Domain name - ICANN Uniform Domain Name Dispute Resolution Policy - Federal Lanham Act - Federal Anti-Cyber Squatting Consumer Protection Act - Reply to response - Objection to reply - Intent to use application - Negotiations to purchase - U.S. Patent and Trademark - Bona fide - Reverse domain name hijacking - Identical - Confusingly similar - Legitimate interests - Bad faith registration  - Bad faith use.

Complainant is Interep National Radio Sales and owner of U.S. Trademark registration for E-RADIO, which was filed on May 5, 1998 as an intent to use application.  Its first use in Commerce was dated August 2, 1999.   Respondent is Technical Staffing Corporation and owner of domain name "eradio.com" which was registered on July 17, 1997.  Efforts were unsuccessfully made by Complainant to enter into negotiations with Respondent to purchase the domain name.

Complainant claimed that Respondent's mark was identical or confusingly similar to his as the second-level domain name was identical to the service mark.  Complainant also argued that Respondent had no rights or legitimate interests in the "eradio.com" mark because Respondent was selling the name for excessive consideration.  Moreover, Complainant accused Respondent of registrating and using the domain name in bad faith.  As expected, Respondent denied all allegations and accused Complainant of reverse domain name hijacking .
 

Held, Panel denied complaint, Domain Name eradio.com not transferred to Complainant.

Complainant must prove each of the three elements under paragraph 4(a) of the UDRP.

Panel found that Complainant established that the domain name was identical or confusingly similar to Interep's E-RADIO service mark as the second-level domain name was identical to the service mark. 

Complainant also established that Respondent had no rights or legitimate interests to the domain.  It was found that Respondent did not use the "eradio.com" mark on the Internet and did not even maintain a single page on the world wide web that was linked to the URL http://www.e-radio.com. Additionnaly, Respondent held registrations for scores of domain names far in excess of what he could utilize for bona fide business purposes. 

However, the fact that Respondent registered the domain name one year before the intent to use application of Complainant was filed and two years before Complainant started using the mark  convinced the Panel that Respondent had not registered and used the mark in bad faith.

With respect to the Reverse Domain Name Hijacking, Panel could not find that Complaint was brought in bad faith as Complainant owned the trademark registration and pursued the dispute resolution against an identical domain name.

Policies referred to
ICANN Uniform Domain Name Dispute Resolution Policy
Federal Lanham Act
Federal Anti-Cyber Squatting Consumer Protection Act

Cases referred to
Talk City, Inc. v. Micheal Robertson, WIPO Domain Name Dispute Case D2000-0009.
Ellenbogen v. Pearson, WIPO Domain Name Dispute Case D2000-0001.
Shirmax Retail Ltd. v. CES Marketing Group, Inc., eResolution Domain Name Dispute Case AF-0104.

Panel Decisions referred to
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Lackert, Panelist: -

1. The Parties
1.1 Complainant is Interep National Radio Sales, Inc., New York, New York, U.S.A. Respondent is Technical Staffing Corporation, Santa Rosa, California, U.S.A. Complainant is represented by counsel, Salans Hertzfeld Heilbronn Christy & Viener, New York. Respondent is represented by counsel, Johnson & Stainbrook, San Rafael, California.

2. The Domain Name and Registrar
2.1 The domain name which is the subject of this proceeding is "e-radio.com" owned by Respondent. The domain name is registered with Network Solutions, Inc., Herndon, Virginia, U.S.A.

3. Procedural History
3.1 A Complaint was submitted to the WIPO Arbitration and Mediation Center ("WIPO") pursuant to the Uniform Domain Name Dispute Resolution Policy ("Policy") on March 17, 2000.

3.2 On March 22, 2000, a Request for Registrar Verification was sent to Network Solutions, Inc. which issued its verification on March 24, 2000.

3.3 The Notification of Complaint was sent from WIPO to Respondents by e-mail, courier, and facsimile on March 28, 2000.

3.4 A Response was filed on April 17, 2000.

3.5 A Reply to the Response was filed on April 29, 2000.

3.6 An Objection to Complainant's Reply was filed on May 1, 2000.

3.7 The Notification of Appointment of an Administrative Panel ("Panel") was sent on May 12, 2000, thus commencing this administrative proceeding.

4. Factual Background
4.1 Complainant owns U.S. Trademark Registration No. 2309898 for E-RADIO covering various advertising services in Class 35. This registration results from an intent to use application filed on May 5, 1998, and a date of first use in commerce of August 2, 1999.

4.2 Respondent owns the domain name "e-radio.com" registered on July 17, 1997, with Network Solutions.

4.3 During February and March, 2000, representatives of Interep contacted Respondent and entered into negotiations to purchase the domain name. These negotiations failed.

5. Parties' Contentions

A. Complainant 
5.1 Interep is the owner of United States Patent and Trademark Office ("USPTO") Registration No. 2309898 for E-RADIO. The service mark is registered in International Class 035 for use in association with the provision of advertising services, namely, placing the advertisements of others in newspapers and magazines, providing television and radio advertising for others, and placing the advertisements of others in an electronic site accessed through a global computer network. Interep filed an Intent-to-Use application to register E-RADIO service mark with the USPTO on May 5, 1998, and first used the mark in association with provision of services described in its service mark registration on its Internet website on August 2, 1999. 

5.2 Respondent's <eradio.com> domain name is identical or confusingly similar to Interep's E- RADIO service mark, because the second-level domain name is identical to the service mark. For purposes of assessing the identity or confusing similarity between domain names and trademarks, top-level domain extensions (the.com, in this instance), spaces, hyphens, and punctuation are ignored. See, e.g., Talk City, Inc. v. Michael Robertson, WIPO Domain Name Dispute Case D2000-0009 (finding the <talk-city.com> domain name to be identical or confusingly similar to trademark TALK CITY). 

5.3 Respondent has no rights or legitimate interests in respect of the <eradio.com> domain name. On information and belief, Respondent holds the <eradio.com> domain name solely for the purpose of selling domain name to Interep or to one of Interep's competitors for consideration in excess of Respondent's out-of-pocket costs. Respondent does not use the<eradio.com> domain name on the Internet. As of the date of this Complaint, Respondent does not maintain a single page on the world wide web that is linked to the URL http://www.e-radio.com. Additionally, Respondent holds registrations for scores of domain names, far in excess of the number of domains that Respondent could conceivably utilize for bona fide business purposes in association with the provision of goods and services. Respondent's sole use of the <e-radio.com> domain name is to make it available for sale.

5.4 Respondent registered and uses the <e-radio.com> domain name in bad faith. During February and March 2000, representatives of Interep communicated by e-mail and telephone with representatives of Respondent, regarding the <e-radio.com> domain name. On February 7, 2000, Mr. Victor Lirio of Interep wrote to Ms. Jennifer Laxton, the Administrative Contact for Respondent set forth in the <e-radio.com> entry in the NSI Whois database, in an attempt to resolve the matter before initiating an arbitral proceeding. Mr. Lirio stated: "Your offer to sell the domain name for financial gain without having used it for any offering of goods or services constitutes a violation of the Federal Lanham Act, and is evidence of bad faith intent under both the Federal Anti-Cyber Squatting Consumer Protection Act of 1999 and the ICANN Uniform Domain Name Dispute Resolution Policy. Unless you indicate immediately your willingness to assign to Interep for no financial gain the domain name "e-radio.com" Interep will commence appropriate proceedings to force your relinquishment of the domain name.

5.5 Mr. Victor Lirio of Interep made repeated attempts to speak with Ms. Jennifer Laxton, the Administrative Contact for the <e-radio.com> domain name listed in the NSI Whois database, by telephone between February 15, 2000, and March 3, 2000. Eventually, Mr. Lirio spoke with Respondent's President, Mr. John Laxton, by telephone between March 3 and March 6, 2000. On March 6, 2000, Interep offered to purchase the 
<e-radio.com> domain name for $30,000, rather than pursue the acquisition of the domain name through arbitration. Respondent rejected Interep's offer and, on March 7, 2000, counter-offered as follows: Per our conversation of today: Our counter-offer, We will accept $150,000.00 cash and $150,000.00 in Interep stock at today's 3/7/00 lowest price for the transfer of the url e-radio.com. This counter-offer by us is good until 5:00pm Friday 3/10/00. Failing your acceptance of this counter offer within the specified time - then this counter-offer shall become null and void. On March 14, 2000, Mr. Lirio again spoke with Mr. Laxton by telephone. Later that day, Mr. Laxton renewed Respondent's counter-offer in an e-mail to Mr. Lirio. Mr. Lirio replied by e-mail, indicating that Interep would agree to pay Respondent only for its out-of-pocket expenses in consideration for the assignment of the <e-radio.com> to Interep. 

5.6 Just as was found by another WIPO Administrative Panel convened to resolve a dispute concerning the <musicweb> domain pursuant to the Rules, Respondent's conduct and statements to Interep representatives establish that Respondent registered and uses the <e-radio.com> domain name in bad faith. See Ellenbogen v. Pearson, WIPO Domain Name Dispute Case D2000-0001 (concluding that evidence that (i) respondent's only purpose in registering the <musicweb.com> domain name was to sell the domain for profit, and (ii) there was no actual or intended use of the domain name were "sufficient evidence of registration and use in bad faith within the meaning of paragraph 4 of the Policy and applicable legal principles"). 

B. Respondent
5.7 Respondent TSC, formerly North Bay Search, Inc., was first incorporated in the State of California on June 15, 1984. Its primary business is technical staffing: TSC acts as an information hub, providing two way information regarding the technical staffing needs of businesses and the availability of jobs for technically trained individuals. In 1996 and 1997, TSC anticipated the opportunities available on the internet for disseminating employment opportunities and matching prospective employees with prospective employers. Accordingly, the company spent over two years developing a resume and corporate tracking database system, which it currently uses and which it has licensed to one other company. In the same time period, company principals came to fully appreciate the importance of website recognition and of protecting a domain name by obtaining conceptually and linguistically related URLs that forward users to its primary website. To that end, TSC and its sister companies, skilltrack.com, inc., eCom Corporation, and Techs.com, Inc., sought and obtained registration for a number of domain names that bear an intuitively obvious connection to the business of technical staffing. The purpose, as intimated above, was to carve out a kind of cyber turf in which to launch its interactive job board website and then to surround it with related domain names. This would provide the twofold advantage of protecting it from encroachment and enhancing its accessibility and influence by directing end users its own job board whenever the users typed in a URL on the list. Eventually, Techs.com, Inc., launched the job board, supported by several names earlier registered by TSC. 

5.8 On July 17, 1997, TSC registered the domain name e-radio.com. It was contemplated that end users seeking information about technical staffing needs in the radio industry would be pointed to the job board when they typed in the generic e-radio.com. Several other job-specific or business-specific domain names had been included earlier and others were later added by TSC and deployed as pointers to the job board, including, for example, eelectricians.com, and earchitects.com. TSC and its affiliates continue to develop the job board and to add groups of domain names to cover industry-specific inquiries and information posting. The domain name in dispute, e-radio.com, has not yet been included in the domain names used for pointing to the job board. However, this is simply an indication that bulletin board interactivity for the name has not yet been prepared and that Respondent has given priority to other names. Respondent maintains an active interest in the name and is considering several ways it may be affirmatively or passively used in its staffing business to its economic advantage.

5.9 On May 5, 1998, nearly one year after Respondent's registration of the domain name in dispute, Complainant filed an Intent-to-Use application for registration of the E-RADIO service mark. It was not until August 2, 1999, more than two years after Respondent's registration of the domain name, that Complainant first used the mark in connection with services described in the mark registration. Complainant obtained it service mark registration on January 18, 2000. It should be noted that E-RADIO did not even exist when Respondent registered the domain name in dispute. By contrast, when Complainant applied for registration of E-RADIO, the domain name registration was public knowledge, readily available to anyone having even modest internet searching skills.

5.10 Approximately three weeks after obtaining its service mark registration, without ever having had any contact of any kind with Respondent, Victor Lirio of Complainant Interep wrote to Respondent accusing Respondent of violating the Anti-Cybersquatting Consumer Protection Act of 1999 and threatening to commence proceedings to force Respondent to relinquish e-radio.com to Complainant unless Respondent assigned the name to Complainant. Shortly after receipt of the letter from Mr. Lirio, Respondent's representative, John Laxton, called Mr. Lirio and angrily rebuked Mr. Lirio for his strong arm tactics. Mr. Lirio retreated entirely from his threatening approach and responded with an offer to purchase the domain name. Mr. Laxton responded that the name was not for sale and that he had turned down previous offers. Mr.Lirio prevailed upon Mr. Laxton to consider whether there might be some price for which he would sell the name. Since Mr. Laxton valued, and continues to value, the name highly, he declined to consider a price for the sale of the name at that time.

5.11 On March 3, 2000, Mr. Lirio offered $30,000 for the purchase of e-radio.com. Mr. Laxton addressed the offer with his business colleagues, and after extensive discussion it was decided that the name had a value vastly in excess of the sum offered by Complainant, particularly in view of the generic content of the name. Accordingly, on March 7, 2000, Mr. Laxton responded to Mr.Lirio with a telephone call to convey an offer to sell for $300,000.00 in cash. On the same day, Mr. Lirio countered with an offer to buy for a total amount of $200,000.00 cash, including $100,000.00 cash down payment and $10,000.00 each month for ten months. This was tentatively agreed to by both parties. However, Mr.Lirio shortly thereafter asked whether TSC would take Interep stock in lieu of cash. Mr. Laxton indicated that if TSC were to take Interep stock, it would have to be structured to ensure a total sales value of $300,000.00, comprising $150,000.00 cash and $150,000.00 in stock. He provided Mr.Lirio with a time frame during which the offer would remain open. On March 8, Mr. Lirio inquired in an e-mail whether this was Option B of two options open to him. On March 14, Mr. Laxton confirmed that either of the two options discussed was acceptable; namely, $200,000.00 cash and payment terms or $150,000.00 cash and the same value in stock, and he further requested setting a termination date for the counter-offer. On the same day, March 14, Mr. Lirio wrote back indicating: "Upon further discussions with our attorneys and in view of the ruling in the musicweb.com arbitration, Interep is willing to pay [Technical Staffing] only for [its] out-of-pocket costs associated with the e-radio.com domain name in exchange for the assignment of the domain name to Interep"

5.12 Complainant has alleged that all three criteria under this test have been met in the instant matter, viz., that the e-radio.com domain name registered by Respondent is identical or confusingly similar to the service mark E-RADIO in which Interep has rights; that Respondent has no rights or legitimate interests in respect of the e-radio.com domain name; and that the e-radio.com domain name was registered and is being used in bad faith by Respondent. Complainant has provided evidence to support only the first prong of this test. Not only are the second and third prongs wholly lacking evidentiary support in favor of Complainant, but the evidence supports a finding that TSC has a legitimate interest in e-radio.com and that it has never used the domain name in bad faith.

5.13 Respondent admits that the e-radio.com domain name registered by Respondent is similar to Complainant's purported service mark E-RADIO. As noted, however, Respondent denies that it "has no rights or legitimate interest in respect of the e-radio.com domain name"; and Respondent further denies that it has registered and used the domain name in bad faith.

5.14 Respondent submits that it has significant legitimate interest in the disputed domain name. Respondent registered the e-radio.com domain name on July 17, 1997, along with numerous other domain names, to use in association with Respondent's core business of technical staffing. Complainant has offered no evidence whatsoever to support its claim that Respondent has no legitimate interest in the disputed name other than facts alleged on information and belief. It is conceded that Respondent is not currently using the name on the internet. However, it is not necessary that the name be used in order to have a legitimate interest in the name, and it is inconceivable that the law demands active use on the internet to constitute a legitimate interest. This would entail that any domain name owner that wished to protect a name would have to use all of its variants to ensure that it could maintain its registration. This cannot be the result contemplated under the Policy, and the decisions support this.

5.15 The third element set forth in paragraph 4(a) of the ICANN Policy requires the complainant to prove that the domain name was registered and is being used in bad faith. Paragraph 4(b) of the policy sets forth four examples of circumstances in which the registration and use of a domain name may be found to be in bad faith: (1) the respondent has registered or acquired the domain name primarily for the purpose of selling it to the complainant or to a competitor of the complainant at a profit; (2) the respondent registered the domain name to prevent the complainant from reflecting its trademark in a corresponding domain name and has engaged in a pattern of similar conduct; (3) the respondent registered the domain name primarily to disrupt a competitor's business; and (4) the respondent's use of the domain name intentionally attempts to attract Internet users for commercial gain by creating a likelihood of confusion with the complainant's trademark. As explained by the panelist in Shirmax v. CES. The requirement of bad faith registration and use in paragraph 4(a)(iii) is stated in the conjunctive. Registration in bad faith is insufficient if the respondent does not use the domain name in bad faith, and conversely, use in bad faith is insufficient if the respondent originally registered the domain name for a permissible purpose. The first three examples in paragraph 4(b) all refer to registration for various illegitimate purposes as evidence of registration and use in bad faith; but in each instance bad faith use may well be implicit in the act of registering a domain name, since all of the improper purposes mentioned can be accomplished merely by passively holding a domain name. The Complainant in Shirmax had provided evidence that CES was in the business of registering domain names with the intent of reselling them for a profit. 

5.16 ICANN Rules, para. 15(e) provides, in pertinent part:
"If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
In the instant case, Complainant engaged in a pattern and course of conduct that constitutes a paradigm case of attempted reverse domain name hijacking. It first obtained a service mark registration, after Respondent had registered the domain name. It did so without conducting a routine search that would have revealed the registration, or despite having conducted that search and perhaps knowing of the registration. It finally obtained the registration and immediately thereafter attempted to intimidate Respondent into assigning the e-radio.com domain name before even making an inquiry of Respondent about its interests in the name. When Respondent rebuffed its bullying tactics, it took a more conciliatory approach that looks suspiciously like an attempt at creating the appearance that Respondent sought only to profit from the sale of the domain name. When a final sales price had been agreed upon, it backed out of the agreement and invoked a panel decision that provided no more insight into the present matter than was available under the Anti-Cybersquatting Act itself. It then brought the present Complaint, in which it has made no showing whatsoever of bad faith or of Respondent's lack of legitimate interest in the domain name. 

6. Discussion and Findings
6.1 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.

6.2 The Panel finds that the Complainant has established valid trademark rights pursuant to Rule 4(a)(i). E-RADIO is a registered service mark in the U.S. Patent and Trademark Office and is allegedely in use. The Panel will not evaluate the relative "descriptiveness" of E-RADIO as a service mark and is satisfied that the service mark is registered and apparently fulfills its function as a service mark in the marketplace. Additionally, the service mark and the domain name are identical.

6.3 The panel finds that the record does not indicate any rights or legitimate interests to the domain name by Respondent pursuant to paragraph 4(a)(i). Since Respondent admittedly has not used the domain name, Policy 4(c)(ii) and 4(c)(iii) are inapplicable. In Policy 4(c)(i), Respondent could have proven a "demonstrable preparation to use", but has not done so. The mere allegation that "e-radio.com" may be useful in a possible radio job board is insufficient. Moreover the Panel has indicated that
E-RADIO is a registered service mark thus casting further doubt on this allegation.

6.4 Although the Panel has found that Complainant has satisfied Policy 4(a)(i) and 4(a)(ii), it cannot find bad faith use and registration pursuant to Policy 4(a)(iii) on this record. The fact that Respondent registered its domain name one year before the intent to use application of Complainant was filed and two years before Complainant started using the mark is persuasive to the Panel that none of the bad faith factors in Policy 4(b) apply.

6.5 The final issue before the Panel is Reverse Domain Name Hijacking pursuant to Policy 15(e). On the record before the Panel, the Panel cannot find that the Complaint was brought in bad faith. The Complainant owns a trademark registration and is pursuing a dispute resolution proceeding against an identical domain name. Although the Panel finds that Complainant has not proven its case, it also does not find any Reverse Domain Name Hijacking on the evidence and pleadings submitted. 

7. Decision
7.1 The Panel decides that the domain name "e-radio.com" is identical or confusingly similar to the service mark of Complainant, that Respondent does not have any rights or legitimate interests in such domain name, and that Respondent has not registered or is using the domain name in bad faith. Moreover, the Panel decides that Respondent has not proven that Complainant engaged in Reverse Domain Name Hijacking in violation of Rule 15(e).

7.2 The Panel hereby denies the Complaint.