to permit a party to pursue both avenues at
the same time. One of the important purposes of the ICANN rules is to provide
parties a simplified mechanism in lieu of litigation to adjudicate ICANN
disputes. It does not reduce costs and effort for the parties for a Complainant
to seek relief with both ICANN and the Courts. See AmeriPlan Corp. v.
Gilbert FA105737 (Nat. Arb. Forum April 22, 2002) (the function of the UDRP
is to reduce the cost and effort required to resolve domain name disputes by
offering a simplified mechanism in lieu of litigation, to render a decision on
a domain name dispute when there is already a court action pending does
violence to this function of the UDRP) (dismissing the Complaint).
In the absence
of a Response to this claim by Respondent, the Panel reviewed the allegations
of Complainant to determine if Complainant established by clear evidence a
right under ICANN to recover without regard to the contemporaneously pending
Court litigation.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
When a
Respondent fails to submit a Response, the Panel decides these administrative
proceedings on the basis of Complainant's undisputed representations pursuant
to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws such inferences as
the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires that a complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant contends that it has rights in the NAKED NEWS mark through
registration of the mark with appropriate governmental authorities worldwide. See
Koninklijke
KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which Respondent operates. It is sufficient that Complainant can
demonstrate a mark in some jurisdiction). Complainant also maintains that it
has established common law rights in the NAKED NEWS and NAKED NEWS RADIO marks.
See Tuxedos By Rose v. Nunez,
FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established); see also Keppel
TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of
long and substantial use of the said name [<keppelbank.com>] in
connection with its banking business, it has acquired rights under the common
law).
Complainant also
argues that the <nakednewsradio.com> domain name is confusingly
similar to its NAKED NEWS mark. See Arthur
Guinness Son & Co. (Dublin) Ltd. v.
Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity
where the domain name in dispute contains the identical mark of Complainant
combined with a generic word or term); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29,
2000) (finding that common geographic qualifiers or generic nouns can rarely be
relied upon to differentiate the mark if the other elements of the domain name
comprise a mark or marks in which another party has rights).
For Respondent
to prevail on this issue, the Panel would be required to find that
Complainant’s NAKED NEWS mark is generic or descriptive and that Complainant
has failed to establish secondary meaning associated with the mark, thus
finding that Complainant has no enforceable rights under the UDRP. See Successful Money Mgmt. Seminars, Inc. v.
Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that
seminar and success are generic terms to which Complainant cannot maintain
exclusive rights); see also FilmNet
Inc. v. Onetz, FA 96196 (Nat. Arb.
Forum Feb. 12, 2001) (finding that Complainant failed to establish that
Respondent did not have rights or legitimate interests in the <filmnet.com>
domain name, where the disputed domain name is wholly comprised of generic
words, even though Complainant is the owner of the FILMNET mark).
As to this Complainant, such a finding would be contrary to two prior
holdings of Forum panels, who have looked at this express issue with regard to
this Complainant’s rights in its mark.
No need exists to defer a decision based on this issue. See eGalaxy Multimedia, Inc.
v. T1 FA 101823 (Nat. Arb. Forum Dec.23, 2001); see also eGalaxy
Multimedia, Inc. v. Complete Digital Marketing FA 105975 (Nat. Arb. Forum
Apr. 30, 2002).
The Panel finds that Complainant satisfied the requirements of ICANN
Policy ¶ 4(a)(i) to show “confusing similarity.”
The Panel may
decide to view the Complaint in a light most favorable to Complainant due to
the fact that Respondent did not respond to the Complaint. See Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on the
Respondent’s failure to respond: (1) Respondent does not deny the facts
asserted by Complainant, and (2) Respondent does not deny conclusions which
Complainant asserts can be drawn from the facts); see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true).
The Panel also may find that Respondent’s failure to respond to the
Complaint is evidence that Respondent lacks rights or legitimate interests in
the domain name. See Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221
(WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names); see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interests in the domain name because Respondent never
submitted a response or provided the Panel with evidence to suggest otherwise).
Complainant contends that Respondent’s passive holding of the disputed
domain name is evidence that Respondent lacks rights or legitimate interests. See
Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(finding that “merely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of
the Policy”); see also Flor-Jon
Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding
that Respondent’s failure to develop the site demonstrates a lack of legitimate
interest in the domain name). Complainant alleges that it has not licensed or
authorized Respondent to use its NAKED NEWS mark, evidence that it lacks rights
or legitimate interests. See Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly
known by the mark and never applied for a license or permission from Complainant
to use the trademarked name); see also RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail").
Further, the Panel may find that Respondent’s unsolicited attempt to
sell its domain name registration to Complainant for $500 is evidence that
Respondent lacks rights or legitimate interests in the domain name. See
Cruzeiro Licenciamentos Ltda v. Sallen,
D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do
not exist when one holds a domain name primarily for the purpose of marketing
it to the owner of a corresponding trademark); see also Kinko’s Inc. v. eToll, Inc., FA 94447
(Nat. Arb. Forum May 27, 2000) (finding that Respondent has no rights or
legitimate interests in the domain name where it appeared that the domain name
was registered for ultimate use by Complainant).
Mere passive
holding of a domain name does not automatically constitute evidence that a
Respondent has no rights to or legitimate interests in a domain name. See VeriSign
Inc. v. VeneSign C.A.,
D2000-0303 (WIPO June 28, 2000) (finding that the Respondent’s default does not
automatically lead to a ruling for the Complainant); see also Casual
Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum Aug. 7, 2000)
(finding that Respondent has rights and legitimate interests in the domain name
even though he has made no use of the website at the time of the
Complaint). But here, Complainant
supported its allegations with documentation in support. Respondent filed nothing to show a plan or
intent to use the domain name in a bona fide legitimate manner and the Panel
has no basis to make inferences in favor of Respondent.
Further, a mere attempt to sell a domain name registration is not necessarily evidence of
a lack of rights or legitimate interests in the disputed domain name. See Fifty Plus Media Corp. v. Digital Income,
Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that Complainant
failed to prove that Respondent had no rights in the domain name and had
registered and used the domain name in bad faith where the Respondent is an
Internet business which deals in selling or leasing descriptive/generic domain
names). But here, Complainant supported its allegations with documentation in
support and Respondent offered no evidence to overcome Complainant’s
allegations and the Panel has no basis to make inferences that favor
Respondent.
The Panel finds that Complainant satisfied the requirements of Policy ¶
4(a)(ii) to show that Respondent has “no rights or legitimate interests.”
Taking into
consideration that Respondent’s business of acquiring and holding expired
domain names has not been shown by any extrinsic evidence to be an abuse of the
ICANN rules, the Panel looked to Complainant’s extrinsic evidence that
Respondent’s passive holding and offer to sell the name for $500 supported
findings of bad faith. Whether Respondent’s demand of $500 for a domain name is
excessive may be shown by extrinsic proof of reasonable registration costs. No
extrinsic evidence was offered to show costs of registration or that Respondent
is passively holding the domain name to prevent Complainant from using its mark
in a domain name. In addition, no
evidence was offered showing any relationship between Respondent and
Complainant that would permit an inference that Respondent acted to harm Complainant’s
business or to compete with Complainant using the domain name.
Because
Complainant did not produce clear evidence to support its subjective
allegations of bad faith under ICANN Policy
¶ 4(a)(iii), the Panel finds it appropriate to dismiss the Complaint
without prejudice, subject to its being re-filed after the Court case that
Complainant also brought has been determined. See AmeriPlan Corp. v. Gilbert
supra.
Having
determined that Complainant did not show a right to recover in this default
ICANN action, the Panel concludes that the appropriate remedy is to dismiss the
Complaint without prejudice to its being re-filed after the Court case has been
determined.
Accordingly, it
is Ordered that the Complaint be dismissed without prejudice.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 26, 2003.
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