WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Richard L. Kane v. Nick Devine
Case No. D2001-1028
1. The Parties
The Complainant is Richard L Kane, 6524 Marbletree Lane, Lake Worth, Florida 33467, United States of America. He is represented by Mr. David H. Zimmer, Esq, 6477 NW, 38th Way, Boca Raton, Florida 33496, United States of America.
The Respondent is Nick Devine, whose address is given as The Great Estate, Inchgarth House, 13 Arran Road, London SE6 2LT , United Kingdom.
2. The Domain Names and Registrar
The domain names at issue are:
The Registrar with which the disputed domain names are registered is Signature Domains, Inc, 4021 Laguna Street, Miami, Florida 33146, United States of America.
3. Procedural History
On August 15, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.
On August 21, 2001, the Registrar responded to a request for verification of the domain names and confirming details of the Respondent, that the Policy applied to the domain names and that the Respondent is the current registrant of the domain names.
On August 22, 2001, the WIPO Center transmitted a Notification Of Complaint And Commencement of Administrative Proceedings to the Respondent. The Respondent was advised that a response to the Complaint was required within 20 calendar days i.e. by September 11, 2001.
No response was received on behalf of the Respondent.
On September 18, 2001, a Notification of Respondent Default was sent to the Respondent.
On September 21, 2001, the WIPO Center advised the parties that Andrew Brown, had been appointed to serve as sole panelist in the case.
The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.
4. Factual Background
The Complainant is an individual operating from a business address in Florida. He is the registered proprietor of the trademark WEALTH WIZARD in the United States in class 9 for the following goods (registration no. 2,451,245):
"Computer program for stock trading"
The Complainant annexed to his submissions the trademark application for WEALTH WIZARD filed October 15, 1997. The application was filed on the basis of "Intent to Use" and was accepted on April 6, 2001. The Certificate of Registration, also annexed, records that the Complainant�s first use of the mark was on June 1, 1997, and the first use in commerce was January 1, 2000.
The Complainant makes the following statement as to his use of and reputation in the trademark WEALTH WIZARD:
"Beginning well before August 1997 and continuing through this day of filing, Complainant has endeavored to produce a fully automated artificial intelligence based securities and commodities trading system. He is known throughout the financial industry for the WEALTH WIZARD, and the use of this name by any other, in as much as it is identical in nature, is confusing at best, especially within the context of use within the financial service industry."
The Respondent registered the disputed domain names on March 6, 2000.
The Complainant states that "several initial attempts" to contact the Respondent, via telephone and email, were unsuccessful. However, he advises that on or about the end of July 2001, the Respondent contacted the Complainant�s counsel. The Complainant states that:
"Contact with Respondent leading to the amicable resolution of the Respondent�s unlawful use of the "www." and "www." has begun but is unlikely to conclude in Respondent relinquishing complete control of the Wealth Wizard name to the Complainant."
No correspondence with the Respondent is annexed or produced as part of the Complaint. The Panel therefore has only the Complainant�s description of that "contact".
5. Parties� Contentions
A. The Complainant
The Complainant claims that the use of the trademark WEALTH WIZARD by any other person is confusing, especially where that use is in the context of the financial service industry.
The Complainant contends that the Respondent has no rights or legitimate interest in respect of the mark and that the Respondent will not be able to demonstrate his rights to and interests in the domain name as:
"(i) before receiving any notice, Respondent�s use of the Wealth Wizard domain name or web site a name corresponding to the Wealth Wizard domain name or website in connection with a bona fide offering of goods or services did not exist; (ii) Respondent was not commonly known by the Wealth Wizard domain name, and acquired no trademark or service mark rights; and (iii) Respondent made no legitimate commercial or noncommercial or fair use of the Wealth Wizard domain name.
Additionally, Respondent failed to ever develop any of his domain name sites. Both "www." and "www." domain names, as controlled by the Respondent, exhibit a �coming soon� logo for Wealth Wizard. These two sites, whose domain names were registered more than sixteen (16) months ago on March 6, 2000, remain unused."
The Complainant also contends that as the Respondent operates within the boundaries of the United Kingdom, the ".com" or ".org" domain names are "grossly inappropriate as they are reflective of use within the United States".
B. The Respondent
As noted, the Respondent did not file a Response.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
� That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
� That the Respondent has no rights or legitimate interests in respect of the domain name; and
� That the domain name has been registered and is being used by the Respondent in bad faith.
Domain name is confusingly similar/identical to a trademark in which the Complainant has rights
The Complainant has provided evidence of his trademark registration for WEALTH WIZARD in the United States. However, as noted, the Certificate of Registration for this mark states that the first use of the trademark in commerce was January 1, 2000.
The Complainant has not produced any supporting or corroborative evidence as to his promotion or use of this mark in the United States other than the brief statement set out in section 4 of this decision. The claim is made that the Complainant is "known throughout the financial industry for the Wealth Wizard" but the Panel has no material for verifying the extent of this claimed reputation or when it arose. The Complaint itself is ambiguous about the trading activities of the Complainant, since it states "beginning well before August 1997 and continuing through this day of filing Complainant has endeavored to produce a fully automated artificial intelligence based securities and commodities trading system".
Plainly enough the domain names and are identical to the Complainant�s registered trademark in the United States. However, while the technical requirements of paragraph 4(a)(i) appear to be met, the Panel notes:
(a) there is no verified or corroborated evidence as to the extent and reputation of this mark; and
(b) the US trademark was not in fact accepted for registration until April 2001 and was not registered until May 2001 � more than a year after the domain names were registered.
These facts have an impact on the consideration of the remaining requirements under paragraph 4(a) of the Policy.
No legitimate rights or interest in respect of the domain name
The Complaint does not provide any details concerning the Respondent other than that he has registered the domain names in dispute and, as at the date of the Complaint, had not developed these.
The burden on the Complainant is to establish that the Respondent has no rights or legitimate interest in the domain name.
This issue has some relationship with the Complainant�s claimed rights to the name or trademark in the first place. If the Complainant can show that its name or trademark is well known, well established or highly distinctive, then the burden of showing that the Respondent has no rights or legitimate interest in that name is more easily discharged. Correspondingly, however, if the name or trademark relied on is only recently established or is of modest distinctiveness, then it may be more difficult for the Complainant to show that the Respondent has no legitimate interest in the domain name. In John Fairfax Publications Pty Limited v. Domain Name 4U and Fred Gray, WIPO Case No. D2000-1403 (the domain name ) the marks relied on were Australian trademarks and related to a relatively descriptive name. The majority of the Panel held that there was no evidence that the first respondent, who was a dealer in generic names in the United States, knew or ought to have known about a financial newspaper in Australia.
Here the circumstances are similar. There is a complete lack of evidence as to the promotion of the Complainant�s trademark or of its reputation in the market. The registered trademark relied on was in fact not registered until after the domain names. This fact would not have been fatal had the mark been actively promoted and/or had achieved a well-known status before then. But there is no such evidence.
In the circumstances, the Panel finds that the Complainant has failed to show that the Respondent had no legitimate rights or interest in respect of the domain name.
Domain name has been registered and is being used in bad faith
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Because of the findings of the Panel in relation to the first two grounds under the Policy, this ground is mentioned only briefly. The Panel does not consider that the Complainant has established any evidence that the domain name was registered or acquired by the Respondent in bad faith. None of the identified circumstances in paragraph 4(b) are mentioned or dealt with in the Complaint. Nor is any other ground of bad faith identified.
7. Decision
For the foregoing reasons, the Panel decides that:
(a) the domain names and registered by the Respondent are identical to a trademark in which the Complainant has rights;
(b) the Complainant has failed to establish that the Respondent does not have a legitimate right or interest in respect of the domain names and ;
(c) the Complainant has failed to establish that the domain names and have been registered and are being used in bad faith.
Accordingly, the Panel refuses to order that the domain names and be transferred to the Complainant.
Andrew Brown
Sole Panelist
Dated: October 2, 2001
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