WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Video Networks Limited v. Larry Joe King
Case No. D2000-0487
1. The Parties
1.1 The Complainant is Video Networks Limited, a company incorporated under the laws of England and Wales.
1.2 The Respondent is Larry J. King, of 77 Mowat Avenue, Suite 508, Toronto, Canada.
2. The Domain Name and Registrar
The domain name upon which this complaint is based is . The registrar of the domain name as at the date of the Complaint is Network Solutions Inc ("NSI").
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Centre") by email on May 24, 2000 and in hard copy by courier on May 26, 2000. The cover letter to the Complaint stated that the fees were to be made by wire transfer to WIPO�s account. The Complaint stated that a copy of the Complaint was sent to the Respondent by fax, courier and first class post (including all Annexes) and by email (not including annexes), and that a copy had been sent to Network Solutions Inc. by first class post.
3.3 Upon receipt of the email copy of the Complaint, the Centre sent the Complainant an "Acknowledgment of Receipt of Complaint" on May 25, 2000 by email, with a copy being sent to the Respondent by post/courier, facsimile and email.
3.4 The Centre sent a Request for Registrar Verification to NSI on May 25, 2000 by email. NSI responded to the Centre�s request by email on May 30, verifying (1) Network Solutions was in receipt of the Complaint, (2) that NSI was the Registrar for the domain name in dispute, (3) that the Respondent was the current registrant of the domain name in dispute, (4) the Respondent�s contact details, (5) that Network Solutions� 4.0 Service Agreement was in effect in relation to the domain name, and (6) that had an �active� status.
The Panel notes that although the domain name in dispute was registered on 8 June 1997, long before ICANN adopted the Policy, for the reasons outlined in Part IV of the Complaint this dispute is properly within the jurisdiction of the Policy.
3.5 The Centre sent the Notification of Complaint and Commencement of Administrative Proceeding on May 31, 2000 to the Respondent by post/courier, facsimile and email, and to the Complainant by email.
3.6 The Centre received the Response from the Respondent on June 6, 2000. The Response included a request that the dispute be dealt with by a three member panel. The Centre sent an Acknowledgment of Receipt (Response) to both the Respondent and Complainant on June 7, 2000 by email.
3.7 The Centre by email on June 8, 2000 sent a Response Deficiency Notification to the Respondent. The Respondent remedied this apparent defect by email on the same day by simply reciting information provided on the covering letter that accompanied the hard copy of the Response, which was not received by the Centre until June 13, 2000.
3.8 The Centre received a supplemental filing, in the form of a letter dated June 15, 2000 with attachments from the Complainant on June 16, which was sent by Facsimile to both the Centre and the Respondent.
3.9 The Centre received supplemental filing from the Respondent in response to the Complainant�s June 15 letter on June 16, 2000. This filing was also sent to both the Complainant and NSI.
3.10 The Centre sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant on June 27, 2000 via email. A copy was also sent to the Panel on the same date by email.
3.11 The Centre dispatched a Transmission of Case File to the Panel, to the Respondent and to the Complainant on June 27, 2000. The Presiding Panelist did not receive this material until 3 July, 2000.
3.12 At the Panel�s request, on July 4, 2000 the Centre sent a request for further statements to the parties, in accordance with Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy.
3.13 Both the Complainant and the Respondent replied to the Panel�s request for further statements on July 7, 2000.
3.14 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information was asserted as fact by the Complainant and remains uncontested.
The Complainant is a provider of video-on-demand, and a range of other interactive services, in the United Kingdom. These services include movies, music videos, on-screen games, entertainment and education, and home shopping and banking services. The business of the Complainant, although primarily confined to the United Kingdom, is increasingly expanding into other countries. According to the June 15, 2000 letter from the Complainant containing supplementary submissions, the Complainant is involved in a joint venture with the German media group Bertelsmann, and is in the process of negotiating with a number of international joint venture partners.
4.2 The Complainant�s Trade Marks
The Complainant has a trade mark registration for VIDEONET in the United Kingdom, details of which are contained in Annex B to the Complaint. This mark (the "Mark") is registered in three classes including distribution of video and sound recordings. The evidence shows that the Mark was first registered on January 17, 1995 and remains current.
5. Activities of the Respondent
The Respondent asserts as fact in the Response that it is a developer of Internet sites and related software. This claim is elaborated on in the Respondent�s response to the further statements requested by the Panel on 4 July, 2000, in which the Respondent states:
"Starting in 1995, the Respondent had established a company called Webwurx Multimedia Inc. which focused on the development of Internet websites and email services for various clients in the North American marketplace. Websites developed by Respondent include:
During 1996, the Respondent began developing websites for themselves and created some promising products including: CardB (a free online greeting card site - now called E), FantasyT (a sports contest website), MegaM (a secure online messaging system), QuickChat (a full-function chat system) as well as software for interactive games. . . .Along with and complimentary to these products, Webwurx also focused on emerging technologies such as sound and video and developed prototype applications for use in these areas. Some of these technologies were incorporated into the websites referred to above."
6. The Complainant�s Contentions in the Complaint
6.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
6.2 In reference to the element described in paragraph 4(a)(i) of the Policy, the Complaint asserts that the domain name in dispute is identical to the Mark "save for the addition of the .com TLD suffix".
6.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent has no legitimate interest in the domain name. In particular, the Complaint submits that the Respondent (in regard to paragraph 4(c) of the Policy):
- Has not made any use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services.
- Is not (whether as an individual, business or other organisation) commonly known by the Disputed Domain name; and
- Is not making legitimate non-commercial or fair use of the Disputed Domain Name without intent for commercial gain.
6.4 In reference to the requirement of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the Respondent has registered and is using the domain name in dispute in bad faith, in that it was registered primarily for the purpose of selling or otherwise transferring it to the Complainant or to a third party, for valuable consideration in excess of the out-of-pocket expenses related directly to it (as referred to in paragraph 4(b)(i) of the Policy)
6.5 In support of this allegation the Complaint refers to the fact that the domain name in dispute is re-directed to a website with the domain name . It is evident from Annex E - F of the Complaint that the site is an auction site through which an interested party can bid on many domain names, including the domain name in dispute. This is evidenced by the introductory page to the site, as reproduced in Annex E to the Complaint, which states:
" Members of the ComNetwork met in Las Vegas during the North American Broadcasters (NAB2000) conference in an attempt to raise awareness surrounding the state of the domain name system and to offer for sale some of their domain name holdings . . . .some key broadcasting names that could be available to your company for immediate development are . . .VideoN .."
7. The Respondent�s Contentions in the Response
7.1 The Response does not refute the allegation in the Complaint that the domain name in dispute is identical to the Complainant�s Mark. However, the Response asserts that the words "video" and "net" are generic words, in respect of which the Complainant therefore cannot claim exclusive rights. As a result, the Response submits that by choosing these words the Complainant must accept the risk that others will also use them.
7.2 In relation to the allegation in the Complaint that the Respondent has no legitimate interest in the domain name in dispute, the Response submits that the Respondent did originally use the domain name for a valid commercial purpose. The Response states that:
"The Respondent developed a software package for viewing on the Internet. The software was replaced by more advanced software developments in the marketplace, and the development of the website was halted. The site was active in 1997."
This statement is supported by Exhibit F to the Response, which contains a print-out of what is alleged to be the website that was active in 1997 at the address of the domain name in dispute.
7.3 In answer to the allegation in the Complaint that the domain name in dispute was registered and is being used in bad faith, the Response submits that the domain name could not be said to have been acquired by the Respondent for any of the purposes described in paragraph 4(b) of the Policy, as it was registered before the Respondent had even become aware of the Complainant. In support of this contention, the Response cites the following:
(i) the Complainant�s Mark was not famous, and as a result the Respondent cannot be expected to have heard of the Complainant; and
(ii) when the Respondent applied for the domain name in dispute he conducted a Canadian and United States trade mark search, and found no registration for the Complainant.
7.4 In addition to refuting the allegations made in the Complaint, the Response asserts that the Complaint is an overt attempt at reverse domain name hijacking, and that in relation to the letter received from the Complainant�s lawyers (offering to purchase the domain name rather than pursuing the ICANN procedure), dated May 26, 2000:
"The Respondent views this (the letter) as an attempt by the Complainant to use the ICANN procedure as a method of extorting a sale of the name to the Complainant, and that the Respondent believes that the ICANN Dispute Resolution Procedure has been invoked in bad faith by the Complainant."
8. Complainant�s additional contentions in letter of June 15, 2000
8.1 The Complainant submitted to the Panel its response to a number of the contentions in the Response, including:
(i) the fact that the Complainant�s Mark was only registered in the United Kingdom was irrelevant as far as the Policy was concerned;
(ii) the admission by the Respondent that he conducted a trade mark search in Canada and the United States, which revealed a number of registered trade marks for VIDEONET (as illustrated in Exhibit C to the Response), but then still registered the domain name demonstrates that the Respondent acted in bad faith. This is so, the Complainant submits, because the Respondent knew that the use of the domain name in dispute would be likely to infringe another person�s registered trade marks, albeit not that of the Complainant.
9. Respondent�s reply to Complainant�s letter of June 15, 2000
The Respondent�s reply to the Complainant�s June 15, 2000 simply sought to strengthen its existing submissions by reference to earlier decisions under the Policy.
10. Parties response to Panel�s request for further statements
Both the Complainant and Respondent utilised the opportunity afforded to provide greater detail about claims they had made in previous filings, some of which are considered below.
11. Discussion and Panel Findings
11.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
11.2 Domain Names identical or confusingly similar to Complainant�s Marks
The domain name in dispute is . The Mark owned by the Complainant is VIDEONET. It is clear that the domain name in dispute is identical to the Mark with no relevant distinguishing matter. Paragraph 4(a)(i) of the Policy is satisfied in the unanimous view of the Panel.
11.3 The Respondent has no rights or legitimate interests in the Domain Name
As described in paragraphs 5 and 7.2 above, the Respondent maintains that he is in the business of developing Internet sites and related software. This, it is claimed, included the development of a software package for viewing video on the Internet, for which a website at the address of the domain name in dispute was active. The Panel notes that the print-out of this website, as attached at Exhibit F to the Response, provides adequate support for the claim that the website originally existed. When requested by the Panel to provide further statements in support of these above claims, the Respondent elaborated as follows:
"Webwurx (a company established by the Respondent in 1995) also focused on emerging technologies such as sound and video and developed prototype applications for use in these areas. Some of these technologies were incorporated into the websites referred to above (paragraph 5 above). One such application developed by Respondent was called VideoNet, a Java-based video distribution tool. Over the time that these websites and tools were developed, due to financial limitations, Webwurx merged with another company and temporarily suspended the development of VideoNet to allow its employees to focus on more pressing development requirements of the new company. It was never the Respondent's intention to abandon the Videonet software development nor the domain name VIDEONET.COM"
11.4 Although it may never have been the intention of the Respondent to abandon the domain name in dispute, it would seem that he has effectively done so. The presence of on the auction site is evidence of it now being for sale to the highest bidder.
11.5 Paragraph 4(a)(ii) of the Policy provides:
"(ii) you have no rights or legitimate interests in respect of the domain name"
11.6 The Respondent�s claim to a current legitimate interest in the domain name in dispute is effectively based on the development of software that according to the Respondent has now been "replaced by more advanced software developments in the marketplace" and the development of which has in any case been "temporarily suspended". For whatever reason, the Respondent is now offering the domain name in dispute for sale, so the Respondent obviously no longer intends to use the name for the commercial purpose for which the name was allegedly registered. As a result, the Panel (Mr Davis dissenting) is of the opinion that any legitimate interest that the Respondent had in the domain name in dispute was abandoned when the decision was made to sell it for valuable consideration in excess of the documented out-of-pocket expenses directly related to the domain name and other than in connection with the sale of a business in which there might be goodwill associated with the domain name. The Panel (Mr Davis dissenting) is inclined to the view that the complete abandonment of any legitimate interest that might have existed at the time of registration in 1997 prevents the Respondent obtaining the benefit of paragraph 4(c)(i) of the Policy. However, since the Panel�s decision does not depend on this finding, the Panel does not express any concluded view on this issue of interpretation.
11.7 The Panel notes, however, that such a finding does not mean that every registrant who ceases to conduct themselves in a manner consistent with their legitimate interest by, for example, no longer carrying on the business originally associated with the domain name, will be incapable of defending its registration. Each provision of paragraph 4(a) of the Policy must be satisfied, so that such a person will always have the protection of the other two elements needing to be satisfied before their registration is in jeopardy.
11.8 The Panel notes the decision in Car Toys, Inc. v Informa Unlimited, Inc. National Arbitration Forum Domain Name Dispute Case FA0093682, relied upon by the Respondent in paragraph 18 of the Response, in which it was stated that:
"That Informa (Respondent) has offered to sell this domain name to Complainant after inquiry by Complainant does not make its interest illegitimate."
However, that decision refers to a different situation to that currently being considered by the Panel. In this case, the Respondent�s sole asserted current interest in the domain name in dispute is to sell it to the highest bidder, which in the opinion of the Panel (Mr Davis dissenting) is a disavowal of any current legitimate interest in the domain name. The Respondent has not offered the domain name for sale concurrently with its use in conjunction with an offering of other goods and services.
11.9 Accordingly, the Panel (Mr Davis dissenting) finds that the Complainant has proven paragraph 4(a)(ii) of the Policy.
11.10 The Domain Names have been registered and are being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith AND use in bad faith. Paragraph 4(b) of the Policy provides:
" . . .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 the domain name in bad faith: . ." (emphasis added).
In some cases it has been found that it is unnecessary to consider the two limbs of this provision separately, as the "use" requirement has been found not to require positive action, inaction being within the concept. However, although bad faith use can be found to follow bad faith registration without more, it is still necessary for the Complainant to prove registration in bad faith.
11.11 In order to show bad faith registration by the Respondent, the Complaint states that:
" . .the Respondent . . appears to have registered the Disputed Domain Name primarily for the purpose of selling, or otherwise transferring the Disputed Domain Name to the Complainant or a third party, for valuable consideration in excess of his documented out-of-pocket expenses directly related to the Disputed Domain Name." (Emphasis added)
The Complainant therefore appears to rely on Paragraph 4(b)(i) of the Policy, which provides that the following is evidence of bad faith registration and use:
"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 trade mark 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".
11.12 The Panel notes an important difference between what the Complaint argues and the circumstance paragraph 4(b)(i) of the Policy describes, in that the Complaint refers to the "Complainant or a third party" and the provision refers to "the complainant . .or competitor of that complainant". However, it must be remembered that the circumstances which provide evidence of bad faith are not limited to those described in paragraph 4(b) of the Policy. The Panel is not of the opinion that an intention to sell the domain name directly to the Complainant or one of its competitors is necessary to show bad faith. Registration for the purpose of selling the domain name, made with the knowledge of third party rights in the name, would be sufficient.
11.13 In this case the question for the Panel is therefore, "did the Respondent register the domain name for the primary purpose of selling, renting or otherwise transferring it to a third party with an interest in that name?" The Complainant is required by the Policy to prove that this is the case.
11.14 The Respondent has made a number of statements, reproduced in paragraphs 5, 7.2, and 11.3 above, claiming that he is in the business of developing Internet sites and related software. In addition, the Respondent claims that he had developed a piece of software called "videonet", and that a website was active in 1997 using the address of the domain name in dispute to market this software. Although the processes of the Panel do not enable a party�s "evidence" to be easily tested, the Policy makes it clear that the Complainant must prove all three elements of Paragraph 4(a). Based on the material before it, the Panel is unable to conclude that the Respondent registered the domain name in 1997 in bad faith.
11.15 The Panel is aware of the ease with which a Respondent could "manufacture" a legitimate interest at the time of registration for the purposes of defeating a Complaint. However, the Policy does not provide the appropriate forum for the evaluation of evidence of this kind, such evaluation only being available by recourse to more conventional forums in which the credit of materials and the authenticity of documents can be tested.
11.16. The Panel is unanimously of the view that the Complainant has failed to prove paragraph 4(a)(iii) of the Policy.
12. Decision
Having decided that the Complainant has failed to prove all the requirements of paragraph 4(b) of the Policy, the Panel dismisses the Complaint.
Philip N. Argy
Presiding Panelist
Gervaise Davis III David H Tatham
Panelists
Dated: July 20, 2000
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