Domain Name - Domain Name Dispute Resolution Policy - Identical - Confusingly similar - No rights or legitimate interests - Bad faith registration - Bad faith use - Identity of Respondent - WIPO's authority to administer dispute.

Domain name at issue is "tonsil.com".  Complainant is a large chemical products manufacturer.  Since 1952, Complainant has been producing, selling and marketing bleaching earths and clays under the trademark "Tonsil" and has practically worldwide exclusivity on the designation "tonsil" for use as a trademark. 

Respondent is alleged to be tonsil.com.  Legal status of Respondent tonsil.com is unknown and the Respondent has not asserted that tonsil.com is a person, or is incorporated or registered as a legal entity in any jurisdiction.  Panel is not in a position to ascertain whether or not Respondent exists.  Respondent has not alleged a trademark registration for "tonsil" or "tonsil.com" in the US or in any other jurisdiction.

Ms. Virginia Comito is the Administrative, Technical, Zone and Billing Contact for tonsil.com and uses her name interchangeably with that of the Respondent tonsil.com. Ms. Comito takes a proprietary interest in the domain name and acts as if she was the Respondent and owner of the domain name. Although Ms. Comito and tonsil.com are not one-in-the-same and Ms. Comito cannot be considered as the holder of the domain name tonsil.com, the Panel has agreed to consider Ms. Comito as Respondent.

HELD:  Name Transferred to Complainant

Respondent challenges WIPO's authority to administer this dispute because the Complainant's counsel is listed as a possible WIPO arbitrator. The Panel is of the view that the fact WIPO permits its domain name arbitrators to represent domain name clients is not a grounds for disqualifying WIPO from this proceeding. 

Complainant has provided considerable documentary evidence of the registration of its mark throughout the world, many of which date back well before the internet existed. The Complainant has more than amply demonstrated the worldwide international measures it has taken to protect the word "tonsil" in its favor.  While "Tonsil" signifies a specialized product that might not be known outside certain industrial sectors the mark has commercial value. A simple comparison of the domain name in question (tonsil.com), and the trademark (Tonsil) leaves no doubt that the two are identical or confusingly similar. 

No credible evidence has been submitted by Respondent that the domain name tonsil.com, or a corresponding name, has ever been used in connection with a bona fide offering of goods or services. The inability to view <www.tonsil.com>, and the lack of evidence proving the content of the website prior to notice of the dispute, are among the factors that have led the Panel to this conclusion. The Panel therefore concludes that Respondent has no rights or legitimate interest in respect of the domain name tonsil.com.

Respondent's expressed intent to sell tonsil.com, the lack of transparency in the registration of tonsil.com, the removal of the site for what appears to the Panel to be contradictory pretexts (lack of insurance/decision of refract.com) thereby making it impossible for the Panel to examine the site, allowing the domain names comito.com to be used as a redirect for pornography sites, the professionally obscure manner in which the Response was crafted and the undoubtedly high degree of knowledge and sophistication about internet domain name registration and trademark issues which Respondent possesses, have led the Panel to conclude that the domain name tonsil.com was registered and used in bad faith. 

Cases referred to:
--

Panel Decisions referred to:

ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, ICANN D2000-0034 (WIPO). 

World Wrestling Federation Entertainment, Inc. v. Mathew Bessette, ICANN D2000-0256 (WIPO).
 

Troller, Panelist:

1. The Parties

The Complainant is: 

Süd-Chemie AG, Lenbachplatz 6, 80333 Munich, Germany. 

The Complainant is represented by Torsten Bettinger, Attorney-at-Law, Bettinger & Abel, Bismarkstrasse 2, 80803 Munich, Germany.

The Respondent is:

tonsil.com, P.O. Box 28, San Jose, CA 95124, USA. 

The Respondent's Administrative Contact, Technical Contact, Zone Contact, Billing Contact is: Virginia COMITO, 10339 S. Tantau Ave., Cupertino, CA 95014, USA. The Respondent does not communicate directly with the Center, but through the Administrative Contact. Her address is being used for communications with the Center.

The Administrative Contact has designated Mr. Montgomery Jones, Esq., Law Offices of Jones and Jones, 1340 Munras Ave. Monterey, CA., USA as its authorized representative.
 

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

The Domain Name at issue is "tonsil.com". It is registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, USA.
 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on May 3, 2000. A hard copy was received by the Center on May 4, 2000. Paragraph 6 of the hard copy differs from the e-mail version (see para. 6), noting that "‘tonsil.com' is an unregistered business name of an unidentifiable business entity."

On May 11, 2000 the Registrar, Network Solutions, confirmed that 1) tonsil.com is the current registrant of the tonsil.com domain registration, 2) that the address of the Registrant is tonsil.com, P.O. Box 28, San Jose, CA 95124 USA, 3) that the Administrative Contact, Technical Contact, Zone Contact and Billing Contact is Virginia COMITO, 10339 S. Tantau Ave., Cupertino, CA 95014, USA, with the e-mail address: kikiinternet@hotmail.com, 4)  that Network Solutions' 5.0 
Service Agreement is in effect, and 5) that the domain name tonsil.com is in "active" status.

An Amendment to the Complaint was received by the Center by e-mail on May 11, 2000, and the hard copy of the Amendment was received on May 15, 2000. 

On May 15, 2000 the Center notified the Administrative Contact that the Complaint satisfied the formal requirements of the Policy, Rules and Supplemental Rules; that payment of the required sum had been made by the Complainant; and that an administrative proceeding had been commenced against the Respondent. A deadline of June 3, 2000 was fixed for the Response.

The Administrative Contact acknowledges receiving a postal copy of the Complaint on May 18, 2000. E-mail correspondence between the Administrative Contact and the Center indicates notification of the Complaint on May 15 or 16, 2000.

On May 27, 2000, Counsel for Virginia Comito, the Administrative Contact, requested an extension until June 30, 2000 for filing the Response. The Complainant through Counsel opposed this request. The Center granted the Respondent an extension until June 11, 2000 to file a response. A Response was filed timely on June 9, 2000 wherein the Administrative Contact objected to that 
certain trademark registrations were not translated into English.

On June 19, 2000 the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Kamen Troller, had been appointed. The Center further notified the Parties that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. Absent exceptional circumstances, the Panelist was required to forward its decision to the Center in accordance with Paragraph 15 of the Rules by July 3, 2000. 

On June 19, 2000, counsel for the Complainant submitted additional documents to the Panel, with a copy by courier to Mr. Montgomery Jones, Esq., of the Law Offices of Jones and Jones, the authorized representative of Ms. Comito.

On June 21, 2000, Ms. Virginia Comito made a second lengthy submission wherein she challenged the authority of WIPO to administer this matter based on the fact that the Complainant's attorney has agreed to serve as a domain name arbitrator, and complained that she did not personally receive copies of the certain exhibits, and complained again about receiving untranslated trademark registrations.

The Panelist examined all notifications of the Center, and the Complaint, and finds that they comply with the formal requirements of the Rules and Supplemental Rules. It further finds that the Center has adhered to the Policy, Rules and Supplemental Rules throughout this proceeding, and that the Administrative Panel was properly constituted. 

The Panelist examined the Response and finds that it does not comply with Paragraph 10(b) of the Supplemental Rules. Therefore the Response is not in compliance with the requirements of paragraph 5(b)(i) of the Rules for Uniform Domain Name Dispute Resolution Policy. The Panel examined the second submission of the Respondent and finds that it is also not in compliance with the Rules. These deficiencies are discussed in Section 6.
 

4. Factual Background

The Complainant is a large chemical products manufacturer organized under the laws of Germany. Since 1952 the Complainant has been producing, selling and marketing bleaching earths and clays under the trademark "Tonsil". 1999 sales of "Tonsil" exceeded DM 50 million.

The Claimant has provided documentary evidence of the following trademark registrations/renewals:

"Tonsil" -- Trademark Reg. No. 630 264, German Patent Office (November 22, 1952);

"Tonsil" -- Reg. No 320 548 International Trademark Registration (September 15, 1966); (indicating a previous international registration on February 4, 1953 -- No. 166 871) (renewed September 15, 1986/WIPO October 15, 1986: Austria, Belgium, Luxembourg, Netherlands, Egypt, Spain, France, Hungary, Italy, Morocco, Portugal, Romania, Switzerland, Czechoslovakia, Tunisia, Yugoslavia);

"Tonsil" -- Reg. No. 606 135 International Trademark Registration (August 17, 1993); (WIPO, October 20, 1993) (Belarus, Bulgaria, China, Cuba, Russian Federation, Kazakhstan, Mongolia, Poland, North Korea, Ukraine, Vietnam);

"TONSIL" with device "S Sud Chemie" Reg. No. 747,435 United States Patent Office, Principal Register Trademark (April 2, 1963), noting that the first use of the product was 1938 and that it was put into commerce in 1938 (renewed March 22, 1983).

The Complainant also asserts trademark protection for the word "tonsil" in many other jurisdictions giving it practically worldwide exclusivity on the designation "tonsil" for use as a trademark. Documentary proof of these registrations was notified to the Panel on June 19, 2000. 

The Respondent is alleged to be tonsil.com. The legal status of the Respondent tonsil.com is unknown. The Respondent has not asserted that tonsil.com is a person, or is incorporated or registered as a legal entity in any jurisdiction. Therefore, the Panel is not in a position to ascertain whether or not the Respondent exists. 

Ms. Virginia Comito, the Administrative Contact, uses her name interchangeably with that of the Respondent tonsil.com in the Response (paras 17, 18 and 24), and acts as if she was the Respondent and owner of the domain name. However, in an e-mail dated December 8, 1999 (the night of December 7, 1999), Virginia Comito affirms that another person has the power to decide about the sale of the domain name (Complainant's Annex E).

The Respondent has not alleged a trademark registration for "tonsil" or "tonsil.com" in the US or in any other jurisdiction.
 

5. Parties' Contentions

The Complainant asserts that: (1) The domain name tonsil.com is identical or confusingly similar to the trademark "Tonsil" in which the Complainant has world-wide exclusive rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and that (3) the domain name was registered and is being used in bad faith. 

The Complainant further asserts that the term "Tonsil" is an invented word that has no meaning or significance other than to identify and distinguish its products from those of competitors; and that as an invented word "Tonsil" is not a word traders would legitimately use except to create an association with the Complainant. 

The Complainant requests the Administrative Panel to issue a decision that the domain name tonsil.com be transferred to the Complainant. 

Virginia Comito asserts that: (1) Tonsil and tonsil.com are not identical or confusingly similar; (2) the Respondent has rights and a legitimate interest in the domain name; and that (3) the domain was not registered and used in bad faith.

Virginia Comito further alleges that the Complainant has submitted false and misleading evidence, acted in bad faith by raising arguments it knew were untrue, harassed herself, interfered with her business relationships, succeeded in shutting down her website by its actions thereby damaging her personal and business interests, and deprived her of the use of tonsil.com. 

Virginia Comito requests that the Administrative Panel deny the remedies requested by the Complainant, and that it makes a finding of "reverse domain name hijacking".
 

6. Discussion and Findings

A) Procedural Matters

The Panel has examined the Response which exceeds 5,000 words (approximately 13'000 words). The Panel therefore finds that it does not comply with Paragraph 10(b) of the Supplemental Rules. As a result, the Response is not in compliance with the requirements of paragraph 5(b)(i) of the Rules for Uniform Domain Name Dispute Resolution Policy. However, the Panel is given wide discretion by the Rules in such cases. The Panel notes that it has an obligation to ensure that 
each party is given a fair opportunity to present its case (Rule 10(b)), and that it has the discretion to determine the admissibility of the evidence (Rule 10(c)).

The Panel further notes that it has also received numerous additional exhibits from the Complainant, as well as a lengthy supplemental statement from Ms. Virginia Comito. Neither were requested by the Panel pursuant to Rule 12. 

Mindful of the fact that Ms. Comito asserts that she was not assisted by counsel (but very sceptical that this is indeed the case), and intent upon assuring that each Party is given a fair opportunity to present its case, the Panel has decided to accept all submissions. 

With respect to the procedural objections raised by Ms. Comito (section 3), and to the extent permitted by the Policy and Rules, the Panel makes the following determinations: 

a)     In her second submission, Ms. Comito challenges WIPO's authority to administer this dispute because the Complainant's counsel is listed as a possible WIPO arbitrator. The Panel is of the view that the fact WIPO permits its domain name arbitrators to represent domain name clients is not a grounds for disqualifying WIPO from this proceeding. It would be most unusual if WIPO were to prohibit domain name arbitrators, experts in their fields, from representing clients in domain name proceedings.

b) In its first submission Ms. Comito objects to the Complainant's submission of untranslated trademark information. The signed Registration Agreement was not produced by Ms. Comito. However, the Registrar has affirmed that Network Solutions' 5.0 Service Agreement is in effect. A Model Network Solutions Service Agreement Version Number 5.0 was produced by the Complainant as Annex B. The Panel notes that the Model Agreement is in English and that the Parties have made their submissions in English. Based on these facts, the Panel concludes pursuant to Rule 11 that the language of the proceedings is English. The Panel further concludes that the Complainant was not obligated to translate foreign trademark registrations into English. Rule 11 vests the Panel with the authority to determine which documents must be translated into English. The Panel sees no point in requiring the translation of foreign trademark registrations into English - the essential elements (the mark, the dates, the country concerned and the registration numbers) are easily understandable.

c) Ms. Comito objects to the fact that she was not personally served with copies of the Complainant's second package of exhibits. Ms. Comito has not disputed the fact that these exhibits were delivered by courier, as state in the Complainant's letter June 19, 2000, to her authorized representative in accordance with paragraph 5 of the Response. Given the designation by Ms. Comito of an authorized representative, and the importance that she has placed in the participation of counsel, the Panel finds that service of these supplemental exhibits to counsel is sufficient. 

B) Substantive Matters

1. Identity of Respondent

1.1. Tonsil.com

As in other recent WIPO domain name arbitration cases there is an essential confusion as to the identity of the Respondent 1. This is due in great part to the acceptance of "tonsil.com" as the Registrant by the Registrar Network Solutions, Inc. 

Such acceptance is not only in contradiction with the rules (pursuant to paragraph 1 of the Rules, the Respondent "means the holder of a domain-name registration against which a complaint is initiated"), but also with NSI's own definition of a Registrant ("Registrant: The individual or organization that registers a specific domain name with Network Solutions. This individual or 
organization holds the right to use that specific domain name for a specified period of time…….This person or organization is the legal entity bound by the terms of the Service Agreement" - v. www.networksolutions.com/cgi-bin/glossary/lookup?term=Registrant). It results 
from the above that in order to be capable of holding a domain name, the holder must exist. Ms. Comito and her counsel have not put forward the slightest indication of the existence of a person or a legal entity named tonsil.com or corresponding to such name. They have not asserted that tonsil.com is a person, or is incorporated or registered as a legal entity in any jurisdiction. Therefore, the Panel concludes that NSI has accepted a non-existent party as a Registrant and that the WIPO Arbitration and Mediation Center has admitted a non-existent party as Respondent.

Notwithstanding the above, the Panel has taken into consideration that the Domain Name Dispute Policy and Rules are intended to grant easy and inexpensive access to an administrative decision for any party involved in a domain name dispute, and that the Policy and Rules contain few procedural requirements, but the Panel has also noted that paragraph 15(a) of the Rules vests the Panel with the authority to decide a complaint based on "any rules and principles of law that it deems applicable." The Panel has therefore decided not to apply certain basic procedural and juridical rules (general principles of law) like e.g. the principle that the real party in interest must be identified to the tribunal and finds that the present proceedings are valid.

1.2. Virginia Comito

Other than the Complainant, and Complainant's counsel, Ms. Virginia Comito is the sole real person (together with her legal counsel) who is appearing in the present proceeding. 

The Panel notes that Ms. Virginia Comito is the Administrative Contact, Technical Contact, Zone Contact and Billing Contact for tonsil.com. The Panel also notes that Ms. Comito uses her name interchangeably with that of the Respondent tonsil.com in the Response (paras 1, 3, 4, 6, 7, 13, 17, 18, 19, 20, 22, 24, 25 and 29). The Panel further notes that the Registrar accepted the registration of tonsil.com, with the designation of Ms. Comito as the appropriate contact for all business matters, and that after inspection of the Registrar's certification, WIPO certified that the Complaint satisfies its formal requirements. 

Throughout the response, Ms. Comito does not act merely as the Administrative Contact (which she did in the first contacts with WIPO when she declared that she would "accept the complaint" at her personal address (e-mail of May 15, 2000 from Ms. Comito to WIPO), but instead takes a proprietary interest in the domain name. If it is indeed Ms. Comito's legal argument is that she is tonsil.com, it is not reconcilable with her December 8, 1999 statement (Claimant's exhibit E) that she must forward an offer "to the appropriate person who will make the decision". The identity of this third party, if he or she or it exists, remains a mystery. 

For the reasons set forth above, the Panel concludes that Virginia Comito and tonsil.com are not one-in-the-same and that therefore Virginia Comito cannot be considered as the holder of the domain name tonsil.com. This notwithstanding, the Panel has agreed to consider Virginia Comito as Respondent.

2. The Merits

Pursuant to paragraph 4(a), Sud-Chemie AG as Complainant must prove that each of the following three elements are present if it is to prevail:

(i) The Respondent's "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;" and

(ii) The 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."

a. Identical or confusingly similar

The Complainant asserts that the domain name tonsil.com is identical or confusingly similar to the trademark "Tonsil" which it has registered in many jurisdictions. 

The Complainant has provided considerable documentary evidence of the registration of its mark throughout the world. In the vast majority of instances it is the word "tonsil" that has been registered. Many of these registrations date back well before the internet existed. The Respondent is, however, correct to point out that in the US the word "TONSIL" was trademarked in combination with the device "S Sud Chemie" - however, even in the USA, the word tonsil constitutes the main distinctive element of the combined mark. The Complainant has more than amply demonstrated the worldwide international measures it has taken to protect the word "tonsil" in its favor. 

The Panel is aware that "Tonsil" signifies a specialized product that might not be known outside certain industrial sectors. Nevertheless, this trademark is: 1) very well protected internationally, 2) has long been well protected in favor of the Complainant and its subsidiaries, and 3) is associated with very significant annual product sales. In other words, the commercial value of the trademark 
"Tonsil" is established. A simple comparison of the domain name in question (tonsil.com), and the trademark (Tonsil) leaves no doubt that the two are identical or confusingly similar. Com is a TLD with global significance. Claimant has acquired global rights in the trademark tonsil. Claimant's rights are many years older than the domain name. The Panel therefore concludes that the domain name is identical or confusingly similar to a trademark or service mark in which the Claimant has prior exclusive rights. 

b. Rights or legitimate interests (paragraph 4(a)(ii))

Paragraph 4(c) of the Policy defines the circumstances required for the Respondent to demonstrate "rights to and a legitimate interest in the domain name". The Respondent is only required to demonstrate any one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Before examining each of these alternatives, it is necessary to set forth-certain important facts. these facts will form the basis of the Panel's decision with respect paragraph 4(a)(ii) and in particular paragraph 4(a)(iii) of the Policy, and are to be regarded as findings to the extent appropriate. 

Almost one year before the domain name in question was registered, well-informed comments on the relationship between domain names and trademarks were offered by Ms. Virginia Comito on a bulletin board of the US National Telecommunications and Information Administration (NTIA). These comments, made January 31, 1998, can be found at: <www.ntia.doc.gov/ntiahome/domainname/130dftmail/01_31_98.htm>. 

In these comments Ms. Comito demonstrates a recognition of the economic potential that can flow from the domain name registration of trademarked terms. She also demonstrates considerable knowledge of the legal complications that can arise, and advocates "a limit that an individual may legally charge for a trademarked company wanting a domain." [sic] 

The domain name tonsil.com was subsequently registered on November 18, 1998. Ms. Virginia Comito (the Administrative Contact) alleges that the tonsil.com website went online from December 3, 1998 (para. 17). However there is no credible evidence in the record supporting use of the domain name.

Respondent's Annex P purports to be a three page extract from this site, but the exhibit does not include a date or URL, so it is not possible to know from this exhibit when or if the site ever went on line, and whether at all this exhibit reflects the site as alleged by Ms. Comito.

The Respondent offers a letter, not on letterhead, that purports to be from Mr. Nicholas W. Blasgen (Ex. F1), purportedly the Co-Founder and CEO of Refract, LLC. Since November 18, 1998, Refract is allegedly the host provider for the web address Tonsil.com. This letter supposedly comments on the use of the website.

Other than the statements of Ms. Comito, Mr. Blasgen's letter constitutes the sole element indicating the existence and the use of a website under the domain name tonsil.com. Considering that Ms. Comito is very knowledgeable about IP rights and their value, and that she has submitted extensive, and in the Panel's view excessive pleadings accompanied by many exhibits, and that she has conducted extensive trademark searches, in other words, considering that she has made abundant use of a variety of procedural means, the Panel would have expected her to present what she or her counsel must have known was an important document in a form which would have had probative value. This document should have been presented on the letterhead of Mr. Blasgen's company, notarized, or in the form of an affidavit.

Had this document been submitted in one of those forms, the Panel might have been inclined to accord it probative value. In its present form, pursuant to the authority conferred upon it by Rule 10(d), the Panel finds that this letter is without probative value, and that therefore Ms. Comito has not proven any use whatsoever of the domain name of her alleged website. 

The Panel sought to visit the website tonsil.com on several occasions but the site was not connected. This hindered the work of the Panel greatly. The Panel finds that, given the number of health-related sites on the internet, the reason propounded in paragraph 19 by Ms. Comito for removing her site (impossibility of finding insurance in the US) constitute a pretext. This conclusion is strongly bolstered by Ms. Comito's decision to provide a second and contradictory 
explanation for disconnecting the site - removal of the site by decision of the host provider (para. 30). The Panel is unsure which explanation, if either, is correct, and as a result has chosen to disregard both of them. It therefore considers that Ms. Comito has not proffered any valid reason which might justify the removal of her website.

Ms. Virginia Comito is also listed as the Administrative Contact for "comito.com" which when viewed by the Panel was found to be a redirect to various pornography sites. The domain server is again that of refract.com, whose co-founder allegedly submitted a letter to the Panel. Ms. Comito's willingness to have her personal website used as a redirect for pornography, and refract.com's involvement in this redirect, have not strengthened Ms. Comito's case in the eyes of the Panel.

Turning specifically to paragraph 4(c)(i) of the Policy, no credible evidence has been submitted by Ms. Comito that the domain name tonsil.com, or a corresponding name, has ever been used in connection with a bona fide offering of goods or services. The inability to view <www.tonsil.com>, and the lack of evidence proving the content of the website prior to notice of the dispute, are among the factors that have led the Panel to this conclusion.

With respect to paragraph 4(c)(ii), no credible evidence has been offered that tonsil.com, or Ms. Virginia Comito, have been commonly known by the domain name tonsil.com. No evidence of use of the domain name or of trademarks or service marks bearing the same designation has been introduced by Ms. Comito in support of its case.

A similar conclusion is reached pursuant to paragraph 4(c)(iii). Ms. Comito's failure to submit credible information concerning the past and present content of the website makes it impossible for the Panel to rule that she has made a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or 
service mark at issue.

Furthermore, the question of diversion remains unanswered. There is evidence in the record demonstrating diversion (Claimant's exhibits E, F, G and H), but it remains unclear whether the Claimant bears any responsibility for such diversion. The Panel cannot admit the authenticity of the letter purportedly from refract.com (Ex. F1).

c. Bad faith (paragraph 4 (a)(iii))

Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances which shall be evidence that the registration and use of a domain name is in bad faith:
 
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Paragraph 4(b)(i) is particularly relevant to this inquiry given that there is evidence in the Response (paras. 25, 30), and in the Complainant's submission (Annex D), that Ms. Comito was willing to entertain the possible sale of the domain name tonsil.com. Furthermore, by (apparently) choosing not to reply to the Complainant's overture of an offer of US $ 100-200 for the name tonsil.com, Ms. Comito made it clear that she wanted more than out-of-pockets costs to sell the rights to the domain name.

These facts alone, however, are not sufficient to base a finding of bad faith. The Panel however has chosen to place considerable probative value on the statement by Ms. Virginia Comito to the National Telecommunications and Information Administration (www.ntia.doc.gov/ntiahome/domainname/130dftmail/01_31_98.htm) made prior to the registration of tonsil.com. This statement demonstrates a sophisticated knowledge of the commercial value that can accrue from the registration of other people's trademarked terms as domain names, and that therefore it is most probable that Ms Comito intended to sell the domain name for a substantial price, reflecting the value it must have for the Claimant.

Furthermore, the Panel notes that the criteria for finding bad faith set forth in paragraph 4(b) of the Policy are not exclusive. The Panel observes that the Complainant alleges that it was unsuccessful in its attempt to contact the Respondent by using the contact details in the Registrar's registry. Specifically Complainant states that address and the telephone numbers were for a person unassociated with Ms. Comito (para 11). Ms. Comito has herself acknowledged that the mailing address given was not her own (para. 25). 

The Panel also notes that pursuant to the Service Agreement the Registrant (Ms. Comito) was obligated to: "(1) provide certain current, complete and accurate information about you as required by the application process; and (2) maintain and update this information as needed to keep it current, complete and accurate". The registration information should have been updated with each 
change of the Registrant's address (Respondent's para. 25). The Panel is of the opinion that Ms. Comito failed to fulfil these obligations, making it thus difficult for third parties to contact her.

The mystery as to the identity of tonsil.com, and the failure of tonsil.com, Ms. Comito, or some unknown third party, to abide by the provisions of the Service Agreement, including the provision of current, complete, accurate and updated information about tonsil.com strengthen the Panel's conclusion that Ms. Comito and/or any other party involved acted in bad faith. 

Furthermore, notwithstanding the fact that Ms. Comito purported to be only a nurse and therefore not in a position to defend herself properly in the present proceeding, the professionally obscure manner in which the Response was crafted, suggests an extremely high degree of knowledge and sophistication about internet domain name registration and trademark issues. 

Claimant had alleged that Ms. Comito had asked USD 250'000 for tonsil.com. The Panel has chosen to disregard the June 16, 2000 letter and allegations of Gerardo Feldhaus Hermann that he saw the domain name tonsil.com for sale on an auction site for USD 250'000. The URL of this auction site was not provided, nor was a print-out of the relevant webpage. The absence of any supporting information or a sworn affidavit has resulted in the Panel's decision not to attribute evidentiary value to Mr. Hermann's statement. 

In conclusion, and to reiterate:

- Ms. Comito's expressed intent to sell tonsil.com

- the lack of transparency in the registration of tonsil.com, 

- the removal of the site for what appears to the Panel to be contradictory pretexts (lack of insurance/decision of refract.com) thereby making it impossible for the Panel to examine the site,

- allowing the domain names comito.com to be used as a redirect for pornography sites, 

- the professionally obscure manner in which the Response was crafted

- the undoubtedly high degree of knowledge and sophistication about internet domain name registration and trademark issues which Ms. Comito possesses,

- have led the Panel to conclude that the domain name tonsil.com was registered and used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
 

7. Reverse Domain Name Hijacking

The Complainant proved all three elements set forth in paragraph 4(a) of the Policy. The Complainant therefore did not act in bad faith by bringing its Complaint. A ruling on the Respondent's claim of reverse domain name hijacking is inappropriate.
 

8. Decision

The Panel decides that:

1) the domain name tonsil.com is confusingly similar to the trademark "Tonsil";

2) Ms. Comito has no rights or legitimate interest in respect of the domain name tonsil.com;

3) the domain name tonsil.com has been used in bad faith by Ms. Comito. 

Pursuant to paragraph 4(i) of the Policy and pursuant to paragraph 15 of the Rules, the Panel requires that the Registrar, Network Solutions, Inc., transfer the name tonsil.com to the Complainant.

Dr. Kamen Troller
Sole Panelist
Dated: July 3, 2000

Footnotes:

1. ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002 (Case No. D2000-0034) and World Wrestling Federation Entertainment, Inc. v. Mathew Bessette (Case No. D2000-0256).