Charles P. Stetson, Jr. v. Data Text
Claim
Number: FA0409000333070
Complainant is Charles P. Stetson, Jr. (“Complainant”),
represented by Marco Ciavolino, 1603 Belvue Drive, Forest Hill, MD
21050-2508. Respondent is Data Text (“Respondent”), 2000 E. Lamar Blvd., Ste. 600, Arlington, TX
76006-7340.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <releasetime.org>, registered with Network
Solutions LLC.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 22, 2004; the Forum received a hard copy of the
Complaint on September 29, 2004.
On
September 24, 2004, Network Solutions LLC confirmed by e-mail to the Forum that
the domain name <releasetime.org> is registered with Network
Solutions LLC and that Respondent is the current registrant of the name.
Network Solutions LLC has verified that Respondent is bound by the Network
Solutions LLC 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
October 6, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
October 26, 2004 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@releasetime.org by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
November 3, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has 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. Respondent’s <releasetime.org>
domain name is identical to Complainant’s RELEASETIME.ORG mark.
2. Respondent does not have any rights or
legitimate interests in the <releasetime.org> domain name.
3. Respondent registered and used the <releasetime.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Charles P. Stetson, Jr., is an individual claiming rights in the <releasetime.org>
domain name. On March 1, 2001, the
National Bible Association passed a resolution stating that it transferred
right and title interest in various assets, including the <releasetime.org>
domain name. Complainant asserts that
it has had difficulty transferring the domain name from Respondent to
itself. Complainant also states that it
has created a new site, <releasedtime.org>, so it could copy the
educational content at <releasetime.org> and administer
<releasedtime.org> in accordance with the National Bible Association’s
wishes. Complainant has not filed a
trademark registration for RELEASETIME.ORG.
Respondent, Data
Text, registered the <releasetime.org> domain name on May 11,
1999. David Saul is registered as the
administrative contact. Respondent is
using the domain name to provide religious education materials on the Internet.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that 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 has
not established adequate rights in a mark to bring a claim under the
Policy. Complainant asserts that it
holds the rights to the <releasetime.org> domain name, as
evidenced by the National Bible Association board resolution transferring right
and title interest in <releasetime.org> to Complainant. However, the Policy protects holders of a
mark from abusive registrations of domain names. Complainant has not asserted rights in a mark that is confusingly
similar or identical to the disputed domain name. Complainant has actually averred that it has not filed a
trademark. See TotalFinaElf E&P
USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding
that in order to bring a claim under the Policy, Complainant must first
establish a prima facie case, and Complainant’s initial burden is to
provide proof of “valid, subsisting rights in a mark that is similar or
identical to the domain name in question”); see also FRH Freies
Rechenzerntrum v. Ingenieurburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18,
2002) (determining that Complainant has not proven by a preponderance of the
relevant, admissible, and credible evidence that the domain name in question is
identical to a trademark in which Complainant has rights despite Complainant’s
mark being the dominant feature of Complainant’s trade name).
The essence of
Complainant’s Complaint is that the National Bible Association does not have
the authority to transfer the domain name.
For Complainant to bring a claim under Policy ¶ 4(a)(i), it would need
to show that it has rights in the RELEASETIME.ORG mark by registration with the
U.S. Patent and Trademark Office or by establishing secondary meaning under the
common law. Complainant has not made a prima
facie showing under Policy ¶ 4(a)(i). See Smart Design LLC v.
Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶
4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but
only that Complainant has a bona fide basis for making the Complaint in the
first place); see also McCarthy on Trademarks and Unfair Competition,
§ 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in
scope” in that “the reference to a trademark or service mark ‘in which the
complainant has rights’ means that ownership of a registered mark is not
required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the Policy.).
The Panel finds
that Complainant has not established Policy ¶ 4(a)(i).
Respondent has
failed to file a Response; therefore, the Panel shall accept any reasonable
allegations by Complainant as true. See
Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence).
The Panel admits
that it finds it difficult to determine whether Complainant has made a prima
facie allegation that Respondent lacks rights or legitimate interests in
the <releasetime.org> domain name. At best, the Panel accepts that Bruster Mance and David Saul
registered the <releasetime.org> domain name in their names and in
the name of Data Text (Respondent).
Because Saul is listed as the administrative contact of the disputed
domain name, the Panel infers that Saul was affiliated with Data Text. The Panel also accepts that at the time of
registration of the domain name, Respondent was acting on the behalf of the
National Bible Association.
Complainant has
asserted that it has been unsuccessful contacting Saul to transfer the domain
name. The Panel infers that the
National Bible Association chose Saul to acquire and administer the <releasetime.org>
domain name, and now it would like Complainant to take over that task. However, Complainant’s allegations that
Respondent is difficult to contact does not constitute a prima facie allegation
that Respondent lacks rights or legitimate interests in the disputed domain
name. See Lush LTD v. Lush Environs,
FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when Respondent
does file a Response, Complainant must allege facts, which if true, would
establish that Respondent does not have any rights or legitimate interests in
the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman
Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent
a showing of any facts by Complainant that establish Respondent lacks rights or
legitimate interests in the disputed domain name, the Panel may decline to
transfer the disputed domain name).
The Panel finds
that Complainant has not established Policy ¶ 4(a)(ii).
This Complaint
centers on Complainant’s efforts to transfer the registration of the <releasetime.org>
domain name. Complainant’s entire bad
faith argument is as follows:
[i] The
Appendix outlines in detail the good faith attempts to contact Mr. Saul and his
associate Mr. Mance.
[ii] Mr. Saul has been unreachable and/or
unwilling to respond to direct requests to comply with the board decision.
[iii.] The Registrant [sic] rights to the domain
should be withdrawn because it is direct conflict with the board resolution
shown above and the fact that by [sic] Mr. Saul has been unreachable or unwilling
to respond to a range of inquiries.
[iv.] Mr. Saul should
never have registered the domains in question in his own name and should have
instead registered them in the name of the organization.
Complainant
asserts that upon the domain name’s inception, Respondent did not have the
authority to register the <releasetime.org> domain name under
Respondent’s name. And now the National
Bible Association, the entity behind the content of the <releasetime.org>
domain name, would like Complainant to administer the <releasetime.org>
domain name. This dispute is outside
the scope of the Policy. The essence of
this dispute is a contract claim. See Latent Tech. Group, Inc. v. Fritchie,
FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (dispute concerning employee’s
registration of domain name in his own name and subsequent refusal to transfer
it to employer raises issues of breach of contract and breach of fiduciary duty
that are more appropriately decided in court, not before a UDRP Panel); see
also Thread.com, LLC v. Poploff,
D2000-1470 (WIPO Jan. 5, 2001) (refusing to transfer the domain name and
stating that the ICANN Policy does not apply because attempting “to shoehorn
what is essentially a business dispute between former partners into a
proceeding to adjudicate cybersquatting is, at its core, misguided, if not a
misuse of the Policy”).
Additionally,
the Panel may only order a transfer of a domain name upon evidence of the abuse
of the registration process. If the
Panel were to assume, arguendo, that the National Bible Association was
Complainant, and it held the rights to the RELEASETIME.ORG mark, it would also
find at the time of the initial registration that Complainant has failed to
demonstrate that Respondent registered the <releasetime.org>
domain name in bad faith. See Eddy’s (Nottingham) Ltd v. Smith,
D2000-0789 (WIPO Sept. 7, 2000) (finding no bad faith registration of the
domain name where Respondent registered the domain name in good faith, without
objection by Complainant, and in the interest of promoting Complainant’s
business); see also Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5,
2001) (finding that Respondent did not register the disputed domain name in bad
faith where it "registered the Domain Name with the full consent and
knowledge of Complainant" and therefore "did not have the requisite
bad faith when he registered the Domain Name, which is an express requirement
of the Policy").
Therefore, the
Panel finds that Complainant has not established Policy ¶ 4(a)(iii).
Having failed to
establish all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
John J. Upchurch, Panelist
Dated:
November 17, 2004
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