WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr Roger Libby v. Tunga Tuzlaci and/or Tumay Asena
Case No. D2001-1342
1. The Parties
The Complainant is Dr. Roger Libby, represented by Preston Gates & Ellis, LLP, 701 Fifth Avenue, Suite 5000 Seattle, WA 98104-7078.
The Respondent is Tunga Tuzlaci and/or Tumay Asena, Gelincik Sokak, 11/2 Kavaklidere, Ankara, TR 06690, Turkey.
2. The Domain Name and Registrar
The Domain Name is dispute is . The concerned Registrar is iH, Inc. dba DotR.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO") by email on November 26, 2001, and in hardcopy form on November 12, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules", "the Supplemental Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). DotR, Inc. has confirmed that ("the Domain Name") was registered through DotR, Inc. and that Tunga Tuzlaci is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On November 20, 2001, WIPO issued a Notification of Deficiency of Complaint (failure to send Complaint by email) and received a satisfactory response on November 26, 2001.
On November 28, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent, inter alia, that the last day for sending its Response to the Complainant and to WIPO was December 18, 2001. No Response was received. On December 19, 2001, WIPO issued a Notification of Respondent Default.
The Panel was properly constituted. The undersigned Panellist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel�s Decision was January 24, 2002.
4. Factual Background
The Complainant is well known in the United States as a certified sex therapist who practises (i.e. conducts business) under and by reference to his name "Dr Roger Libby".
The Complainant first registered the Domain Name on April 5, 1996, and used it to promote his services. He claims that in an average 10 day period he received 1,891 hits to his website (via logging on, or search engine "hits") and 337 actual visitors to his page.
In 1991, the Complainant changed addresses but failed to update the ownership record details for the Domain Name. As a result he failed to receive notification that the Domain Name registration was about to expire and the Domain Name duly expired.
On July 10, 2001, the Respondent registered the Domain Name and connected it to a hard core pornographic site at .
On August 12, 2001, the Complainant emailed the Respondent requesting transfer of the Domain Name. In the email he pointed out that the Respondent, in doing what he was doing, was damaging the Complainant�s business.
On August 13, 2001, the Respondent replied in the following terms:
"Thank you for your email. Please make us an offer for this name and we will get the domain name to you quickly. Thanks."
5. Parties� Contentions
A. Complainant
The Complainant contends that he has common law rights in his name, Dr Roger Libby, being the name under which he practises and conducts business. He contends that the Domain Name is identical to his name and common law service mark, save that the former also features the generic ".com" suffix.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not named Roger Libby and until the Respondent registered the Domain Name he had never, so far as the Complainant is aware, used the name Dr Roger Libby in connection with any bona fide offering of goods or services. Nor to the Complainant�s knowledge has the Respondent been commonly known by any name relating to the Domain Name.
The Complainant refers to paragraph 4(c) of the Policy and is confident that the Respondent will not be able to prove the existence of any of the circumstances set out in that paragraph.
The Complainant contends that the Respondent registered the Domain Name in bad faith and continues to use it in bad faith. The Complainant contends that the Respondent�s improper purpose in acquiring the Domain Name is fourfold, namely:
(i) to sell, rent or otherwise transfer the registration to the Complainant or competitor for valuable consideration in excess of the Respondent�s out of pocket costs relating to the Domain Name;
(ii) to prevent the Complainant from reflecting his personal name and valuable service mark as a domain name;
(iii) to disrupt the Complainant�s business; and
(iv) to intentionally attempt to attract for commercial gain, internet users to the Respondent�s website by creating a strong likelihood of confusion with the Complainant�s trade mark.
The Complainant refers to the Respondent�s response to the Complainant�s email referred to above. The Complainant asserts that the nature of the activities currently connected to the website are "completely antithetical" to those of the Complainant and that the offering of them under and by reference to the Domain Name is causing severe harm to the Complainant.
The Complainant contends that the Respondent is fully aware that in using the Domain Name to connect to his website, he is attracting visitors intending to reach the Respondent.
B. Respondent
The Respondent has not responded to the Complaint.
6. Discussion and Findings
General
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The 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.
Where a Respondent who has been properly notified of the Complaint fails to respond, the Panel is entitled to draw such inferences as it considers appropriate (Rule 14(b)).
The �facts� as the Complainant asserts them to be are coherent and rational and, in the absence of any contradiction from the Respondent, the Panel accepts them as fact.
Identical or confusingly similar
Plainly, the Complainant has conducted a successful business for many years under his name and for most of the last five years has used the Domain Name in the course of his professional practice. The Panel has no hesitation in finding that the Complainant has common law rights in his name and service mark.
The Domain Name comprises the Complainant�s name and service mark with the addition of the generic ".com" suffix. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
Respondent�s Rights or Legitimate Interests
Guidance as to what constitutes a respondent�s rights or legitimate interests in respect of a domain name is to be found in paragraph 4(c) of the Policy. The list of circumstances therein set out is non-exhaustive and is as follows:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Manifestly, for the reasons given by the Complainant and set out above, none of these circumstances applies in this case. The Respondent has had an opportunity to explain why the Respondent has rights or legitimate interests in respect of the Domain Name, but has not responded.
The Panel can think of no reason why the Respondent might reasonably claim to have rights or legitimate interests in respect of the Domain Name and finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Bad Faith
Guidance as to what constitutes bad faith registration and use of a domain name within the meaning of paragraph 4(a)(iii) of the Policy is to be found in paragraph 4(b) of the Policy, which reads as follows:
"b. Evidence of Registration and Use in Bad Faith. 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."
In the view of the Panel, the Respondent did not register the Domain Name primarily with a view to blocking the Complainant, or with a view to disrupting the Complainant�s business, save to the extent that either of those objectives might have prompted the Complainant to make a substantial offer for transfer of the Domain Name registration.
In the view of the Panel, the circumstances are such that the overwhelming probability is that the Respondent registered the Domain Name with a view to selling it to the Complainant for a sum in excess of his out of pocket expenses.
Of course, one cannot be certain and the Panel accepts that another possibility is that the Respondent registered the Domain Name with a view to connecting it to his hard core pornographic website and thereby attracting to that website traffic which he might not otherwise have attracted, namely visitors intending to visit the Complainant�s website.
The Panel finds that the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
7. Decision
In light of the foregoing findings, namely that the Domain Name is identical or confusingly similar to a trade mark 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 was registered in bad faith and is being used in bad faith, the Complaint succeeds.
The Panel directs that the Domain Name be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: January 24, 2002
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