WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Talk City, Inc. v. Michael Robertson
Case Number D2000-0009
The Domain Name
This dispute concerns the domain name . The registrar for this domain name is Network Solutions, Inc.
The Parties
The Complainant is Talk City, Inc., 307 Orchard City Drive, Suite 350, Campbell, CA 95008 ("Talk City"). Talk City operates the virtual community located at and owns a United States trademark registration for TALK CITY for the following computer services: "providing on-line facilities for real-time interaction with other computer users concerning topics of general interest; and providing an on-line bulletin board in the fields of consumer education and business topics." According to NSI�s WHOIS database, Talk City also owns, among others, the domain names , , , images-, , images-. Talk City does not own the domain name ; that domain name is registered to Domains EO.
The respondent is Michael Robertson, P.O. Box 910091, San Diego, CA 92191. According to the Complaint, Mr. Robertson is the Chief Executive Officer of MP3.com, Inc. The MP3.com website states that it is "the premier Music Service Provider (MSP) allowing consumers to instantly discover, purchase, listen to, store and organize their music collection from anywhere, at any time, using any Internet device."
Factual Allegations from the Complaint
In its complaint, Talk City asserts that it has used the TALK CITY trademark since April 1996 and has developed substantial fame in that mark.
In October 1997, Mr. Robertson registered the domain name . At or about the same time, Mr. Robertson registered the domain names , , and . Talk City asserts that each of these domain names contains a well-known trademark of an Internet company, and that Mr. Robertson registered these names to misdirect Internet traffic to his company�s MP3.com website. The complaint further claims that Mr. Robertson has not used the domain name in connection with a bona fide offering of goods or services and is not making any legitimate noncommercial or fair use of the domain name.
Attached to the complaint are two letters Talk City�s counsel sent to Mr. Robertson objecting to his registration of the domain name. Although no written response appears in the record, Mr. Robertson apparently replied (through counsel) that he would not transfer the domain name to Talk City absent a payment by Talk City.
Procedural History
After determining that Talk City�s complaint met the relevant procedural requirements, the WIPO Arbitration and Mediation Center (the "Center") commenced this proceeding on January 26, 2000. The Center transmitted the complaint to Mr. Robertson and his counsel at Cooley Godward LLP by mail, facsimile and e-mail, and informed them that a response was due by February 14, 2000. When Mr. Robertson failed to respond by the deadline, the Center issued a Notification of Default on February 15, 2000. On February 16, 2000, the Center appointed David H. Bernstein of Debevoise & Plimpton as the Panelist in this matter.
In response to the appointment of the Panel, Respondent (through an in-house lawyer at MP3.com, Inc.) sent an e-mail to the Center the evening of February 16, 2000. The e-mail stated that, since receipt of the complaint, Respondent had attempted to resolve this dispute amicably by offering to transfer the domain name to Talk City, but that Talk City refused to settle the dispute unless Mr. Robertson would agree to reimburse Talk City for its fees and costs. In light of these facts, Respondent asserted, the proceeding should be terminated under Rule 15(e) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") because Talk City brought the proceeding in bad faith simply to harass Mr. Robertson. The e-mail concluded by reiterating that Mr. Robertson was "ready, willing and able to transfer the Domain Name in question directly to Talk City." The following day, in response to Respondent�s February 16 e-mail, Talk City stated that it took "strong exception" to the "mischaracterization[s]" in Respondent�s e-mail.
On February 28, 2000, Respondent (this time through his outside counsel, Cooley Godward LLP), submitted a "Request for Termination of Proceedings and to Set Aside Default." The Request stated that Respondent had taken steps to transfer the domain name "" [sic] to Talk City, and therefore that this proceeding should be terminated pursuant to Rule 17(b) because it now is unnecessary to continue the proceeding. In the alternative, Respondent asked that the default be set aside on the ground that his failure to respond was "inadvertent" because "there was some confusion as to the appropriate time and format for which to respond."
Decision
For the reasons stated below, the domain name should be transferred to Talk City.
a. Respondent�s Late Submissions.
Before reaching the merits, the Panel must decide whether to consider Respondent�s February 16, 2000 e-mail and February 28, 2000 Request, both of which were sent after the deadline for response, and what weight to accord them. Under the Rules, this determination is solely within the discretion of the Panel. Rule 10(a), (d). See also WIPO Notification of Complaint and Commencement of Administrative Proceeding ("Notification of Commencement") 6 ("The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so.").
i. The February 16 e-mail.
Because the February 16 e-mail was sent just two days after the deadline and on the same day that the Panel was appointed, and because it was received before the Panel began any substantive review of this matter, it is appropriate to consider the e-mail. In fairness, and to avoid any prejudice, the Panel also has considered Talk City�s February 17 response.
After considering Respondent�s February 16 e-mail, the Panel has concluded that it will not accord any weight to the facts alleged in it. That is because Respondent�s e-mail did not contain any certification that the information contained in the e-mail was, "to the best of Respondent�s knowledge complete and accurate." Rule 5(b)(viii). Without the benefit of this certification, it is not appropriate to accept the factual assertions contained in the e-mail. Although the Panel is granted discretion to consider late responses, it is not granted similar discretion to waive the Rule 5(b)(viii) certification requirement. Moreover, given that we still are in the early stages of the ICANN uniform dispute resolution process, it is arguably even more important than usual to insist on strict compliance with the Rules. Inconsistent approaches to the Rules will only cause a loss in confidence in the Uniform Domain Name Dispute Resolution Policy (the "Policy") and the Rules promulgated by ICANN.
ii. The February 28 Request.
The February 28 Request poses a different issue. This submission was not sent until two weeks after Respondent�s deadline for a response, and on the eve of the deadline for the Panel�s decision (March 1, 2000). See Rule 15(b) (absent extraordinary circumstances, Panel decisions are due within two weeks of the Panel�s appointment). For this reason alone, the Panel would be justified in disregarding this submission.
Moreover, Respondent has shown no entitlement to the requested relief. Respondent�s claim that he "inadvertent[ly]" failed to respond to the complaint rings hollow given that Mr. Robertson clearly received notice and consulted with his counsel prior to the February 14 deadline. Indeed, his counsel�s February 16 e-mail states that, since receipt of the complaint, Respondent had pursued settlement negotiations with Talk City, including on February 8, which shows that Respondent received and began to act on the complaint prior to the deadline. Furthermore, by the time of the February 16 e-mail, Respondent knew he was in default, yet submitted no request for the default to be lifted, either in that e-mail or shortly thereafter. To set aside the default at this time, absent extraordinary, compelling reasons, would be unfair to Talk City, which expects a decision by March 1, and could undermine potential claimants� expectation that resort to the Policy can lead to an expedited resolution of domain name disputes pursuant to the Rules.
Similarly without merit is Respondent�s assertion that he did not respond to the complaint in a timely fashion because "[t]here was some confusion as to the appropriate time and format for which to respond." The Center�s Notification of Commencement, sent both to Respondent and his counsel, clearly stated:
Deadlines. Within 20 calendar days from the day you receive this notification you must submit to the Complainant and to us a Response according to the requirements that are described in the Rules, Paragraph 5 and the Supplemental Rules. The last day for sending your Response to the Complainant and to us is February 14, 2000.
Notification of Commencement 5. The Rules, to which Respondent was referred in the Notification of Commencement, are similarly clear. See Rule 5(a) ("Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider."). Moreover, both Mr. Robertson (CEO of a prominent Internet company) and his outside counsel, Cooley Godward LLP (a well known law firm) are sophisticated parties. For all these reasons, there is no basis to lift the default in this matter.
b. Respondent�s Arguments that the Proceeding Should be Terminated.
In the February 16, 2000 e-mail, Respondent argues that the proceeding should be terminated under Rule 15(e) because Talk City brought the proceeding in bad faith simply to harass Mr. Robertson. The Panel rejects this argument. First, as noted above, no weight is accorded to the factual assertions in the e-mail, and thus there are no facts before the Panel that would justify termination. Second, even if the factual statements in Respondent�s e-mail were accepted, they would not provide any basis for a finding of bad faith. That Mr. Robertson previously offered to transfer the domain name to Talk City in return for "some nominal consideration," and now offers to transfer it without receiving any consideration, is not sufficient evidence to show that Talk City has pursued this matter in bad faith or with an intent to harass. To the contrary, having been unable to resolve the dispute with Mr. Robertson directly, it was fully appropriate for Talk City to have invoked the Policy. Accordingly, the Panel finds that Talk City has not abused the administrative proceeding process, and declines to terminate this proceeding under Rule 15(e).
There similarly is no basis for terminating the proceeding under Rule 17(e), as Respondent requested in his February 28 submission. Not only has the Panel decided to disregard that submission, but also, Respondent�s reference in that submission to transfer of the domain name "", which is not even the subject of this proceeding, is irrelevant. Furthermore, even if Respondent were to try to transfer the domain name to Talk City, it would be unable to do so unilaterally during the pendency of this proceeding. See Policy 8(a) (a registrant may not transfer a domain name during a pending administrative proceeding unless the transferee agrees in writing to be bound by the arbitrator�s decision).
c. Respondent�s Offer and Attempt to Transfer the Domain Name.
A more difficult issue is presented by the statement in the February 16, 2000 e-mail that Mr. Robertson now is "ready, willing and able to transfer the Domain Name in question directly to Talk City," and by the claim in the February 28 submission that Respondent has begun the process of transferring the domain name at issue in this case (which was improperly identified as "") to Talk City. In light of this offer, the Panel initially was tempted to rule that the domain name should be transferred and that it is unnecessary to reach the merits of the dispute. On reflection, though, that would not be an appropriate resolution.
The Rules expressly provide that the proceeding may be terminated if the parties "agree on a settlement." Rule 17(a). Although Mr. Robertson has now offered all of the relief that Talk City seeks in this proceeding, Talk City has not "agreed" to accept that offer. Given that Mr. Robertson did not make this offer until after the filing of the complaint, Talk City is entitled to a decision on the merits. This conclusion is consistent with the Rules� mandate that, in the event of default, the Panel "shall decide the dispute based upon the complaint," absent exceptional circumstances. Rule 5(e) (emphasis added); see also Rule 14(a).
d. Respondent�s Failure to Answer.
Given Respondent�s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint. The Rules expressly provide that the Panel "shall draw such inferences" from the Respondent�s failure to comply with the rules "as it considers appropriate." Rule 14(b). Moreover, when a respondent defaults, the Rules direct the Panel to "proceed to a decision on the complaint." Rule 14(a); see also Rule 5(e). Furthermore, the Panel is charged with rendering its decision "on the basis of the statements and documents submitted." Rule 15(a).
Even were the February 16, 2000 e-mail treated as an answer, it would not affect this decision. That is because, in addition to the absence of the required certification, Respondent�s e-mail made no attempt to respond directly to the allegations of the complaint. Nor has Mr. Robertson articulated any legitimate reason for his registration of this domain name or countered the charge that he registered the domain name in bad faith.
e. Evidence of Bad Faith Registration and Use.
In its complaint, Talk City argues that bad faith can be found for three independent reasons: (a) Mr. Robertson refused to transfer the domain name to Talk City absent a payment by Talk City in excess of the expense Mr. Robertson incurred in registering the domain name; (b) Mr. Robertson registered and used the domain name for purposes of attracting Internet users to his company�s MP3.com website; or (c) Mr. Robertson�s registration of the domain name has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the MPS.com website.
Talk City has properly alleged, and Respondent has not contested, that Mr. Robertson registered and used the domain name in order to attract Internet uses to the MP3.com website, and that MP3.com, Inc. derives significant advertising revenues based on the amount of Internet traffic directed to its site. This showing is sufficient to satisfy the requirement that, to justify transfer, a complainant must show that the domain name was registered and used in bad faith. Policy 4(a)(iii). See also Policy 4(b) (listing non-exhaustive examples of evidence of bad faith use and registration). In light of this finding, the Panel need not consider Talk City�s alternate bases for a showing of bad faith.
Conclusions
The Panel finds that Mr. Robertson owns a domain name identical or confusingly similar to Talk City�s trademark (TALK CITY), has no rights or legitimate interests in respect of the domain name, and registered and used the domain name in bad faith. These three factors entitle Talk City to an order transferring the domain name from Mr. Robertson to Talk City. Policy 4(a).
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel orders that the registration of the domain name be transferred to Talk City, Inc.
David H. Bernstein
Presiding Panelist
Dated: February 29, 2000
Full & Egal Universal Law Academy