National Arbitration Forum
DECISION
XM
Satellite Radio Inc. v. Michael Bakker
Claim Number: FA0612000861120
PARTIES
Complainant is XM Satellite Radio Inc. (“Complainant”), represented by Meredith Weinberg of Pillsbury Winthrop Shaw Pitman LLP, 2300 N Street NW, Washington, DC, 20036. Respondent is Michael Bakker (“Respondent”), represented by Torsten Bettinger of Bettinger Schneider Schramm, Patent- und Rechtsanwalte, Postfach (P.O. Box) 86 02 67, Munchen 81629, Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xm.com>, registered with Cronon Ag
PANEL
The undersigned certify that they have acted independently and impartially and that to the best of their knowledge they have no known conflict in serving as Panelists in this proceeding. Clive Lincoln Elliott (Chair), Honorable Carolyn Marks Johnson, and Alan L. Limbury sit as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically December 5, 2006, naming as
Respondent the then registrant, a Mr. Osman Taskin; the National
Arbitration Forum received a hard copy of the Complaint December 6, 2006. A copy of
the Complaint was transmitted electronically to the Registrar on December 5,
2006, in accordance with the National Arbitration Forum’s Supplemental Rule
4(e)(i).
On December 20, 2006, Cronon Ag Berlin, Niederlassung Regensburg
confirmed by e-mail to the National Arbitration Forum that the <xm.com>
domain name is registered with Cronon Ag Berlin,
Niederlassung Regensburg, and that Mr. Michael Bakker, the present
Respondent, is the current registrant of the name. Cronon Ag
On December 20, 2006, the National Arbitration Forum required
Complainant to amend the Complaint to list Respondent’s name and contact
information as currently listed in the Registrar’s WHOIS Database. In compliance with this, on December 21,
2006, Complainant filed an Amended Complaint, naming Mr. Bakker as
Respondent. On December 21, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”) setting a deadline
of January 10, 2007, 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@xm.com by e-mail.
A timely Response was received and determined to be complete on January 10, 2007.
On January 22, 2007, an Additional Submission was received from
Respondent.
On January 23, 2007, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Clive Lincoln Elliott, the Honorable Carolyn Marks
Johnson, (Ret.) and Alan L. Limbury as Panelists.
On January 26, 2007, Respondent requested that
the present domain name proceedings under the UDRP be suspended on the basis
that on the same day Respondent had filed a legal action against Complainant
with the Landgericht Nurnberg-Furth (District Court of Nurnberg-Furth, Germany)
and asserted that the court proceeding related to the disputed domain name
dispute.
On January 26, 2007, Complainant filed a response
strenuously objecting to any suspension of the UDRP proceedings.
On February 1, 2007, the Panel issued an
administrative Order that, pursuant to Rule 12 of the Policy, the
Respondent file and serve:
a. a certified translation of all relevant court documents; and
b. a certified translation of the sale agreement relating to the domain name
as referred to by Respondent in its Response;
and have them e-mailed and faxed to the National Arbitration Forum and Complainant no later than February 7, 2007.
Respondent was also invited to verify his Response, should he wish to do so, and also to do so no later than February 7, 2007.
On February 8, 2007, Respondent supplied
certified translations of the court documents and a sale agreement. However, no further verification of the
response was made. Nor did Respondent
serve the certified translations on the Complainant as directed.
On February 15, 2007, the Panel declined the
request for suspension and determined that it was appropriate to render a
Decision in this dispute, pursuant to ICANN Policy.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following points in this proceeding:
Complainant was incorporated in 1992 and has been publicly traded on the NASDAQ since October 1999. Complainant has been using the term XM in commerce since 2001 in connection with the provision of satellite radio broadcasting services.
Complainant states that it is
Complainant’s trademarks have been federally registered with the United States Patent and Trademark Office. Complainant owns several domain names, including <xmradio.com> and <xm2go.com> and uses them to transmit radio broadcasts as well as to sell its satellite radio broadcasting services.
Complainant asserts that it is the legitimate and rightful owner of the XM
mark by virtue of use and
registration. Complainant also maintains
an Internet presence and conducts business through various domain names that
incorporate the XM mark.
Complainant asserts that Respondent has not used and is not using the
<xm.com> domain name in
connection with any bona fide
offering of goods or services and that Respondent has no rights or legitimate
interests in the <xm.com>
domain name.
Complainant contends that the webpage connection to <xm.com> makes no mention of any
specific goods or services being offered by Respondent; but that, instead, it
contains the representation that Respondent rents the domain name to a third
party and that the third party uses the site as a web page connection to <xm.com> for third party links, some
of which belong to those who would compete with Complainant.
Complainant argues that placing third party links on the webpage
connection to <xm.com> alone
demonstrates that Respondent has not used <xm.com> for a bona fide
offering of goods or services. The fact
Respondent rents <xm.com> to a
third party who, in turn, puts third party links on the web page in competition
with Complainant underlines Respondent’s lack of rights or legitimate interests
in <xm.com>.
Complainant submits that Respondent registered and uses the <xm.com> domain name in bad faith, as
shown by:
(a) Respondent’s
registration and use of the confusingly similar <xm.com> despite his knowledge of Complainant’s rights in the XM mark;
(b) Respondent’s rental for profit of the <xm.com> domain name to an entity that has placed on the webpage connection to <xm.com>, links belonging to other third parties, including some in competition with Complainant; and
(c) Respondent’s attempted sale of <xm.com> for profit to Complainant and others.
B. Respondent makes the following points in response:
Respondent denies wrongdoing. Respondent states that he received a telephone call from the previous registrant of the domain name, Mr. Osman Taskin, on December 9, 2006, in which Mr. Taskin offered to sell the domain name <xm.com> and web hosting software to Respondent for an amount of €10.000. Mr. Taskin and Respondent were previously employed by the same company. However, Respondent contends that Mr. Taskin denied that the registration and use of domain name infringed any third parties’ rights and asserted that he had used the domain name <xm.com> for web hosting services under the name XM Hosting since August 2006 without any third parties objecting to the use of the domain name.
Respondent states that because of the very low price he decided to accept Mr. Taskin’s offer to sell the domain name <xm.com>. The two entered into a formal agreement on December 11, 2006.
Respondent asserts that shortly
thereafter he requested a trademark search for XM in the field of IT services
in
Respondent accepts that Complainant has a right in the trademark XM for satellite broadcasting services and that the trademark is identical to the disputed domain name. However, he asserts that at the time of the transfer to him of the domain name (on or about December 14, 2006) and prior to being notified of the Complaint on December 21, 2006, Respondent was not aware of Complainant’s radio broadcasting services under the trademark “XM” or that a Complaint had been filed under the UDRP.
Furthermore, Respondent submits that he has also made demonstrable preparations to use the domain name in connection with network administrating services before any notice of the dispute, by applying for a corresponding trademark registration with the German Patent and Trademark Office on December 20, 2006.
Respondent contends that
Complainant’s radio broadcasting services cannot be listened in on and are
therefore completely unknown in
Respondent asserts that he has acquired the domain name in order to have a viable domain name for his future business of providing hosting and network administration services and that these services are not confusingly similar to Complainant’s radio broadcasting services.
Finally, he submits that nothing supports applying the alleged bad faith use of the domain name by Mr. Taskin to Respondent’s right to register and use the disputed domain name.
C. Additional Submissions
Complainant further submits that the Panel should find for Complainant because Respondent’s actions amount to a classic case of “cyberflying;” that is, accepting transfer of a disputed domain name from a previous registrant during a pending proceeding against the previous registrant in order to avoid the UDRP. Complainant argues that the knowledge and actions of Osman Taskin – the previous registrant of <xm.com> should be imputed to Respondent because he accepted transfer of <xm.com> from Mr. Taskin six days after Complainant filed a complaint against Mr. Taskin seeking transfer of the domain name.
Complainant reiterates that Mr. Taskin’s lack of rights and bad faith should be imputed to Respondent.
Finally, Complainant states that it is not credible that Respondent would use the domain name <xm.com> for a service called “maximum hosting” as the “X” and the “M” in those terms are hardly obvious to a consumer. Complainant submits that it seems too convenient that Respondent would arbitrarily capitalize the “X” and “M” in those two words. Instead, Complainant submits, “maximum hosting” is a post-hoc attempt by Respondent to demonstrate legitimate use of <xm.com>.
FINDINGS
The Panel finds:
(1) That Respondent’s request for suspension of this
proceeding should be Denied;
(2) That an improper transfer of the
domain name occurred after the administrative proceeding had been commenced,
and that this constitutes "cyberflying;"
(3) That the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(4) That Respondent has no rights or legitimate
interests in respect of the domain name; and
(5) That the domain name has been registered and
is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires Complainant to 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 the Respondent is
identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(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.
Procedural Matters
Two preliminary procedural matters need to be dealt with. It is
appropriate that they are dealt with at the outset.
Suspension of Proceedings
As noted above, on January 26, 2007, Respondent
requested that these proceedings under the UDRP be suspended on the basis that he
had filed a legal action against Complainant in the District Court of
Nurnberg-Furth,
Having considered
the evidence and submissions the Panel considers that a number of factors
suggest that the original registrant, Mr. Osman Taskin and the transferee, the current Respondent (Mr. Bakker) entered into
some form of common scheme to avoid the Complaint. The sequence of events set out in the Procedural
History above lays the foundation for this view. In addition, the Panel notes the following
factors:
·
The 90-day
"clawback" provision in the contract for sale of the domain name;
·
The relatively low price
for what must otherwise be an attractive two letter .com domain name;
·
The absence of evidence
that payment has been made;
·
The fact that no effective
checks were made beforehand as to whether the domain name was available for use
generally, and
·
The overall sense that the
domain name sale transaction was effected with some haste.
These considerations also are taken into account in conjunction with
the next issue, that of alleged “cyberflight.”
They militate against the exercise of the Panel’s discretion under Rule
18(1) to suspend the proceedings and the Panel declines to do so.
Cyberflight
As noted above, Complainant submits in its Additional Submission that
the Panel should find that Respondent’s actions amount to a classic case of
“cyberflying,” namely accepting transfer of a disputed domain name from a
previous registrant during a pending proceeding against the previous registrant
in order to avoid the UDRP.
The Panel has found other cases dealing with the issue of
“cyberflying.” Where a transfer
of the registration of the disputed domain name occurs after the administrative
proceeding has commenced, there is a clear case of
"cyberflying." Neither a
change of registrar nor a change of registrant in these circumstances affects
the proceedings. Transfer orders have been made against the nominated
registrant at the time when a Complaint was received by the Registrar. The majority in Gloria-Werke H.
Schulte-Frankenfeld GmbH & Co v. Internet Development Corporation and
Gloria MacKenzie, D2002-0056 (WIPO Apr. 26, 2002) (<gloria.com>),
stressed that the register must be taken as reflecting the correct identity of
the registrant at the time the registrar receives a copy of the Complaint. See
also Disney Enterprises Inc. v. John Zuccarini, Cupcake City and
Cupcake Patrol, D2001-0489 (WIPO July 3, 2001); British Broadcasting
Corp. v. Data Art Corporation, D2000-0683 (WIPO Oct. 2, 2000); AT &
T Corp v. WNA, D2001-1160 (WIPO Nov. 16, 2001) (per Sir Ian Barker in Unilever PLC v. ABC Corp, D2003-0164
(WIPO June 24, 2003).
Here, however, because Complainant amended the Complaint, Mr. Taskin is no longer named as a Respondent. Given the factors we have previously discussed, the Panel finds that the evidence before the Panel permits the inference that Respondent (Mr. Bakker) was knowingly concerned in Mr. Taskin’s “cyberflying” and that he therefore registered the domain name (i.e. accepted the transfer) in bad faith. Further, the Panel considers that if one party acts in concert or conspires with another to avoid the effect of the Policy, that person's bad faith should be imputed to the other with regard to that conduct. The Panel is satisfied that it should draw the appropriate inference in the present case. These points are dealt with in more detail below under the "bad faith" section of this Decision.
Accordingly, the Panel considers that the transfer of the domain name should not have been made and should have been cancelled by the Registrar. However, that is not an issue before the Panel and it is necessary to deal with the matter in accordance with the requirements of Paragraph 4(a) of the Policy.
Identical
to and/or Confusingly Similar
Complainant established with
extrinsic proof in this proceeding that it holds numerous valid trademark
registrations for the XM mark with the United States Patent and Trademark
Office (“USPTO”) (Reg.
No. 2,547,677 issued March 12, 2002; Reg. No. 2,556,817 issued April 2, 2002;
Reg. No. 2,643,696 issued October 29, 2002; Reg. No. 2.652,593 issued November
19, 2002; Reg. No. 2,732,837 issued July 1, 2003; Reg. No. 2,810,210 issued
February 3, 2004). The Panel finds that
these trademark registrations sufficiently demonstrate Complainant’s rights in
the XM mark pursuant to Policy ¶ 4(a)(i).
See Intel Corp. v. Macare, FA 660685 (Nat. Arb.
Forum Apr. 26, 2006) (finding that the complainant had established rights in
the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the
USPTO); see also Miller Products Co. v. Grozinger, FA 823231 (Nat. Arb.
Forum Dec. 5, 2006) (“Rights in a trademark can be shown in several ways,
including by way of a
The Panel finds that the <xm.com> domain name is identical to Complainant’s
XM mark.
Respondent does not contest this element of the Policy.
Accordingly, the Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Rights
to or Legitimate Interests
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleges that Respondent has no such rights. Complainant must first make a prima facie case that Complainant has rights in the mark contained within a disputed domain name and that Respondent has no such rights. Once Complainant satisfies this showing under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant contends that because the WHOIS information lists the registrant of the domain names as “Michael Bakker,” and because no other evidence in the record indicates that Respondent is commonly known by the <xm.com> domain name, then for these reasons, Respondent is not commonly known by the <xm.com> domain name.
The Panel finds that the knowing receipt and holding of a domain name in furtherance of "cyberflying" does not give rise to rights or legitimate interests in a domain name.
The Panel therefore finds that Complainant satisfied Policy ¶ 4(a)(ii).
Registration
and Use in Bad Faith
Complainant also alleges that Respondent acted in bad faith in registering and using the domain name as Respondent has used it.
The Panel considers that the registration of the domain name and transfer to Respondent in the manner described above permits the Panel to draw an inference that both parties to this transaction collaborated in “cyberflying” and acted improperly in doing so.
The Panel is
required to consider the totality of the circumstances in making this
assessment. While the Policy lists four circumstances demonstrating
registration and use of a domain name in bad faith, this list merely
illustrates possible situations that demonstrate bad faith. The Panel may look to the totality of the
circumstances surrounding the registration and use of a domain name in
determining whether bad faith is present.
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (determining that Policy paragraph 4(b) sets forth certain circumstances,
without limitation, that shall be evidence of registration and use of a domain
name in bad faith); see also Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”).
The Panel finds that it is
appropriate in the present situation to impute a sufficient degree of bad faith of one to the other. However,
the Panel also does so on the basis that the relevant domain name registration,
where the recipient is the only named Respondent, is the registration upon the
transfer (to Respondent, Mr. Bakker, in this case). Respondent accordingly registered the domain
name in bad faith. Further, the Panel
finds that mere retention by Respondent of the domain name (irrespective of any
ostensibly innocent use in connection with a website) has been calculated to
further the illegitimate purpose of “cyberflying” and thus constitutes bad
faith use.
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(iii).
DECISION
Having determined that Complainant established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xm.com> domain name be TRANSFERRED
from Respondent to Complainant.
Clive Lincoln Elliott (Chair)
Hon. Carolyn Marks Johnson
Alan L. Limbury
Dated: February 27, 2007.
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