Domain name - Domain name dispute resolution policy -  Confusingly similar - Bad faith registration - Inaction can constitute bad faith - Examples of bad faith registration in policy are illustrative not conclusive.

The domain name at issue is <symplicity.com>. Complainant, Symplicity Corporation, of the United States, has used the trade name and common law trademark "symplicity" since early 1995.

On February 14, 1997 Respondent, Bob Gately, also of the United States, reportedly convinced the then registrant of the domain name <symplicity.com> to transfer that registration to him. However Respondent failed to pay the prior registrant, a domain name warehouse, the agreed price, and Respondent has had no further contact with the prior registrant. An employee of the prior registrant is currently listed as the administrative, technical, billing, and zone contact for the domain name at issue. 

Held, Name Transferred to Complainant.

The Panel found that Complainant had sufficiently proven the first two requirements of the policy, namely that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and that Respondent has no legitimate interests in respect of the domain name.

However, there was issue with the third requirement, that the domain name was registered and being used in bad faith. The panel noted that the Complainant's allegations failed to come within any of the four examples of bad faith registration and use set out in Paragraph 4(b) of the Policy.

These examples are intended to be illustrative, rather than exclusive, and the Panel points out that "inaction" can constitute bad faith.

The Panel finds that the following examples constitute inaction and therefore bad faith on behalf of Respondent. First, Respondent gave no updated information as to where he may be reached, and failed to advise the Administrative, Technical, Zone and Billing Contact where Respondent could be located. Second, Respondent failed to communicate at all with the Administrative, Technical, Zone, and Billing Contact. Third, Respondent failed to respond to letters from Complainant. Fourth, Respondent failed to object to the use of the domain name at issue by a third party to resolve to a commercial web site; and fifth, Respondent failed to respond to the Complaint at issue or to deny any of its allegations.
 

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Registration Agreements referred to
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Cases referred to
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Panel Decisions referred to
Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-007.
Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.
Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021.
Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055.
Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042.
Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd., WIPO Case No. D2000-0086.
Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172.
Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110.
Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090.
Stralfors AB v. P D S AB, WIPO Case No. D2000-0112.
InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.
 

Donahey, Panelist:

1.The Parties

The Complainant is Symplicity Corporation, a corporation organized under the laws of the State of Illinois, United States of America, having its principal place of business at 17890 West Dixie Hwy., Suite 606, Miami Beach, Florida, United States of America. 

The Respondent is Bob Gately, an individual having an address at 1417 N. 33rd, Springfield, Oregon, United States of America. 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is <symplicity.com>, which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.

3. Procedural History

A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 12, 2000, and the signed original together with four copies was received on May 16, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated May 22, 2000. 

On May 16, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: 

(1) confirm that the domain name at in issue is registered with NSI; 

(2) confirm that the person identified as the Respondent is the current registrant 

of the domain name; 

(3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar's Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; 

(4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect;

(5) indicate the current status of the domain name. 

On May 19, 2000, NSI confirmed by reply e-mail that the domain name <symplicity.com> is registered with NSI, is currently in active status, and that the Respondent, Bob Gately, is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect. 

WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant. 

No formal deficiencies having been recorded, on May 22, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of June 10, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI's confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." 

On June 14, 2000, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.

On June 22, 2000, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist. The Notification of Appointment of Administrative Panel and Projected Decision Date was communicated to the parties on June22, 2000, setting a projected decision date of July 6, 2000. This deadline was subsequently extended to July 12, 2000.

4. Factual Background

Complainant has used the trade name and common law trademark "symplicity" since early 1995.

On January 20, 2000, Complainant filed an application with the United States Patent and Trademark Office to register as a trademark the mark "symplicity " for use in connection with printed matter, namely books containing college and company profiles for high school and college students.

According to its calculations, Complainant services are used on an annual basis by over 500,000 students at over 120 universities throughout the United States.

On February 14, 1997, Respondent reportedly convinced the then registrant of the domain name <symplicity.com> to transfer that registration to him. However Respondent failed to pay the prior registrant, a domain name warehouse, the agreed price, and Respondent has had no further contact with the prior registrant. An employee of the prior registrant is currently listed as the administrative, technical, billing, and zone contact for the domain name at issue. 

In December 1998, Complainant attempted to register the domain name at issue and found that it had already been registered. Complainant contacted the administrative contact. Since the prior registrant had never received payment from Respondent and had not had communications with Respondent for over a year, Complainant agreed to sell the domain name at issue to Complainant. Complainant has since established a web site using <symplicity.com> and has a continuous online presence. Complainant has since paid the registration and renewal fees to the registrar.

Complainant wishes to relocate its web site to a new server, but the registrar will not permit such relocation absent a Registrant Name Change transfer form executed by Respondent. Complainant has attempted to locate Respondent, but, despite diligent efforts, has been unable to do so.

5. Parties' Contentions

Complainant contends that Respondent has registered as a domain name a mark which is identical to the mark registration for which Complainant has applied and which is in continuous use by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

Respondent has not contested the allegations of the Complaint.

6.  Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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." 

Since both the Complainant and Respondent are domiciled in the United States, and since United States' courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. 

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and;

(2) that the Respondent has no legitimate interests in respect of the domain name, and;

(3) the domain name has been registered and is being used in bad faith.

It is clear that the domain name at issue <symplicity.com> is identical to the mark in which the Complainant has common law rights acquired through use and for which Complainant has applied for registration with the United States Patent and Trademark Office 1.

Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.

Complainant's allegations fail to come within any of the four examples of bad faith registration and use set out in Paragraph 4(b) of the Policy.

However, the Examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In Telstra it was established that "inaction" can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd., WIPO Case No. D2000-0086; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.

Telstra established that whether "inaction" could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.

In this case, the Panel finds that where:

(1) the Respondent gave no updated information as to where he may be reached, and failed to advise the Administrative, Technical, Zone and Billing Contact where Respondent could be located;

(2) Respondent failed to communicate at all with the Administrative, Technical, Zone, and Billing Contact;

(3) Respondent failed to respond to letters from Complainant;

(4) Respondent failed to object to the use of the domain name at issue by a third party to resolve to a commercial web site; and

(5) Respondent failed to respond to the Complaint at issue or to deny any of its allegations, that Respondent's inaction constitutes bad faith registration and use of the domain name at issue.

 
7.  Decision

For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4,i of the Policy, the Panel requires that the registration of the domain name <symplicity.com> be transferred to the Complainant.
 

Footnotes:
1. Actual registration is not required to establish ownership rights in a mark; use, rather than registration, is the determining factor. Bennett Coleman & Co. Ltd v. Lalwani and Long Distance Telephone Company, ICANN Case No. D2000-0014 and 0015); 3636275 Canada, dba eResolution v. eResolution.com, ICANN Case No. D2000-0110.