WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Planetary Society v. Salvador Rosillo D
Case No. D2001-1228
1. The Parties
Complainant is The Planetary Society, a non-profit organization located in Pasadena, California, USA.
Respondent is Salvador Rosillo, an individual located in New York, New York, USA, and d/b/a d.
2. The Domain Names and Registrar
The domain names at issue are: , , (the "Domain Names").
The registrar is eNom, Inc.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, approved October 24, 1999 ("the Rules").
The Complaint was submitted on October 9, 2001. On October 19, 2001 eNom, Inc. confirmed registration of the Domain Names at issue to the Respondent. An amended Complaint was filed on November 6, 2001. On November 20, 2001, the Respondent requested an extension of the deadline for filing a Response. On November 22, 2001, the Respondent�s request for an extension was granted. The Response was submitted on January 8, 2002.
On January 18, 2002, the WIPO Arbitration and Mediation Center appointed Mark V. B. Partridge as Sole Panelist.
4. Factual Background
The Complainant is a California non-profit organization founded in 1980 by Drs. Carl Sagan, Bruce Murray and Louis Freidman to encourage the exploration of our solar system and advance the search for extraterrestrial life. According to Complainant, it has over 100,000 members in its society representing over 140 countries, making it the largest space interest group on Earth. Many noted scientists from around the world serve on Complainant�s Board of Directors and Council of Advisors.
Complainant has developed and sponsored numerous space-related projects, including the Mars Microphone project, which was the first privately funded instrument aboard a U.S. space mission. Complainant also offers four periodical publications and partners with an on-line retailer to offer calendars, apparel, educational items and photographs for sale. Many of these items bear the Complainant�s trademark, and Complainant has used the mark since 1979.
Complainant claims to spend over $1,000,000 a year in sponsorship and promotion of its mission, with many of these activities prominently featuring Complainant�s mark. Complainant cites use of its mark on literature, stationery, educational materials and on the Internet. Complainant relies on its Internet web site to generate most of its membership and, therefore, most of its membership fees.
The Respondent is an artist and entrepreneur who has been creating space and other "Dimensional Artworks" for over 20 years. Respondent�s works have been exhibited internationally, and he is most noted for his 1997 creation of a large-scale replica sculpture of "The Face on Mars." This sculpture was shown to the media in 1997 in conjunction with the Pathfinder�s Mars landing, and as a result Respondent appeared on CNN. For some time, Respondent operated an Internet web site at where he offered Internet domain names for sale or lease, including . This web site was operational as late as October 5, 2001.
On September 20, 1999, Complainant applied for registration in the mark THE PLANETARY SOCIETY with the United States Patent and Trademark Office (USPTO) for educational services, course materials, film productions and entertainment exhibitions associated with the exploration of the solar system and the search for extraterrestrial life.
On January 20, 2000, Respondent registered the domain name with Network Solutions Inc. ("NSI").
On August 30, 2000, Complainant registered the domain name , which is not in dispute in this matter, with AlterNIC.
On February 1, 2001, Respondent transferred the registration of from NSI to eNom, Inc.
Also in February of 2001, Complainant�s new Chief Operating Officer (COO), while cataloging and verifying all of Complainant�s intellectual property, discovered the web site , which was linked to a "Best of the Web" portal and offered links to various services not associated with Complainant.
After conducting some initial research and discovering that the domain name was registered to Respondent, on March 12, 2001, Complainant�s COO sent Respondent an electronic mail message at the e-mail address Respondent listed when registering the Domain Name with NSI. The message asserted Complainant�s rights in the mark and requested that Respondent contact Complainant regarding a procedure to transfer the Domain Name to Complainant.
Respondent failed to respond to this message and denies having received it.
On March 13, 2001, the USPTO placed the mark THE PLANETARY SOCIETY on the Principal Register, Reg. No. 2434846.
On March 29, 2001, Respondent registered with eNom, Inc.
On March 30, 2001, Complainant registered , which is also not in dispute in this matter, with AlterNIC.
Also on March 30, 2001, Complainant�s COO contacted the Respondent by telephone using the number listed in the Whois search database of Network Solutions, Inc. Complainant contends that during this phone call, Respondent acknowledged receipt of the March 12, 2001 electronic mail message, but asserted that Complainant had no claim to the disputed Domain Name. Respondent contends he did not acknowledge receiving the electronic mail.
During this phone conversation, Respondent denied any knowledge of the existence of Complainant. Respondent acknowledged that he does receive a referral fee for every visitor that is directed to the "Best of the Web" homepage via . Also during this conversation, Complainant offered to reimburse Respondent for any reasonable costs he incurred in the registration of .
Later on March 30, 2001, Complainant again contacted Respondent by telephone to further discuss a transfer of ownership of . Respondent ended the second conversation by stating that he did not have time to deal with the issue at that time, but would get back to Complainant with a price required to transfer the Domain Name at a later date.
On June 15, 2001, Complainant sent an electronic mail message to Respondent again asserting Complainant�s rights in the mark and requesting that Respondent cease using the Domain Name and transfer ownership of the mark to Complainant. This message was apparently not opened by Respondent and was returned to Complainant through an automatic return receipt feature. Complainant also sent an identical letter dated June 15, 2001, to Respondent via registered mail. Respondent declined to accept this letter.
5. Parties' Contentions
Complainant contends that the Domain Names are identical to and "directly incorporate" Complainant�s mark. Complainant also contends that Respondent has no rights or legitimate interest in the Domain Names because he has failed to use the Names in a bona fide offering of goods and services, nor has ever been commonly known by the Domain Names.
Complainant contends that Respondent�s use of the is solely to obtain referral fees from the "Best of the Web" portal, and that Respondent�s sole purpose for registering was to prevent Complainant from registering its properly trademarked name as a domain name. Finally, Complainant contends that Respondent has engaged in a pattern of registering domain names that are confusingly similar to established trademarks and offering the domain names for sale through the web site . Complainant contends the above are all indicative that Respondent registered and used the Domain Names in bad faith.
Respondent contends that Complainant had no rights in the mark THE PLANETARY SOCIETY when Respondent registered the first domain name because the mark had not yet been granted federal registration. Respondent further contends that the Complainant�s mark is generic or merely descriptive and may be registered as domain names on a first come first served basis.
Respondent also contends that he has a legitimate interest in the Domain Names as a result of his participation in The Planetary Citizens Registration Campaign in 1973. Respondent contends that he made a "good faith" registration and use of the Domain Names, that he did not intend to "interfere and prevent" Complainant from registering its trademarked name, and that his lack of knowledge of Complainant�s rights at the time he registered the Domain Names prevent a showing of bad faith use and registration.
6. Discussion
Our inquiry focuses on three issues: (1) are the Domain Names confusingly similar to a trademark or service mark in which Complainant has rights; (2) does Respondent have a legitimate interest in the Domain Names; and (3) have the Domain Names been registered and used in bad faith? The Complainant has the burden of proof on each of these issues.
A. Confusing Similarity
Save the absence of the spacing between the words in the mark and the ".com" extension, Respondent�s Domain Names, and , are both virtually identical to Complainant�s registered mark. However, a threshold question is whether Complainant had established a protectable right in THE PLANETARY SOCIETY at the time Respondent registered either of the Domain Names. In order to have a protectable right, Complainant�s marks must be distinctive and used in commerce. Federal registration of a mark is prima facie evidence of distinctiveness.
The record shows that Complainant, as of March 13, 2001, holds a federal registration in the mark THE PLANETARY SOCIETY. Respondent registered the Domain Name on March 29, 2001, 16 days after Complainant�s federal registration was granted. Because the Complainant clearly had protectable rights when Respondent registered , and the Domain Name is identical to Complainant�s registered mark, Complainant succeeds on the first element as to the Domain Name .
Respondent contends that because he registered the Domain Name on January 20, 2000, more than a year before Complainant�s federal registration in the mark was granted, Respondent�s registration of the Domain Name pre-dates any of Complainant�s protectable rights in the mark. Respondent overlooks the fact that Complainant may have had common law rights in the mark at the time Respondent registered the Domain Name. The record shows sufficient public use of Complainant's name to establish common law rights prior to Respondent's registration of the domain name. Moreover, the effective date of Complainant's federal trademark rights under its registration is September 20, 1999, the filing date of the application, and is prior to Respondent's first domain name registration. Thus, Complainant also succeeds on the first element as to the Domain Name .
B. Legitimate Interest
According to paragraph 4(c) of the Policy, a Respondent should be found to have a legitimate interest in a domain name if: (1) before any notice of the dispute, Respondent�s use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services; or (2) Respondent has been commonly known by the domain name; or (3) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue.
Respondent contends that he has a legitimate interest in the Domain Names as a result of his participation in The Planetary Citizens Registration Campaign in 1973. Also at that time, Respondent was Editor-in-Chief of Septagon Magazine, in which he provided space for the Planetary Citizens Registration Campaign to publicize its aims and activities and seek new members. It is in this context that Respondent claims to have first encountered the term "Planetary Society."
Merely encountering the term "Planetary Society" does not give Respondent a legitimate interest in that term. The Policy establishes three specific ways for a Respondent to establish a legitimate interest in a domain name. Respondent�s explanation for acquiring a legitimate interest in the mark clearly does not establish that he is or has ever been commonly known by the domain name. Neither does Respondent�s claim of legitimate interest establish that he is making a noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant�s mark. In fact, the record shows that Respondent has offered for sale or lease, which is clearly not a noncommercial or fair use of the Domain Name.
The question remains as to whether Respondent was using either of the Domain Names in connection with a bona fide offering of goods and services, or had a demonstrable plan to do so, before receiving notice of the Complaint.
Under the Policy, the relevant point in time to determine whether the registrant of a domain name has legitimate rights or interests is before the registrant has any notice of the dispute. See Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938. Clearly, Respondent does not have legitimate rights or interests if he only began using a domain name after having received a cease and desist letter, or other notice of the dispute. See Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150.
Respondent registered the Domain Name 16 days after Complainant�s mark was placed on the federal register. Placement on the principal register gave Respondent constructive notice of Complainant�s rights in the mark. In addition, although he denies receiving it, Complainant sent an electronic mail message to Respondent on March 12, 2001, informing Respondent of Complainant�s interest in the mark. The record shows that Respondent had at least constructive notice, and possibly actual notice, of the Complainant�s rights when he registered the second Domain Name . At the time he registered said Domain Name, Respondent was not using the Domain Name in connection with a bona fide offering of goods and services, nor did he have a demonstrable plan to do so. Therefore, Complainant succeeds on this element as to the Domain Name .
Respondent registered the Domain Name prior to any notice of the dispute, so the relevant inquiry becomes whether Respondent was using the Domain Name in connection with a bona fide offering of goods and services, or had a demonstrable plan to do so, prior to receiving such notice.
The record shows that Respondent was using the Domain Name in two ways. First, Respondent offered the Domain Name for sale through his own web site . Second, Respondent linked to the "Best of the Web" homepage in exchange for a linking fee.
Panelists have held that a Respondent that is using a domain name in connection with the sale of generic and descriptive domain names is using the domain name in connection with a bona fide offering of goods and services. See General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.), FA 1000092531. Here, however, Respondent is using in connection with the sale of what Respondent considers generic or descriptive domain names. The record does not show, and Respondent does not contend, that he is using or has ever used in connection with the sale of other domain names.
The record does show that Respondent was offering for sale or lease. The mere holding of a domain name for sale or lease should not be considered a bona fide offering of goods or services under the Policy. Otherwise, cybersquatting itself would create a legitimate interest, clearly an anomalous and undesirable result.
As to the use of the Domain Name as a link to the "Best of the Web" portal, Complainant contends that Respondent was providing this link in February of 2001, which is before Respondent can be charged with any notice of the dispute. However, under The Policy the mere use of a domain name in connection with the sale of goods or services prior to notice of Complainant�s objections is not enough, because not all such use qualifies as bona fide use. "To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy." Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M", WIPO Case No. D2000-0847. I find that Respondent�s use of to link to the "Best of the Web" portal for a fee did not rise to the level of bona fide use in connection with the offering of goods and services under The Policy.
C. Bad Faith
One of the most common findings of bad faith under The Policy is where a Respondent makes or attempts to make an outright sale of a disputed domain name to the Complainant or to a competitor of the Complainant for consideration in excess of the Respondent�s out-of-pocket expenses directly related to the domain name. The record in this matter clearly shows that Respondent was offering the Domain Name for sale or lease over the Internet.
Bad faith is also found where Respondent uses a domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent�s 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 the Respondent�s web site or location or of a product or service on the Respondent�s web site or location. The record here demonstrates that Respondent linked to the "Best of the Web" portal in exchange for a linking fee. This indicates that Respondent was using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent�s web site by creating a likelihood of confusion with the Complainant's mark.
Respondent claims that he could not have acted in bad faith because he was not aware of Complainant�s rights in the mark when he registered the Domain Name in January of 2000. To support this contention, Respondent argues that Complainant�s mark is not "famous" in the State of New York (where Respondent resides), and that Complainant does not advertise in Respondent�s geographic or demographic region. The record contradicts Respondent's position.
First, Complainant advertises over the Internet. Through his business Respondent has significant contact with the Internet. This is evidenced by the three domain names that the record shows he holds, that he has transferred registrars of the two of the Domain Names at dispute in this case on at least one occasion, and he sells domain names as a part of his business.
Second, Respondent provides the Panel with a list of contributors to the Complainant�s Political Action Committee. This list of over one hundred corporations includes dozens of nationally known corporations, nearly all of which do business in New York, and more than a few of which are headquartered in New York. If so many businesses nationwide knew of Complainant and Complainant�s Political Action Committee, it is difficult to accept that Respondent was totally unaware of Complainant�s existence. The record also shows that Complainant's activities were widely publicized in the national media. Anyone making minimal inquiries via the Internet would have encountered Complainant's use. Finally, Complainant's application for trademark registration was a matter of public record at the time Respondent registered the first of the disputed Domain Names. Under the circumstances, the most plausible conclusion is that Respondent knew or should have known of Complainant's prior use of PLANETARY SOCIETY.
As for the Domain Name , the record shows that Respondent had at least constructive notice of Complainant�s rights in the mark as a matter of law when Respondent registered this Domain Name. Furthermore, because of the timing and circumstances of the registration of , I find that Respondent registered the Domain Name primarily for the purpose of disrupting the Complainant�s business, specifically, the Complainant�s on-line membership drive.
Based on a preponderance of the evidence presented, I find that Respondent registered and used the Domain Names in bad faith.
7. Conclusion
The Domain Names are confusingly similar to Complainant's mark; Respondent lacks any right or legitimate interest in the Domain Names; and the Domain Names were registered and used in bad faith. Therefore, the Domain Names and should be transferred to Complainant.
Mark V. B. Partridge
Sole Panelist
Dated: February 12, 2002
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