Generic Top Level Domain Name (gTLD) Decisions

ADMINISTRATIVE PANEL DECISION

1. Parties and Contested Domain Name

The Complainant is Jazid, Inc./Michelle McKinnon (hereinafter referred to as the “Complainant”), with an address at 1342 Washington Avenue, Miami Beach, Florida, 33139 USA. The Complainant’s Prime Contact or Representative is Gabriel Santiago, 323 Elm Street, Hollywood, Florida, 33019, U.S.A. Telephone : (954)-922-2482 Fax; (954)-927-0051; e-mail : gswebsitedesign@aol.com

The respondent is Rennemo Steinar (hereinafter referred to as the “Respondent”), with an address at Waldemar Tranesgt. 17, Oslo, 0171 Norway. Respondent has no Prime Contact or Representative; Telephone 47 23 19 85 19; e-mail : rennemo@online.no

The dispute concerns the domain name “jazid.com” (hereinafter referred to as the Domain Name). The Registrar with whom the Domain Name is registered is Network Solutions Inc. (hereinafter the Registrar).

2. Procedural history

The Complaint submitted by the Complainant was filed on-line through eResolution’s website on April 18, 2001. The hardcopy of the Complaint form and annexes were received on April 19, 2001 by the eResolution Centre (hereinafter the Centre).

Payment was received on April 19, 2001.

Upon receiving all the required information, the Centre then proceeded to:

Confirm the identity of the Registrar for the contested Domain Name;

Verify the Registrar’s Whois Database and confirm all the essential contact information for the Respondent;

Verify whether the contested Domain Name related to an active Web page;

Verify whether the Complaint was administratively compliant.

And the Centre concluded that:

The Registrar is Network Solutions, inc.;

All the required contact information for the Respondent was found in the Whois database;

The contested Domain Name resolved to an inactive Website;

The Complaint is administratively compliant.

By email dated April 19, 2001 the Centre wrote to the Registrar to obtain confirmation and a copy of the Registration Agreement; the requested information was received on April 23, 2001.

The Centre then proceeded to send a copy of the Complaint Form and the required Cover Sheet to the Respondent, in accordance with paragraph 2 (a) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the”Rules”). The Centre fulfilled all of its responsibilities under paragraph 2 (a) by forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on April 19, 2001, this date being the official commencement date of the administrative proceeding.

The Respondent did not submit a response neither via eResolution’s website nor a signed version.

The Centre then contacted Me Hugues G. Richard on May 16, 2001 and invited him to act as Panelist in this case.

On May 17, 2001, Me. Hugues G. Richard accepted to act as Panelist in this case and on the same day filed the necessary Declaration of Independence and Impartiality. The Panel believes it was duly constituted in compliance with the Rules.

On May 17, 2001, a user name and a password was forwarded by the Clerk’s Office to Me Hugues G. Richard, allowing him to access the Complaint Form, the Response Form, and the evidence through the Centre’s Automated Docket Management System.

On May 17, 2001, a notification was sent to the parties that Me Hugues G. Richard had been appointed and that a decision was to be, save exceptional circumstances, handed down on May 31st, 2001.

As the language of the Domain Name Registration is the English language and as the Complainant has filed his complaint in English, the proceeding will be led in English, according to paragraph 11 (a) of the Rules.

3. Factual Backgrounds

The Complainant has indicated that it has been operating a jazz club in Miami Beach, Florida (USA) under the name "JAZID" for over five years.

Pursuant to the research conducted in the WHOIS database proprio motu by the Panel, it appears that the Respondent registered the Domain Name, jazid.com on April 19, 1999 with the Registrar.

On April 14, a third party (Jazid Club and Records, in Norway) to these proceedings, received an e-mail (annex F) from the Complainant’s representative which basically related the message that arbitration proceedings regarding the Domain Name were being arranged and to not accept transfer of the Domain Name until the proceedings were resolved.

On April 15, 2001 the aforementioned third party responded to the Complainant’s representative in an email (annex G-1) which stated that Jazid Club and Records own a registered trademark since 1995, and that the domain name, jazid.com was taken.

On April 18, 2001 the Complainant’s representative received an e-mail (annex E-1) from the Trademark Electronic Application System (TEAS) Service, confirming that it had received the Complainant’s trademark application for the mark, JAZID, and that it had assigned serial number ‘78/058922’ to that application. This e-mail further stated that the Complainant would here from the assigned examining attorney in 4 to 5 months.

4. Parties' Contentions

A. Complainant

With respect to the similarity of the Domain Name, the Complainant alleges that:

The domain name at issue is patently, substantially identical and confusingly similar to that of the corresponding mark of the Complainant's business. The domain name at issue is www.jazid.com. The Complainant's trademark/service mark is "JAZID".

With respect to the grounds of illegitimate use, the Complainant alleges that:

Respondent purchased the domain name on April 19, 1999. At no time since then, has he either possessed a trademark/service mark or a valid interest in the name "JAZID". The Respondent is not commonly known, and never has been identified with the name "JAZID".

Respondent processed an information update to the domain registration record on June 14, 2000. At that time, the domain remained unused and he remained as sole registrant of the domain.

Respondent has possessed the domain name for a period of two years and has not used the domain name in connection with a bona fide offering of goods or services.

The domain name has not, and is not, being used as an active address.

&nb sp; Respondent is not making a legitimate non-commercial or fair use of the domain name.

Respondent's sole purpose for registering the domain name was to profit from its sale or transfer to a third party.

With respect to the element of bad faith, the Complainant alleges that:

Respondent registered the domain name in order to prevent a trademark/service mark from being used in a corresponding domain name.

Respondent admitted to purchasing the domain name "for fun", yet went on to elaborate that he had intended to gain some form of consideration in return for transfer of the domain name.

Respondent confirmed that he had attempted to transfer the name in exchange for consideration from the Norwegian club, but that he had not been successful.

Respondent also acknowledged Complainant having inquired about obtaining the domain name from him in early February of 2000. Respondent admitted replying to Complainant at that time that he was in the process of selling the Domain Name to the Norwegian club.

Consequently, Complainant requests an order for the transfer of the Domain Name registration.

B. Respondent

The Respondent failed to file a timely Response with the Centre (neither electronically or by remittance of a hard copy).

5.1 Discussions and Findings

Pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter the ICANN Policy) the Complainant must convince the panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:

(i) 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

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and is being used by the Respondent in bad faith.

After having reviewed the Complainant's allegations as well as all the evidence provided therewith, the Panel hereinafter considers each of these three elements below.

Prior to analysing each of these three elements, the Panel deems it appropriate to make some preliminary comments.

5.2 General Considerations

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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

The word "and" is a conjunction. Consequently, the Panel shall not decide on a Complaint solely on the basis of the allegations submitted by the parties; nor is it the burden of the Panel to seek further evidence (other than judicial knowledge) to sustain the parties’ allegations, as this may be disruptive of the arbitration process. Therefore, the burden rests on the parties to either support or sustain their allegations with the appropriate documentation whenever possible.

It might be worth mentioning that while the Policy and Rules clearly impose a burden of proof upon the Complainant, in the present matter, the Complainant did not provide any evidence supporting its statements except for e-mail correspondences between the Complainant, the Respondent and a third party (Jazid Club and Records) as well as a confirmation notice (e-mail) from the TEAS. The Panel is of the view that these documents are in themselves not sufficient to sustain any allegation, at least as it relates to rights in a trademark or service mark.

Furthermore, most if not all of the statements made by the Complainant appear on their face to be incomplete and certainly not corroborated by any documentary evidence. Therefore, the Panel has based its decision on the grounds of the supported statements and documents submitted.

5.3 Identity or Confusing Similarity

According to paragraph 4 (a) (i) of the ICANN Policy, the Complainant must prove that the Domain Name is identical or confusingly similar to its trademark, and prove that it has rights in said trademark. From the statements and evidence presented, the Panel finds that the Domain Name jazid.com is identical or confusingly similar to the Complainant’s alleged mark. However, the Complainant has failed to show that it has rights, whether registered or not, in the trademark JAZID.

The Complainant has implied that it is the owner of the trademark/service mark JAZID, but it did not provide the Panel with any kind of evidence whatsoever to sustain that allegation. In fact, the only evidence presented to support the said allegation is a copy of an e-mail sent to the Complainant by TEAS confirming that the administrative procedures concerning the Complainant’s application for the registration of the mark JAZID was underway. This is a self serving document, dated April 18, 2001 which also happens to be the date that the Centre first received the Complaint (via email). The Panel cannot and does not regard this document as satisfactory evidence supporting the allegation that the Complainant has rights in the trademark or service mark JAZID.

On that point, the Complainant does not need to prove rights in a registered trademark, as the Policy does not require that the Complainant must have rights to a "registered" trademark. However, in the absence of a registration, the Complainant has to be able to satisfy the Panel that it has sufficient rights, which would give rise to an action for passing off. See Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235. In that matter, as in the one presently before the Panel, the complainant did not provide any evidence of use of the trademarks nor evidence showing substantial goodwill and reputation as well as secondary association of the trademarks with the complainant. Simply alleging that it operates a jazz club in Miami Beach under the name JAZID is not enough.

Pursuant to the above mentioned reasons, it is the Panel's view that the Complainant did not satisfy the burden imposed upon it to prove 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.

Pursuant to the Rules, which specify that a complainant must cumulatively establish all three elements (rights, illegitimate use, bad faith) to be successful in its complaint. The finding that the Complainant has failed to demonstrate rights in the mark JAZID, alone, is fatal to the Complainant’s case. Consequently, the Panel is not obligated to address the issues of legitimate use and bad faith. Nevertheless, the Panel has decided to address these issues.

5.4 Rights or Legitimate Interests

Paragraph 4 (a) (ii) of the ICANN Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4 (c) of the Policy illustrates how a Respondent can demonstrate rights or interest in the Domain Name at issue. This paragraph sets out three non-exhaustive examples, such as:

(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 organisation) 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 misleading divert consumers or to tarnish the trademark or service mark at issue.

In the case at hand, Complainant alleged that the Respondent was not making legitimate use of the Domain Name. The Complainant did not produce any evidence in support of its claim that the Respondent did not use the Domain Name in connection with a bona fide offering of goods and services. However, as previously indicated in the section entitled “Procedural History”, the Centre did conclude that the contested Domain Name resolved to an inactive website.

Although the Panel is not required to investigate and/or research on its own initiative, it proceeded to verify the Whois database for the relevant information concerning the Domain Name, as well as verify if the Domain Name lead to an active website. The results of this research corroborate the Complainant’s allegations that the Domain Name is not being used in a legitimate manner. In fact, the Respondent has held the Domain Name for more than two (2) years and does not seem to have used it at all.

Furthermore, in this case, as was the case in LLS International vs. MarkFreeman, Wipo Case No.D2000-1080 and Altavista Company v. Grandtotal Finances Ltd., Wipo Case No. D2000-0848, the Panel finds it appropriate in this regard to draw an adverse inference from the Respondent’s failure to reply to the Complaint and detail any legitimate rights or interests it might have had in the Domain Name of the type defined in paragraph 4(c) of the ICANN Policy.

Consequently, the Panel is of the view that the Complainant has satisfied its burden of showing that Respondent did not have any rights or legitimate interests vested in the Domain Name.

5.5 Bad Faith

Pursuant to paragraph 4 (a) (iii) of the ICANN Policy it is incumbent upon the Complainant to prove that the Respondent has registered and is using the Domain Name in bad faith.

Paragraph 4 (b) of the ICANN Policy states:

“For the purposes of Paragraph 4 (a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain 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,

(v) 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.”

There has been absolutely no evidence presented by Complainant before the Panel to show that the Respondent acquired the Domain Name to either sell it or otherwise transfer the registration to the Complainant for a valuable consideration; not only did the Respondent not initiate contact with the Complainant, but more importantly, when contacted by Complainant who wished to obtain the Domain Name from him (February 2000), the Respondent did not attempt to transfer said Domain Name (Complainant’s own admission).

While the Complainant has expressed the view that the Respondent has either tried to prevent the Complainant from reflecting the mark in a corresponding Domain Name, or attempted to disrupt the business of the Complainant, there has been no evidence showing or corroborating these allegations.

As the circumstances referred to above are not exhaustive, and absent evidence of any of the said circumstances, it was still open to the Complainant to show evidence that the Respondent acted in bad faith, due to other circumstances. However, Complainant chose not to do so. It is trite law that bad faith cannot be presumed in the absence of any proof to the contrary. Here again the Complainant has failed.

6. Conclusion

In light of the foregoing, the Administrative Panel therefore concludes that the Complainant has failed to meet its burden as required by all of the three elements, cumulatively, under paragraph 4 (a) of the ICANN Policy.

Accordingly, the remedy sought in the Complaint is denied.

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