WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
U.S. Department of Commerce v. I and Ruth DiTucci
Case No. D2000-1286
1. The Parties
Complainant is the United States Department of Commerce with offices in Washington, DC, U.S.A. ("Department of Commerce").
Respondents are I, with an address in New York, NY, U.S.A. ("Internicregistrations"), and Ruth DiTucci, with addresses (a) at the Internicregistrations� address in New York, NY, U.S.A., and (b) in Hackensack, NJ, U.S.A. ("DiTucci").
Both respondents share the same telephone number, the same fax number, and the same email address.
2. Domain Names and Registrar
The domain names in issue are:
.
The registrar is Network Solutions, Inc. ("NSI").
3. Procedural History
a. Conventional Formal Matters
The WIPO Arbitration and Mediation Center ("Center") received the Department of Commerce�s complaint via email on September 28, 2000, and via hard copy on October 2, 2000. On October 5, 2000, the Center requested that Section "VIII. Mutual Jurisdiction" of the complaint be amended. On October 6, 2000, the Center received the requested amendment via email and fax (and on October 9, 2000, via hard copy). The Center verified that the complaint as amended satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"). The Department of Commerce made the required payment to the Center. The formal date of the commencement of this administrative proceeding is October 9, 2000.
On October 2, 2000, the Center transmitted via email and fax to NSI a request for registrar verification in connection with this case. On October 5, 2000, NSI transmitted via email to the Center NSI�s Verification Response, confirming that the registrants of the domain names in issue are Internicregistrations and DiTucci, without coupling either registrant to a specific domain name. NSI confirmed also that (1) Internicregistrations and DiTucci share the same address in New York, NY, (2) DiTucci also has an address in Hackensack, NJ, (3) DiTucci is the administrative and billing contact for the domain names (at her New York, NY address), and (4) each domain name registration in issue is in "Active" status.
On October 9, 2000, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the complaint and amendment to complaint, via facsimile, courier and email to Internicregistrations and DiTucci. The Center advised that the response was due by October 28, 2000, pointed out the response should be in accordance with specified rules, and described the consequences of a default if the response were not sent by that date. In addition, the Center advised Internicregistrations and DiTucci that the Center had appointed a Case Manager, and noted the Case Manager (1) is in charge of administering the case and (2) can answer procedural questions but cannot provide legal advice or make representations on behalf of respondents.
On October 27, 2000, the Center received an email from a Daniel S. Heyneman (1) advising "William H. Bode of Bode & Bekman, LLP" had been retained by "the Respondent", (2) advising all correspondence should be directed to Mr. Bode, and (3) requesting a two week extension to November 13 to submit a response. On October 30, 2000, the Center requested the Department of Commerce to comment on the request. On November 2, 2000, the Department of Commerce objected to the request, pointing out "the Respondent has been aware of this controversy since March of this year, and has retained legal counsel prior to this time." On November 3, 2000, the Center advised counsel for the Department of Commerce and Mr. Bode that the time to file a response had been extended to November 7, 2000.
On November 3, 2000, the Center received an email from Daniel S. Heyneman advising:
"Ms. DiTucci had approached this firm seeking our assistance in responding to the U.S. Department of Commerce Complaint ... .
"We no longer represent Ms. DiTucci with respect to any legal matters, and correspondence regarding Case No. D200-1286 [sic] should not be sent to this firm."
On November 3, 2000, the Center advised DiTucci (1) of the extension to
November 7, 2000 (2) of Mr. Heyneman�s email of that date (noting "you are no longer represented by his firm"), and (3) further communications will be sent to DiTucci at Internicregistrations� and DiTucci�s email address.
On November 9, 2000, the Center received from "Ruthie" an email entitled "DiTucci�s answer to Greene�s complaint." (Philip J. Greene ("Greene") is counsel to the Department of Commerce in this matter.) Copies of the email were addressed individually to seven members of the Center�s staff, including the Director of the Center and the Case Manager, as well as to other email addresses affiliated with the Center. On November 9, 2000, the Center received another email, similarly addressed, from "Ruthie" and charging, inter alia, that
"Mr. Greene, through surreptitious means, has removed two of the domains off my server already."
On November 9, 2000, the Center acknowledged "receipt of the Response" in this matter, advised the Center would proceed to appoint the Panel, and reminded the parties that any communication by a party "shall be copied to the other party." On November 9, 2000, the Center acknowledged receipt of DiTucci�s second email of that date. (Footnote 1)
On November 9, 2000, the Center received an email from Greene denying the charges in DiTucci�s second email of that date. On November 9, the Center acknowledged receipt of Greene�s email, advised supplemental filings are not provided for under the Policy and the Rules, and it will be in the discretion of the Panel whether or not to admit this communication.
On November 20, 2000, the Center advised the parties that David W. Plant had been appointed as Panelist in this matter. On the same day, the Center notified the parties of the transmission of the file in this matter to the Panel.
On December 16, 2000, the Center transmitted to the parties Administrative Panel Procedural Order No. 1, and advised the parties the "decision notification date" is January 5, 2001. Procedural Order No. 1 requested the Department of Commerce to submit no later than December 21, 2000, a brief reply to DiTucci�s email of November 9 (i.e. the so-called "Response"), together with comment on the relevance, if any, of the existence of other domain name registrations including the term INTERNIC.
On December 21, 2000, the Department of Commerce submitted a reply pursuant to Procedural Order No. 1.
b. Extraordinary Communications with the Center
The foregoing events must be considered in light of additional correspondence between DiTucci and various recipients. Notwithstanding that such correspondence is not contemplated by the Policy or Rules, the Panel finds that, for due process reasons, these additional communications shall be summarized and taken into account by the Panel.
On September 29, 2000, the day after the complaint had been submitted to the Center and served on respondents, the Center received an email from "Carlo DiTucci". The email was addressed to Greene, the Center, and Ruth DiTucci�s email address, among others. It was directed "To whom it may concern", asked "Have you seen these? There are thousands more," listed 14 domain names embodying "internic" or variants "inic" and "nic", and requested the complaint (apparently) in another format.
On October 5, 2000, the Center received an email from "Ruthie DiTucci", entitled "Re: Domain Name Dispute - There is no dispute - you screwed me already." The email reflects DiTucci� s anger at the Department of Commerce for singling her out ("a hispanic female who�s worked 18 hour days for years now building this company") and allegedly putting her out of business.
DiTucci�s October 5, 2000, email included the following:
"I already gave up the names months ago so why are you continuing to harass me?"
DiTucci�s October 5, 2000, email closed with the following:
"Now take all and any mention of me or my business off that God Damned ICANN site immediately. It only further serves to frighten people into thinking I�m going to be swallowed up by the internet and it will make them afraid to use my domain name registration service. Or perhaps that�s really all you�re after? Take that information off tomorrow! Do you all understand me?"
Also, on October 5, 2000, DiTucci sent an email to Greene, with copy to the Center, stating inter alia:
"You already have the business and I�ve given up my home as well. You already won so why are you continuing to posture?"
Later, on October 5, 2000, DiTucci sent an email to the Case Manager, with copy to Greene, stating inter alia:
"I want my name and this case removed from the ICANN web site immediately. Either remove it or I will retaliate by having myself wheeled in to every Democratic Fund Raiser with a sign on my chest reading - LOOK WHAT ICANN & THE DEPT OF COMMERCE DID TO ME.
"Your posting this case on that web site is meant to ruin the rest of my business as well and since it can�t benefit anyone but my competitors I can only assume you�re either helping them or being paid to do so. I am one very angry woman with very little to lose. If you want my cooperation - then cooperate with me.
"By posting information about this without my permission you are in affect [sic] �ruining� me and what�s left of my business. Remove any mention of this from that web site immediately and take the God damned domain names.
"Nothing less will do."
DiTucci noted that no one had telephoned to her and concluded with the following:
"Then again, if each name has to be dealt with individually, I may choose to handle one name at a time while I use the rest. How long do you think that can take? A few months? A few years? Let me know. My cell phone is always on."
Still later on October 5, 2000, DiTucci sent to the Center the following email message:
"Provide a phone number - I�ll call.
"give me a phone number and I will respond.
"Should you have any questions, please do not hesitate to contact me."
On October 6, 2000, the Center received from DiTucci an email (with copies to Greene, various persons at the White House, including the President and the Vice-President, and others), stating in part:
"I�ve spoken to my congressman and he is sending a car to my house to pick me up in the morning to meet with his counsel in Manhattan. He assures me that anyone at the DOC can have my domain names as soon as they purchase them from me.
"I�m not giving my domain names to anyone except whomever [sic] pays me for them. The DOC knew they were for sale for a year. The only reason they went to you is because they want me to hand them my business and walk away. This is merely another tactic to dismantle my business in the attempt to take the business over without having to pay for it."
"... If the DOC wants my domains, they can buy them.
* * *
"There is a solution to this problem - the DOC can buy my domain names and do whatever they want with them. I will not hand them over to anyone under any circumstances. Do you understand?
* * *
" ... my domain names. They�re mine and they�re for sale. They infringe no one since the US Government is not in the business of selling domain names. There is no infringement issue here - the issue is that they don�t want to pay for a valuable business so they want to muscle me out of it.
"The DOC can pay for the domains like anyone else."
A DiTucci email to Greene on October 6, 2000 (with copies to the President, et al), continued the charges that the Department of Commerce has done everything possible to ruin DiTucci�s business, stating in part:
"If at the very least, you had approached me offering to buy those domains, which have been part and parcel of my business since I built it - I would have sold them to the DOC as I would have if they�d wanted to build a bridge on my property. ...
* * *
"If the domains were available, �by mistake,� then the DOC can buy them from me because I didn�t steal them from anyone. My using the InterNIC word doesn�t interfere with the DOC in the least and you know it -- moreover, there are thousands of domains that use the �InterNIC� word in use the world over -- what are you going to do to them? ...
"I offered to sell the domains to you didn�t I Phil? And what did you tell me? You basically told me to shove it. ...
"My six InternicRegistration domain names, both singular and plural are for sale. Make me an offer and we will have something to talk about. ...
* * *
"If you want to talk, then be a man and make me an offer. ...
"I�m sure that an administration that saw fit to ensure Monica�s million dollar book deal ... is wise enough to make a deal for me too. After all, I built my business properly and honestly ... . I deserve to be paid for my hard and honest work."
* * *
"If you have the authority to buy the domain names from me, then call me in the morning and we�ll talk sensibly. Otherwise, if you�re not actually in a position to deal with this then you should have whomever [sic] has the authority call me.
* * *
"My domains are for sale. You�re heading towards a public relations nightmare to escalate this. Buy the domains quietly and you�ll never have to hear from me again�
* * *
"Any registrar that sold me those names were sanctioined [sic] therefore, you should go after everyone involved, not just the little guy, like me. It�s just too shameless to go after the most defenseless person in the group. I bought them in good faith and I relied on the registrar�s legal ability to sell them. I think they call this detrimental reliance or something to that effect. I paid for them and I do business with them. I bought the word �internic� from �internic.� You want them? Buy them."
"Here are a few examples of where the govt has invested money lately. I�m sure that if you were able to justify these expenses - you can justify buying my names and paying me properly. ..."
On October 7, 2000, the Center inter alia (1) acknowledged receipt of DiTucci�s emails of October 5 and 6, (2) advised that the Policy and the Rules contemplate only a complaint and a response and not other submissions, and (3) noted the administrative panel would have sole discretion to decide whether or not to consider any supplemental submission.
Apparently in response to the Center�s email of October 7 to DiTucci, DiTucci transmitted the following email on October 7, 2000, to the Center:
"Sorry but I don�t read legalize [sic]. Can I have what you wrote translated into straight English please."
On October 10, 2000, DiTucci advised the Center by email as follows:
"According to this statement [the Notification of Complaint], I have until the 28th. I will write to you by then in response to DOC�s bogus complaint."
On October 13, 2000, DiTucci transmitted to the Center the following email:
"Which of the six domains do we deal with first and shall I assume that will take place on the 28th of this month? And how much time do I have between then and the commencement of the issue of the second domain?"
On October 18, 2000, the Center advised DiTucci by email that all six domain names should be dealt with in the single response due October 28, 2000. The Center reminded DiTucci that any communication by a party should be copied to the other party.
On October 18, 2000, DiTucci transmitted to the Center an email which stated in part:
"You asked for a response to each domain and that�s what you�re getting.
"Since when did the six domains become one complaint? Simply because Phil Greene asked you to combine them? I am preparing a response for each name individually - not all of them together. That is what you asked for and that is what I�m giving you.
* * *
"Allowing the Americans to control this case will now, will only give them the impression that they can force you to do anything they want. You are obliged to remain an impartial party so do that. Remain an impartial party as your bylaws state.
"I did not ask to combine the domain names into one case. Phil is the one who asked for that and you combined them without consulting me. I did not agree to combining them and I will not answer them as one complaint.
"You will get a response for one of the domains on October 28, 2000 as required and we will deal with each domain individually as originally agreed to.
"If you continue to give in to everything he requests it will be clear to the public that you are giving in to him simply because he works for the DOC in the US. Stand your ground and do your job. BE FAIR AND IMPARTIAL LIKE YOU�RE SUPPOSED TO BE."
On November 9, 2000, DiTucci transmitted two emails to the Center. In light of the Center�s characterization of the first of these as "the Response" it is summarized in Section 4.b. infra. The second November 9 email charged Greene with surreptitiously removing two of the domains off DiTucci�s server, see Section a. above. In a November 9, 2000 email to the Center, Greene denied all such charges and affirmatively stated he had taken no actions other than those required by the Rules (viz.: sending the complaint to NSI), see Section a. above.
On December 11, 2000, DiTucci transmitted to the Center, with copy to Greene and the Panel, an email entitled "It is in your own best interest that you drop this case D2000-1286." The email states in part:
"It is in your best interest to immediately and very quietly take this complaint off your web site. Luckily for all of us, the public has a short memory. Those domains, in fact, all my domains are now in the hands of a Hong Kong based, privately held Internet Consultancy. If you think you�re going to get any of my domains out of their hands while China�s in the process of joining the World Trade Organization or afterwards, you�re absolutely mistaken and history will hold your office responsible for having set the stage that encouraged the ugliest domain dispute in your office�s short history, that of the US vs. China over my 6 domains.
" ... I am certain that your collective intelligence provides you with sufficient understanding that your office is best served in the long run, by ruling in my favor now and removing this case from your pages in their entirety. ...
"I am giving WIPO and the DOC an elegant exit here. Drop this case off your pages immediately before we launch our international media campaign. ...
"This is a simple case gentlemen. NetworkSolutions used a US government lawyer to further protect their lost monopoly. ...
"The Dept of Commerce WILL NOT, I repeat, WILL NOT get those names so put that possibility out of your minds. ...
"Take this complaint off your web site immediately, close this case and let Phil off the hook. ...
"Should media ask any questions about the InterNICregistration domains we should all jointly say, �that was resolved amicably long ago� and change the subject. WIPO�s cooperation is required for this as still having the names on their pages will ruin all possibility of this �fix� I�m offering.
"If Phil�s complaint against me is still on the WIPO pages by the [sic] tomorrow afternoon, WIPO will have cemented itself into a no win situation unnecessarily when I gave WIPO an elegant way out. I�m sure Phil would also appreciate putting this behind him.
"[After statements concerning an allegedly Korean owner of SoftBank, the alleged owner of VeriSign, now the owner of NSI], ... [f]or further details about the gentleman, I suggest you consult your own Ms. Eun Joo Min [the Case Manager], whom Phil personally chose as arbiter for my case, she also grew up in Korea and as an attorney, must be well versed on the subject [of the Korean owner].
"I think I�ve provided sufficient incentive for both WIPO and R to solve each of their respective problems in a clean confidential manner without having to alarm the public and simultaneously restoring the public�s faith in R ... ."
After receipt of the Department of Commerce�s December 21, 2000 response to Procedural Order No. 1, the Center advised the parties, on December 27, 2000 and at the request of the Panel, as follows:
"Please note that the Panel will not consider any further communications from any party, unless the Panel requests such further communication."
Both before and after December 27, 2000, DiTucci continued to transmit emails to the Center and to Greene.
On December 21, 2000, DiTucci transmitted two emails to Phil Greene and two to the Center (namely, "WIPO Executive Staff" and "WIPO Staff")
In the first December 21 email to Greene, DiTucci inter alia (1) advised Greene that DiTucci was copying the email to a New York Times reporter and to a lawyer on the Rev. Jesse Jackson� s staff, (2) demanded US$500,000 from Greene "by tomorrow" because "you torteously [sic] interfered with my business," (Footnote 2) (3) averred Greene had "arrogantly positioned two super powers [China and the U.S.] in a face off over my 6 InterNIC registration domains," (4) threatened to have various members of the media interview DiTucci�s employees who had allegedly not been paid, (5) advised that the "Rev. Jesse Jack[son] is monitoring this case," (6) detailed a proposed statement to the press (including an allegation that "WIPO seems to have believed her because they want to drop the case rather than face the backlash if they help face China and the US against each other while China�s still signing the WTO accords," and an interpretation of the Center�s use of the term "averred" in Procedural Order No. 1 as a "strong legalalese [sic] expression meaning �they believe her�," and (7) threatened to go public with "all the documents I haven�t shown before .... WIPO knows exactly what documents I�m referring to." (Footnote 3)
In the second December 21 email to Greene, DiTucci, in increasingly strident language continued to demand that Greene have a check on "my desk tomorrow".
In the first December 21 email to the Center (i.e. "WIPO Executive Staff"), DiTucci inter alia (1) continued to demand that she receive "tomorrow" US$50,000 for each month since March 2000, (2) criticized Greene�s response to Procedural Order No. 1, (3) repeated her contentions as to collusion between NSI and the Department of Commerce, (4) purportedly described having spoken to Greene�s superior, and (5) at minimum, implied that WIPO should bring Greene�s superior "up to speed."
In the second December 21 email to the Center (i.e. "WIPO Staff"), DiTucci purported to correct typographical errors in her earlier December 21 email, and iterated her conspiracy theories and her demands for money "tomorrow".
On December 22, 2000, DiTucci transmitted another email to the Center (i.e. "WIPO�s Staff"). DiTucci inter alia (1) repeated her claim that her company had been "valued at $225 million USD," and her charges of collusion and tortious interference, (2) charged that the Department of Commerce has funded WIPO, WIPO had thus been compromised, and ruling in favor of the Department of Commerce will confirm that WIPO is "merely installed to carryy [sic] out the wishes of the organizations that fund" it, (3) iterated that Greene had hand-picked the "only Korean lawyer you [WIPO] portray on your web site," (4) criticized WIPO�s rulings in domain dispute arbitrations, (5) referred to an unidentified judicial decision, (6) expected her money to be returned "today" and expected "your offices to either instruct the DOC to remunerate me my losses or pay me those losses yourselves," and (6) stated she has "suffered death threats ... and I have been put though all sorts of dangerous �mishaps� I refer to as �coincidences�."
On January 3, 2001, DiTucci transmitted an email to the Center (i.e. "Wipo Executive Staff"), (1) repeating many of her earlier charges, (2) demanding that WIPO remove "my domains from your web site," (3) averring that WIPO "cannot escape culpability if you maintain my domains on your web site another day," (4) stating that "Accepting my invitation to rule in my favor is the only reasonable thing to do," and (5) threatening:
"Either you rule in my favor now and take my domains off your pages or I will have no choice but to escalate my defense. ... you have negligently let months roll by and directly impacted my income. You must rule in my favor and order the DOC and NSI to return my lost revenue. Every month that passes only entrenches you further."
On January 6, 2001, DiTucci transmitted to WIPO (i.e "WIPO Executive Staff") an email stating in part:
"You are in no position to DARE, �remind� me you will not accept my emails or that you won�t. YOU WILL ACCEPT EVERY GOD DAMNED EMAIL I SEND YOU WHETHER YOU WANT TO OR NOT. Are we clear on that?
"You have entertained this false and illegal complaint since March because you negligently accepted this invented complaint instead of rejecting it immediately when you received it. I wonder what Phil Greene promised you. Perhaps an increase in your budget?
"Do you really think you�re going to aid in an illegal act and then be held blameless as well? You�ve got to be kidding. You can rest assured that when I sue Phil Greene and the DOC, for tortious interference of trade and abuse of the position he �held� that I will add all parties who aided in the further ruination of my business to my action, unless you rule immediately in my favor.
* * *
"You guys had better put your bongs down and sip a little coffee like I do. It may clear your heads. I repeat, �End this now before you really have something to regret. I think I�ve been more than patient with all parties involved to date.�
"I�ve told you repeatedly that once you�re out of this, I will only sue those who injured my business and my income. If you continue aiding and abetting Phil�s criminal act, I will have no choice but to sue you as well. I gave you an elegant exit, what part of that invitation didn�t you understand?
* * *
"As for you personally Miss Eun-Joo Min, you should have recused yourself immediately when Phil Greene approached you. ...[There follow averments as to the Case Manager�s "complicity" and threats of suit against her.]"
On January 6, 2001, DiTucci transmitted to WIPO a second email to the same effect as the first email, but without, for example, the ad hominem attacks on the Case Manager. (Footnote 4)
4. Factual Background; Parties� Contentions
a. The Trademarks
The complaint is based on the service mark INTERNIC.
The Department of Commerce avers the mark represents "a neutral stand alone web page that provides a public directory of all accredited registrars and associated contact information (including hotlinks) and other information regarding domain name registration services, as directed by the U.S. Department of Commerce." The InterNIC has been in operation since April, 1993, and the mark has been in use since then and has "become universally known and recognized as the source of information" in fields related to domain name registration.
Since October 15, 1998, the Department of Commerce has owned the U.S. service mark registration and also the mark. (Footnote 5). The U.S. registration for the mark is No. 1,874,125. It issued January 17, 1995.
The Department of Commerce avers:
" ... the term InterNIC® has always represented the U.S. Government�s participation and presence in the technical management of the Internet."
b. Allegations as to Respondents� Activities
The two "com" domain name registrations in dispute were issued on December 15, 1998; the other four (two "net" and two "org"), on May 15, 1999.
The Department of Commerce avers that Respondents are required to submit to this proceeding because:
1. The domain names are identical or confusingly similar to a mark in which the Department of Commerce has rights, and
2. Respondents have no rights or legitimate interests in respect of the domain names, and
3. The domain names were registered and are being used in bad faith.
The Department of Commerce asserts:
" ... the similarities between the official InterNIC site and that of the Respondent are obvious, and were done intentionally, as part of a calculated attempt by the Respondent to cause confusion and deception." (Footnote 6)
The Department of Commerce avers the six domain names "encompass, and thereby are confusingly similar to" its registered service mark.
The Department of Commerce asserts "Respondent has used the disputed domains to provide domain name registration services," and "did so in a way that was calculated to deceive consumers that they were dealing with �the InterNIC,� or with an organization that was affiliated with and/or authorized by �the InterNIC.�"
The Department of Commerce provides at Annexes 5 and 6 "screen shots from the Respondent�s former web site, circa March, 2000 ... ." The Department of Commerce avers that the web site utilized "the same color scheme and the same slanted typeface as the official InterNIC site," emphasized the term "InterNIC", and used the same configuration of upper and lower case letters. The Department of Commerce avers this was done "to showcase the Complainant�s registered service mark �InterNIC®�." These actions were assertedly done "to play up the �InterNIC� aspect of the name," and were part of "a calculated effort to deceive the consumer into believing that the Respondent was �the InterNIC�, or that it was in some way connected to, affiliated with or authorized by �the InterNIC� and/or the U.S. Government."
The Department of Commerce avers:
Respondent has modified its web site since March 2000, when the Department of Commerce first objected to the registration and use of the six domain names.
In response to a cease and desist letter, Respondent did take down its web site for several months, while settlement negotiations took place.
In August, 2000, Respondent reactivated the web site, with modifications to the color scheme (and as shown in Annex 7, with different type sizes and shapes).
The Department of Commerce continues to object to the use of the mark "within the disputed domains, and the use of the InterNIC® mark in association with domain name registration services."
As evidence that "Respondent�s actions were calculated to deceive and were done in bad faith," the Department of Commerce attaches at Annex 8 a copy of a February 29, 2000 (Footnote 7)" email from DiTucci "advertising that its website (along with the disputed domain names) was for sale (for $100 million)." The email reads in part:
"To: mclaughlin@
"Subject: Please inform colleagues that www.InternicR is for sale.
" is for sale.
" ... The site is a co-brand with many generic domains pointed at it, each url individually promoted in the search engines and it does an average of 2500 domains per month so it generates $150K to $200K cash monthly (not to mention web hosting fees).
"As for competitors, amusingly, since we registered the com, net & org versions of both InternicRegistration (singular) and InternicRegistrations (plural) at Network Solutions, they have to list us in their �dot com directory.� That means that people go to NetworkSolutions, search for the word �internic� and are given a �live link� directly to our web site.
"The site�s for sale at $100 Million USD. Interested? Call Dr. Carl Tolson in the US at 212 750 1249."
The Department of Commerce avers that the statement about the live link from NetworkSolutions to DiTucci�s web site is evidence of (1) bad faith, (2) a "calculated effort to avail itself of the popularity of the registered mark InterNIC® and the goodwill and customer recognition that the mark has attained in the marketplace," and (3) a "calculated effort to deceive the customer into believing that it�s [sic: "Respondent�s"] site was �the InterNIC�," and (4) "there exists an enhanced and considerable likelihood that such confusion would arise, or that such a connection, authorization or affiliation exists, when actually it does not."
The Department of Commerce finds in other language in the email support for the inference that "Respondent finds it amusing that it has figured out a way to �ride the coattails of� or pass itself off as �the InterNIC�, right under its nose, so to speak."
In sum, the Department of Commerce asserts the registration and use of the six domain names "was intentional, and calculated to deceive consumers into believing that its web site was � the InterNIC,� ... ."
The Department of Commerce asserts "the Respondent had no use of or rights in" the mark prior to the rights of the U.S. Government. The Respondent�s use of the mark post-dates by at least five and a half years the Government�s first use. Also, the Respondent owns no trademark or service mark registrations in the domain names or in "InterNIC" or any variation. The Department of Commerce has not licensed Respondent to use the mark.
The Department of Commerce avers the domain names have been registered and used in bad faith, asserting the following:
The disputed domain names "may" have been registered or acquired primarily for the purpose of selling, etc. them to the Department of Commerce, or to a competitor, for valuable consideration in excess of the registrant�s out-of-pocket costs directly related to the domain name.
The Respondent advertised the domains as being for sale for $100 million.
DiTucci has "repeatedly requested that the Complainant purchase the disputed domains from her, on several occasions over the telephone."
In a June 21, 2000 email (copy at Annex 9), DiTucci stated, inter alia:
"Of course, I appreciate what you�re doing for NetworkSolutions but when you originally contacted me, you failed to mention that the 5th and 14th articles of the constitution specifically state the government has to "BUY" my property from me - I don�t have to �relinquish� my domains ... .
"I bought those domains in good faith through NetworkSolutions and they didn�t have any objections to my registering domains through those sites while they were benefiting [sic] financially. When they made me an offer they thought I couldn�t refuse, inviting me away from their competitor r, is when they engaged your services.
"You�re being paid by the US government while representing NetworkSolutions financial interests. ....
" ... Now I�m more than willing to continue working with you privately but your client�s going to have to buy my domains. I don�t care which of your offices you want to pay me through, either NetworkSolutions or the Commerce Dept but you�re going to buy them from me. I�m not going to just give them to you.
* * *
" ... And considering your client was foolish enough to have a government lawyer contact me after I turned down their offer, my names must be more valuable that I realized. I�m not a lawyer Phil but I�m not stupid either. Tell your client to write me a check and buy my InternicRegistration domains properly." (Footnote 8)
The Respondent intentionally attempted to attract for financial gain Internet users by creating a likelihood of confusion with the Department of Commerce�s mark.
Before notice of this dispute, the Department of Commerce knows of no evidence of the registrant�s use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.
The Department of Commerce knows of no evidence that the registrant has been commonly known by the domain name.
The registrant is not making a legitimate non-commercial or fair use of the domain name and its use is intended for commercial gain misleadingly to divert consumers or the tarnish the service mark at issue.
The Department of Commerce requests that the Panel issue a decision that the domain names in issue be transferred to the Department of Commerce.
The complaint concludes with the requisite certification, signed by counsel, that the information in the complaint is complete and accurate.
c. The "Response"
DiTucci�s email of November 9, 2000 to the Center (with copies to the Director of the Center and various members of the Center�s staff, but not to Greene) does not comply in numerous respects with the requirements of the Rules (e.g. Rule 5). Nevertheless, the Panel has elected to consider the email as a response.
The November 9, 2000 email is entitled "DiTucci�s answer to Greene�s complaint." It includes the following statements:
"I will no longer pay attorney fees to defend from Mr. Greene�s false claims, as every attorney I have consulted recognizes this as another futile attempt by the US Government to protect a single company�s former monopoly position. ...
" ... the US Government continues to prove their unwillingness to abide by a Supreme Court Judge�s ruling that NetworkSolutions was indeed an illegal monopoly. That ruling effectively ended NetworkSolutions and the US Government�s sole reign over the domain registration industry and opened the market to new competitors. The US Government and NetworkSolutions� joint continued resistance to that court order is why they brought this complaint to you.
" ... When the Supreme Court�s ruling ended NetworkSolutions illegal monopoly, I switched to a competing registrar. That is what prompted the invention of this complaint.
"Considering I had by then registered 12,000+ domains and my registration numbers were increasing steadily by 12 to15% monthly, I was not surprised when NetworkSolutions and several of their affiliates responded to my �domain registration business for sale� notice. I was regularly invited by NetworkSolutions to stop using the new competitor registrar I had chosen and return to registering domains through NetworkSolutions as I had done before I had a choice.
"In March of 2000, the sale negotiations wound down to three possible companies. ...
"Since I was happy with the new registrar I had chosen anyway, I decided not to sell and canceled the negotiations all together. Gene Becker of NetworkSolutions warned me that my �lack of cooperation� would bring me difficulties. Since I had not signed any legal documents with any of these potential buyers, I was not compelled to continue any of the negotiations. That evening I received an email from Phil Greene accusing me of trademark violations. I do not feel these incidents are unrelated. If anything, I felt then as I do now that the two were absolutely related.
* * *
[Three paragraphs are devoted to DiTucci�s frustration in being unable to reach "Mr. Becker" by telephone, and in being told Mr. Becker never worked for NetworkSolutions.]
"Now to the matter of Mr. Greene; He claims he objects to my use of my InterNICregistrations domains, which merely incorporates the word, InterNIC, as do thousands of other domain names registered worldwide. He remains silent on the fact that NetworkSolutions uses hundreds of domains with the actual word �InterNIC� with different country extensions pointed directly to their web site.
" ... this is not a case of trademark infringement but rather a long established benefactor�s resistance to giving up an exclusive multi-million dollar revenue stream.
"The complaint brought to your office is based in the fact that the industry giant, namely NetworkSolutions and their illegal protector, the United States Government have lost the exclusive multi-million dollar revenue stream they mutually shared. This complaint is testament to their continued unwillingness to abide by a US Supreme Court Judge�s ruling handed down last year. That ruling resulted in the following:
"1) It ended the monopoly NetworkSolutions had enjoyed through the illegal and exclusive encouragement and protection of the US Government for more than a decade.
"2) It ended NetworkSolutions exclusive right to a multi-million dollar revenue stream which they are now forced to share with new competitors.
"3) It forced NetworkSolutions to stop charging an additional excise tax of $30.00 USD. That is the reason com, net & org domains are now available to the public for a mere $35.00 USD or less.
" ... I sent him [Greene] the attached list easily produced on NetworkSolutions own site using their multiple domain features and it clearly proves my point. It identifies hundreds of interNIC domains pointed directly to NetworkSolutions web site with impunity.
"Mr. Greene responded to my objection, by telling me that he would not accuse NetworkSolutions of trademark infringement as he was accusing me, because NetworkSolutions had a long-standing relationship with the US Government. A relationship, already deemed an illegal monopoly by a US Supreme Court judge last year ... .
"There are over 6,000+ domains incorporating the word InterNIC, registered as of this writing, and there are more than 3,000,000 instances of the word�s use on web pages all over the world. Logic provides that any trademark protections the word InterNIC might have had in the past, were lost long before I registered InternicRegistrations.
" ... this case, is motivated by NetworkSolutions and the US Government�s continued resistance to abide by a US Supreme Court ruling ... . It is further motivated by the fact that NetworkSolutions was not pleased that I would not sell them my encryption domains and InterNICregistration domains unless they bought my entire company.
"It is also motivated by the fact that NetworkSolutions was in the process of being purchased by VeriSign ... . Had I known it, I would have negotiated the sale of my encryption domains to VeriSign and SoftBank directly ... .
"I asked NetworkSolutions for a list of internic related domains to present to you in my defense. They hid behind their privacy policy ... . Against my express authorization however, they provided Phil Greene with a complete list of my personal and client domains, in spite of that very same privacy policy.
"Phil Greene wasted no time in emailing me the list to �show me� he had influence at NetworkSolutions and I did not. Phil Greene has harassed R, my new registrar to the point where they are so afraid of him that when I send them an internal memo, they forward it to Phil Greene and Phil Greene �answers me a response.�"
* * *
" ... Even if you found against me right now, Mr. Greene would face the obvious impossible and impractical task of trying to enforce his objection to the use of the word InterNIC worldwide.
"Even if I stopped using my InterNICregistration domains to satisfy this false complaint this very second, Mr. Greene has no legal or practical way of stopping anyone living in any country in the world from continuing to register InterNIC related domains and use them to register domains.
" ... you should prepare yourself that every registration company in the world has vowed to deliberately register InterNIC domains and sell domains from them as I did, to prove just how arbritary [sic] this complaint is.
" ... Mr. Greene filed this complaint to divert attention from the fact that through his personal persecution of me, Mr. Green cost my registrar, my hosting company and myself a great deal of business and has still not answered my complaint that I hold him accountable.
"Mr. Greene has good reasons for having chosen you to arbitrate this case. I respectfully submit that after examing [sic] all the rulings of the �neutrals� at the WIPO office, I too would have chosen you if I wanted the answer Mr. Greene wants in this case.
"It does not escape our attention that a person filing a complaint with your office, is able to choose their arbitrator. Mr. Greene chose you, because I am a strong willed, independent woman who makes direct points when speaking to anyone and will go to any length to defend my legal right to do business in any country.
"Mr. Greene knew that my bold nature would offend the personal sensibilities of any person from a background such as yours, most especially any quiet, conversative [sic] lady. I am a female sole proprietor going against a Government. That doesn�t scare me but he is counting on it scaring you because like me, he knows you grew up in Korea where the government always wins and people who defend their rights in Korea and those who help them, are equally punished. He is counting on that historical if not subliminal fear that most Korean nationals experienced while growing up in Korea. Remember that you are a lawyer and do not let this memory influence your judgement in this case.
"I say it respectfully when I remind you to use your life experience, intelligence and wisdom to realize and understand that you were deliberately �hand picked� to rule on this case. This case did not fall on your desk by accident.
* * *
"To rule in favor of Mr. Greene will only give license to NetworkSolutions to continue intimidating new small businesses who like mine register domain names.
"WIPO cannot expect to be taken seriously as an unbiased third party, by the world at large who is closely following this case, unless it is also prepared to charge Mr. Greene with tortuous [sic] interference of trade and order him to return the losses we have suffered as a result of his false and unenforceable claims.
* * *
"I have not copied Mr. Greene or anyone on this answer, because I am asking, with this writing, for WIPO to consider allowing Mr. Greene and myself and WIPO to conduct the rest of this proceeding in private.
"In a further attempt to truly put this behind us all and to get my company off your pages, I offer Mr. Greene the following:
"I agree to give my word to Mr. Greene that I will end my publicity campaign, in return for him instructing his clients to write me a check for $450,000.00 which equals the averaged amount of the income I lost as a result of this injustice from March through November since I was averaging $50,000.00 in monthly commissions when this happened. Three times that amount is due to my registrar and hosting partner must recover his losses as well.
"Mr. Greene�s clients must restore the funds we lost during the period he disabled our ability to earn a living through my domain names and they need not admit to any wrongdoing. In exchange, I will sign a confidentiality agreement promising never to say another word about this complaint, its subsequent loss of business, or mention the restoration of our financial losses to anyone.
"I am offering this suggestion as it will help put this behind us all. Mr. Greene will be able to save face (this is very important at this stage), my company will be restored, and I will forgive and forget the incident all together. I am offering it directly, in private, by way of your office.
"I do not ask for a penny more than is due us, but I will not accept a penny less."
d. Reply to Response
Like the response discussed above, the Department of Commerce�s December 21, 2000 reply does not comply with the Rules (e.g. it contains no certification as to completeness and accuracy). Nevertheless, the Panel will consider the reply (as well as similar DiTucci communications). It includes, among others, the following statements:
DiTucci�s statements as to the motivation for this complaint and as to NSI�s participation "are pure fantasy, and no truth whatsoever exists in the Respondent�s rather interesting theories, at least with respect to this action. ... Respondent has rather irresponsibly alleged collusion between the Complainant and NSI. Again, the Complainant vociferously asserts that no such collusion exists; indeed, any information obtained by Complainant from NSI�s WHOIS database and relevant to the Respondent is available to anyone."
With regard to this being "another futile attempt by the US Government to protect a single company�s former monopoly position," this action "has nothing to do with anything of the sort. ... this action is an attempt by the U.S. Government to protect its registered U.S. service mark ... and to protect the interests of the Internet community and public at large from confusion ... ." The Department of Commerce summarizes its position previously set out in the complaint.
The Department of Commerce "categorically denies" the accusations as to collusion, etc. "... this action is not the result of �a Supreme Court judge�s ruling�." No such ruling exists. The Department of Commerce cites William Thomas et al v. Network Solutions et al, and suggests that this may be the litigation DiTucci has in mind. The Department of Commerce summarizes the issues in and history of that litigation, noting that charges of antitrust violation against NSI were rejected at both the trial and appellate levels and the U. S. Supreme Court declined to grant certiorari (i.e. the Supreme Court rendered no decision on the merits and the rejection of the antitrust charges remained in effect).
The promotion of competition in the domain name registration arena was the result of the President�s initiative and was not motivated by any court decision.
The Department of Commerce�s cease and desist letter of March 23, 2000, had nothing to do with any alleged negotiation with NSI, the Department of Commerce had no knowledge of any such negotiations, and they had no bearing on efforts to enforce the InterNIC® service mark.
The Department of Commerce acknowledges "other instances of use of the name InterNIC® within other domain names, and the Complainant ... is actively engaged in enforcement of its registered service mark in cases where it believes that the mark is being infringed."
"In 1999, the Complainant filed a domain name dispute with NSI against the domain name I, and succeeded in having that domain name transferred to the U.S. Department of Commerce. It has also filed domain name disputes against I ... " and related domains.
" ... the Complainant .. is also in the process of sending cease and desist letters and similar notices to many other InterNIC-based domain names ... ."
In the Spring and Summer of 2000, the Department of Commerce believed it could settle this dispute. When it became apparent settlement was not possible, the Department of Commerce commenced this action.
The Department of Commerce is taking steps to enforce its service mark against infringement.
As a result of a July 28, 2000 email from DiTucci, the Department of Commerce became aware that "NSI had registered eight (not �hundreds� ...) InterNIC-based domains, and that each domain resolved to the NSI homepage. ..."
"The Complainant ... immediately contacted NSI ... within two weeks, NSI had indeed taken steps to re-direct these eight domains so that they would resolve to I, which is the official InterNIC site. ... The Complainant .. is working with NSI to have these eight domains transferred to the Complainant or another party (such as ICANN) at a future date."
The Department of Commerce is not enforcing its mark against NSI because NSI is authorized to use the name InterNIC, as described in the complaint. In contrast, DiTucci has never been authorized to use the mark.
The Department of Commerce does not object to fair use of its mark at a web site, but it does object "to its use within the disputed domains, and ... to its use in a manner that it considers to be an infringement of the mark, and likely to cause confusion ... ."
The Department of Commerce denies having learned of domain names registered by DiTucci through its "influence" with NSI. Rather, the Department of Commerce found 50 such domain names by going to the WHOIS section the NSI home page.
The Department of Commerce avers it has "no idea what the Respondent is talking about" with regard to harassing R or answering on behalf of R. The Department of Commerce has sent three letters to R.
The Department of Commerce played no role in picking the Case Manager in this proceeding, and DiTucci confuses the Case Manager with the Panelist, which the Department of Commerce had no role in selecting.
The Department of Commerce contends DiTucci�s demand for a $450,000 payment is further evidence of DiTucci�s bad faith.
With respect to DiTucci�s second email of November 9, 2000, the Department of Commerce has taken no action to have domain names removed and has no knowledge of the alleged disappearance of the domains.
The Department of Commerce iterates it has been aggressive in enforcing the mark against infringers, noting "infringement is commonplace on the Internet, particularly with respect to domain name registrations, and ... owners of prominent trademarks face a formidable challenge in enforcing their marks against infringement."
5. Discussion and Findings
a. The Policy
The Policy, effective October 24, 1999, is incorporated by reference into NSI�s service agreement with Respondents. The Policy, together with the applicable Rules, sets forth the terms and conditions under which this dispute is to be conducted and resolved. The only remedies this Panel has authority to grant are (1) to require cancellation of a domain name registration or (2) to transfer a domain name registration from Respondents to the Department of Commerce (Policy, Paragraph 4.(i)).
Paragraph 4.(a) of the Policy directs that Respondents must submit to this mandatory administrative proceeding under the Policy if the Department of Commerce proves, with respect to each domain name in issue, each of the following:
(i) The domain name is identical or confusingly similar to the Department of Commerce�s service mark in issue here (i.e. a mark in which the Department of Commerce has "rights"), and
(ii) 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.
Paragraph 4.(b) of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4.(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by respondent, shall demonstrate respondent�s rights or legitimate interests to the domain name for purposes of Paragraph 4.(a)(ii) above.
b. This Panel�s Authority
This Panel must consider the complaint and a response that conform to the Rules (e.g. Rule 5). The Panel has discretion to, but need not, receive additional submissions (e.g. Rules 10.(a), 10.(b), 10.(d), and 15.(a)). As previously noted, notwithstanding the failure of all communications, except the complaint, submitted to the Center to comply with the Rules, the Panel has exercised its discretion in favor of receiving and considering all such communications received by the Center before January 14, 2001.
The Panel elects in its discretion to consider all six domain name registrations in dispute in this proceeding.
The Panel is confined to making findings of fact, reaching conclusions of law, and rendering relief only within the Panel�s limited subject matter jurisdiction. Accordingly, the Panel has no authority to grant any of the relief demanded by DiTucci. The Panel must confine its considerations and decisions to the three elements of Policy, Paragraph 4. (a) that the Department of Commerce must prove. The Panel turns now to such considerations and decisions.
c. Identity or Confusing Similarity
The Department of Commerce has the burden of proving this element and each of the other two elements of Paragraph 4.(a) of the Policy.
Not only are the Department of Commerce�s service mark "InterNIC" and the six domain names in issue virtually identical on their faces, it is clear that DiTucci intended to and did benefit from the confusion resulting from this identity. Among all the communications from DiTucci in this proceeding, there is no challenge by DiTucci to either of these two propositions.
An issue remains, in light of DiTucci�s references to existence of other domain names that include some or all of the term "Internic", as to whether or not the Department of Commerce has a protectable interest (i.e. "rights") in its service mark "InterNIC" sufficient to warrant a finding in favor of the Department of Commerce in respect of this element. The Department of Commerce owns the U.S. registration for the service mark issued January 17, 1995 - more than five years ago. That registration is presumably entitled to the presumptions set out in 15 U.S.C. �� 1065 (incontestability) and 1115 (validity, ownership, exclusive right to use). DiTucci has made no showing to the contrary. DiTucci�s unsupported averments as to other uses of the "Internic" term, or variants, are insufficient to undercut these statutory presumptions -- especially in light of the Department of Commerce�s uncontested averments as to its attempts to enforce its service mark.
Thus, on this record, the Panel finds that this element has been established.
d. Rights or Legitimate Interests
On this record, no challenge has been leveled with respect to the facts that the Department of Commerce�s service mark was used in commerce and was registered in the United States before DiTucci embedded the mark in each of the six domain names in issue. Also, no challenge has been leveled with respect to the fact that the Department of Commerce has not authorized either of the Respondents to use the "InterNIC" mark.
Mere registration of the six domain names by DiTucci does not establish rights sufficient to avoid Paragraph 4.(a)(ii) of the Policy. E.g. Distinctive Designs International v. , NAF Case No. FA0008000095478, Pharmacia & Upjohn v. Peoples Revolutionary Suicide Jazz Band, WIPO Case No. D2000-0816, CBS Broadcasting v. Worldwide Webs, WIPO Case No. D2000-0834.
Stretching the record as far as possible in favor of Respondents, it appears that DiTucci is and has been in the business of registering domain names on behalf of Internet users and providing other services. DiTucci asserts in the February 29, 2000 email, without certification or other corroboration as to its accuracy, that her I business "does an average of 2500 domains per month," generating $150,000 to $200,000 per month. Elsewhere in her various emails are general references to this business. For example, DiTucci claims that her company has been valued at $225 million, without providing any competent supporting evidence.
DiTucci�s business activities, which appear to have been in place before notice to DiTucci of this dispute, were not in connection with a bona fide offering of goods and services under the "InterNIC" mark. E.g. State Farm Mutual Automobile Insurance Company v. Douglas LaFaive, NAF Case No. FA0008000095407, North Coast Medical v. Allegro Medical, NAF Case No. FA0008000095541.
Here, infringement of the "InterNIC" mark was clear at the times DiTucci registered the six domain names in issue. Contrary to DiTucci�s apparent impression of the effects of registration, registration of a domain name by NSI is not a confirmation that use of the domain name will not infringe a trademark or service mark. Rather, NSI relies expressly on the registrant�s representations and warranties to NSI that, inter alia (Policy, Paragraph 2):
"b. to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;
"c. you are not registering the domain name for an unlawful purpose; and
"d. you will not knowingly use the domain name in violation of any applicable laws or regulations."
Paragraphs 2 concludes:
"It is your responsibility to determine whether your domain name registration infringes or violates someone else�s rights."
DiTucci necessarily knew of the "InterNIC" mark. DiTucci necessarily knew of, and intended to benefit from, the value of the mark. It has not been fair use by DiTucci of the mark for DiTucci to attract visitors to her web site and divert them from the official InterNIC web site. E.g. Chanel v. Estco Technology Group, WIPO Case No. D2000-0413.
As the Panel finds in Section 5.e., infra, DiTucci�s registration and use of the six domain names have been in bad faith. This negates any attempt by DiTucci, that may be arguably gleaned from all her communiques, to satisfy Policy, Paragraph 4.(c)(i). (Footnote 9)
Nothing in DiTucci�s communications suggests that DiTucci, as an individual or a business, has been commonly known by any of the six domain names in issue. Also, as noted above, DiTucci began using the Department of Commerce�s service mark (1) at least five years after the Department of Commerce or its predecessors had used the mark, (2) almost four years after the U.S. registration for the mark issued, and (3) for the purpose of directing Internet users to DiTucci�s web site rather than to their expected destination, viz.: the official InterNIC web site. Thus, DiTucci has not satisfied Paragraph 4.(c)(ii) of the Policy.
DiTucci has plainly not been making a noncommercial or fair use of the six domain names. Rather, DiTucci has used the domain names either to misdirect consumers for DiTucci�s commercial benefit, to attempt to profit handsomely from the sale of one or more of the domain names, or to accomplish both objectives. That a domain name registration may be sold and purchased does not imply any right in a registrant to sell a domain name that is identical, or confusingly similar, to a valid trademark or service mark. E.g. CBS Broadcasting, supra. DiTucci has not established the elements of Policy, Paragraph 4.(c)(iii).
In short, DiTucci�s activities, whether in actually using one or more of the six domain names as confusing and misleading addresses for active web sites, or in offering one or more of the domain name registrations for sale, long after the service mark was first used by its legitimate owners and long after the owners� legitimate services had generated widespread goodwill, all point decidedly away from any inference that Respondents have any rights or legitimate interests in any of the six domain names in issue.
The Department of Commerce�s complaint established prima facie that Policy, Paragraph 4.(a)(ii) had been satisfied, i.e. that Respondents have no rights or legitimate interests in any of the six domain names. Upon that showing having been made, the burden of proof shifted to Respondents. That is, the burden shifted to Respondents to prove that Respondents have rights and legitimate interests in light of such factors as those set out in Policy, Paragraph 4.(c). Respondents have failed to carry that burden.
The Panel finds that Respondents have no rights or legitimate interests in any of the six domain names in dispute.
e. Registration and Use in Bad Faith
Registration and use of the domain names in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence. Both registration in bad faith and use in bad faith must be proved by the Department of Commerce.
DiTucci�s many communications, demands, threats, attempts to derail this process, unfounded speculations, and ad hominem attacks have no place here -- other than to confirm that DiTucci is attempting in this specific proceeding to play well outside the foul lines. (Footnote 10) This proceeding is to be conducted in accordance with well-defined and well-grounded rules. The jurisdiction and authority of the Center and of the Panel are well-defined and well-differentiated. To permit in any way DiTucci�s conduct to divert the Panel from considering the three elements of Paragraph 4.(a) would be to betray the public and emasculate an entirely rational and effective process of dispute resolution.
DiTucci has ignored the Policy and the Rules, if not flouted them, marched to her own erratic beat, and sought relief far in excess of anything the Panel is authorized to award. DiTucci�s strident, misguided and unsupported accusations tend only to discredit any relevant point DiTucci may have attempted to make -- of which there are precious few. DiTucci has addressed none of the factors that may be relevant here -- other than to question the ability of the Department of Commerce to enforce its service mark globally. (Footnote 11)
The avalanche of charges and threats launched by DiTucci might well be regarded by another Panel on this same record as sufficient to find bad faith registration and use of the six domain names. This Panel declines to so find. The Panel examines other, more traditional, factors which bear on this issue. In so doing, in order to assure that DiTucci is afforded due process and every benefit of doubt, DiTucci�s pre-January 14 communications have been considered here by the Panel in a light as favorable as possible to DiTucci.
Notwithstanding that DiTucci may have had, and may still have, an on-going business relating to domain name registrations, DiTucci acted in bad faith in attempting to demand money from the Department of Commerce in connection with this proceeding. If there is any merit to any of DiTucci�s accusations as to alleged wrongs visited on her, another forum is the place to air and to resolve them.
DiTucci�s registration and use of the six domain names in issue clearly has been for the purpose of attracting, for commercial gain, Internet users to DiTucci�s web sites by creating a likelihood of confusion with the Department of Commerce�s service mark "InterNIC". DiTucci�s February 29, 2000 email offering for sale "InternicR" touts that, since DiTucci had registered the six domain names, "people [who] go to NetworkSolutions, search for the word �internic� and are given a �live link� directly to our web site." Diversion to DiTucci�s web site and away from the official InterNIC web site is plainly the desired and actual consequence of this arrangement. At minimum, DiTucci counted on, and achieved, initial interest confusion from the six domain name registrations. The prospects of achieving the intended diversion were materially enhanced as a result of DiTucci�s registering not one, but six, virtually identical domain names.
Bad faith registration and bad faith use are readily inferred when a mark is used in even one domain name to route users to web site where services are provided like those provided at the trademark or service mark owner�s authorized web site. E.g. State Farm Mutual Automobile Insurance Company, supra, Metallica v. Josh Schneider, NAF Case No. FA0009000095636, Marriott International v. Momm Amend Ia, NAF Case No. FA0009000095573.
DiTucci�s repeated demands for large sums of money from the Department of Commerce as compensation for the transfer of the offending domain name registrations is further evidence of bad faith use of the registrations. DiTucci�s asking price of US$100 million, her references to the high level of monthly activity at her web site, and that the web site "generates $150K to $200K cash monthly (not to mention web hosting fees)" all confirm the substantial value DiTucci placed on, and assertedly enjoyed from, the Department of Commerce�s service mark and the confusion she intentionally created. DiTucci�s demand that the Department of Commerce pay her $50,000 for each month during the period March through December 2000 confirms that she attributes great value to the confusion created by her use of the Department of Commerce�s mark in her six domain names. E.g. America Online v. Chinese ICQ Network, WIPO Case No. D2000-0808.
DiTucci�s failure to advise NSI of the identity of the actual registrant of each domain name, and failure to inform this Panel of the owner to whom DiTucci purportedly has transferred the domain names, is further evidence of DiTucci�s bad faith registration and use. Initiating and perpetuating this shell game only serves to reinforce this inference.
It is plain to this Panel on this record that DiTucci both registered and used the six domain names in issue for the purpose defined in Paragraph 4.(b)(iv) of the Policy. Accordingly, the Panel finds that the Department of Commerce has established the elements of Policy, Paragraph 4.(a)(iii).
Overall, the Panel finds it abundantly fair to conclude on this record that Respondents have no credible and persuasive evidence to undercut the Department of Commerce�s averments with respect to Paragraphs 4.(a)(i), (ii) or (iii) of the Policy.
6. Decision
In light of the findings by the Panel, the Panel decides that the Department of Commerce has proven that (a) each of the six domain names in issue is both identical and confusingly similar to the service mark "InterNIC", (b) Respondents have no rights or legitimate interests in respect of any of the six domain names, and (c) each of the six domain names has been registered and used in bad faith.
Accordingly, the Panel rules that each of the six domain name registrations, i.e.
,
,
,
,
, and
be transferred to the U.S. Department of Commerce.
David W. Plant
Sole Panelist
Dated: January 22, 2001
Footnotes:
1. Neither of DiTucci�s November 9, 2000 emails complies with the requirements of the Rules and Supplemental Rules regarding responses. Nonetheless, as stated infra in Sections 3.b., 4.c., 4.d. and 5.b., the Panel has elected to consider both emails (as well as other communications in this file) in determining this matter.
2. US$50,000 per month for the period March - December 2000
3. DiTucci stated she keeps the documents in a vault at a bank. WIPO and the Panel are not privy to these documents.
4. The Panel completed its draft of this decision and transmitted it to the Center on January 14, 2001. Thereafter, the Center received additional emails from DiTucci on January 15, 16, 17 and 18, 2001. The gist of these emails is the same as DiTucci�s earlier emails. The Panel has read the January 15 - 18 emails but has not relied on any of them in this decision.
5. The Department of Commerce details the history of the U.S. Government�s role in "the birth and management of the Internet." In 1998, the Department of Commerce assumed responsibility for administering the non-military domain name infrastructure, in particular the privatization of the domain name system.
6. The Department of Commerce often refers to both respondents collectively as the "Respondent".
7. The Department of Commerce states the date of the email is February 29, 1999. There was no February 29 in 1999, and the printout of the email is dated February 29, 2000.
8. The Department of Commerce notes that DiTucci is wrong in asserting that its lawyer, Greene, is acting on behalf of NSI.
9. Nowhere in her emails does DiTucci refer to any paragraph of the Policy or the Rules.
10. For example, the Department of Commerce did not hand pick the Case Manager, the Case Manager is not the panelist, attempts to intimidate the Center or any of its staff are entirely misplaced and uncalled for, mischaracterizations of judicial opinions are not helpful, unsupported speculations as to collusion are without weight, assertions as to U.S. - China relations have no place here, attempts to quietly "fix" this dispute should never have been contemplated or proposed, demands that this proceeding be removed from the Center�s website are absurd, demands that the Center arrange for money to be paid to DiTucci are irrational, and threats to go public and to sue WIPO are misguided and of no effect in this proceeding.
11. As the Panel has already noted, Section 5.c., supra, DiTucci�s assertions and contentions on this score fall far short of compelling a conclusion that the Department of Commerce has no rights in its service mark that are enforceable here.
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