WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TAM Communications, Inc. v. 3DNet, Inc.
Case No. D2002-1136
1. The Parties
The Complainant is TAM Communications, Inc., 1010 Summer Street, Stamford, Connecticut 06905, United States of America, of United States of America, represented by Grimes & Battersby, LLP of United States of America.
The Respondent is 3DNet, Inc., 485 Montalto Drive, Herndon, Virginia 20170, United States of America., of United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the the "Center") in hard copy on December 13, 2002. No electronic copy was ever forwarded. The Complaint identified Network Solutions, Inc. as the registrar of the domain name at issue. On December 13, 2002, having ascertained that the registrar of the domain name at issue was other than as identified, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On December 13, 2002, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on December 17, 2002, in electronic form and on December 19, 2002, by hardcopy (hereinafter the "Complaint") and provided the Center with an electronic copy of the Complaint initially filed. The Center verified that the Complaint [together with the amendment to the Complaint] satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 20, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2003. The Response was filed with the Center on January 16, 2003.
The Center appointed M. Scott Donahey as the sole panelist in this matter on January 23, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On February 4, 2003, because of exceptional circumstances, the parties were notified that the date for decision in this matter had been extended to February 13, 2003.
4. Factual Background
Complainant's predecessor registered the trademark AMERICAN IRON with the United States Patent and Trademark Office ("USPTO") on October 20, 1992, alleging a first use in commerce of February 25, 1989. Complaint, Annex E. Records of the USPTO show that the registration is currently in the name of the Complainant. Id.
Complainant is the publisher of "American Iron" magazine, a magazine devoted to American-made motorcycles, particularly those manufactured by Harley-Davidson, Inc. Complainant and its predecessors have published "American Iron" magazine monthly since 1989. Current distribution of the magazine is more than 260,000 copies per month, and monthly circulation for July 2002, was 138,668. Complaint, Annex F. The number of subscribers continues to increase.
In 1995 or early 1996, Respondent approached the president of Complainant and proposed to create a web site for the magazine. While Complainant was skeptical about the economic validity of such a web site, Complainant agreed to allow Respondent to create such a web site, for which, according to Complainant, Respondent was to receive a small payment for each paid-for subscription purchased through the site. Respondent contends that it never received any compensation for its work on the site. Respondent contends that over the years it sought to convince Complainant that the web site was economically viable and that Respondent should be compensated for its work.
On July 4, 1996, Respondent registered the domain name at issue in its own name. Complainant denied any knowledge at the time that Respondent had registered the domain name on behalf of Respondent. Complainant contends that when it learned of this fact, Respondent promised that it would transfer "ownership" of the domain name registration to Complainant should there ever be a "falling out" between the companies. Respondent denies such a conversation ever occurred.
Respondent has produced evidence that American Iron is a generic or descriptive term and that numerous other entities, including those in the motorcycle industry, have registered the term as part of or as an entire trademark. Response, Annexes A and B.
Complainant contends that in or about 2001 Respondent and Complainant had a "falling out." Respondent denies this and contends that Respondent merely gave up on trying to persuade Complainant that its efforts were worthy of compensation. At that time Respondent contends that it notified Complainant that it intended to use the site to focus on industry news, only to be told by Complainant that such efforts would "never work."
After establishing the industry news web site, Respondent contends that it continued to see Complainant at tradeshows and the like and never received any objection to the web site until it received an email communication from Complainant of October 17, 2002. Complaint, Exhibit H. Complainant contends that it had notified Respondent of its objections continually from the "falling out." In response to Complainant's email, Respondent offered to sell Complainant the domain name registration for US$15,000.
5. Parties� Contentions
A. Complainant
Complainant contends that the domain name at issue is identical to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent registered and is using the domain name at issue in bad faith.
B. Respondent
Respondent contends that the term "American Iron" is a generic or descriptive term, that Respondent has rights and legitimate interests in respect of the domain name, and that Respondent registered and has used the domain name in good faith over an extended period.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) 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
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Respondent does not deny and the Panel finds that the domain name at issue is identical to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The term "American Iron" is a common descriptive or generic term. Complainant has not attempted to make a showing that the name has acquired secondary meaning. One cannot, by registering the term as a trademark, usurp to rights of all others to the use of this term. This has been found in the earliest decisions issued under the UDRP. "So far as paragraphs 4(a)(ii) and (iii) of the Policy are concerned, the Panel concludes that the Respondent did have a legitimate interest in respect of the domain name and his registration was not effected in bad faith. The word "zero" is a common English word. Although any number of organisations [sic] (including the Complainant) may have trade mark rights in such a word (and indeed the Respondent has produced evidence of numerous US trade marks which include or comprise the word "zero") that does not preclude the Respondent effecting registration of a common word on the 'first come, first served' basis which was available." Zero International Holding Gmbh & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161 (decided May 12, 2000). Thus, without more, the registration of the generic or descriptive term would give Respondent rights in the domain name at issue.
However, there is more. There is a well-grounded dispute as to the purpose and intent of Respondent's registration of the domain name at issue, and whether its initial registration and use deprives Respondent of the otherwise legitimate right and interest it would have in the registration of a descriptive or generic term.
The ICANN Policy and Rules contemplate only limited evidentiary presentation by the parties. Tough Traveler, Ltd. v. Kelty Pack, inc., Mike Scherer, and Inkling Pen Co., WIPO Case No. D2000-0783. It is not suitable to decide any and all contests of fact, especially when decisions turn on different versions of oral communications and whether such communications occurred at all, the classic "swearing contest" of American litigation. The conflicting versions of the parties' relationship and of the Respondent's right to use and Complainant's opposition to or acquiescence in such use is better left to the courts, with all the resources at their disposal, to resolve.
C. Registered and Used in Bad Faith
Because of the reasons set out above, it would be inappropriate to decide this issue based on the conflicting versions of oral communications.
7. Decision
For all the foregoing reasons, the Complaint is denied. Complainant is free to pursue its claims in a court of law.
M. Scott Donahey
Sole Panelist
Date: February February 10, 2003
Full & Egal Universal Law Academy