WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS
Case No. D2004-1085
1. The Parties
The Complainant is Yoomedia Dating Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Walker Morris Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Cynthia Newcomer / Dateline BBS, Bandera, Texas, United States of America, represented by Jackson Walker, LLP, San Antonio, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December�21,�2004. On December�21,�2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On December�28,�2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Dateline�BBS is listed as the registrant and Newcomer as the administrative and billing contact. The Center verified that 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 “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 January�4,�2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January�24,�2005. The Response was filed with the Center on January�24,�2005.
The Center appointed Ross Wilson as the sole panelist in this matter on February�1,�2005. 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�2,�2005, the Complainant submitted a reply to the Respondent’s Response, which drew a further response dated February�7,�2005, from the Respondent.
Initial Considerations
First, the Panel must decide whether or not to accept into the proceeding the supplemental filings from both the Complainant and the Respondent.
In accordance with paragraph 10 of the Rules which sets out the powers of a Panel and to ensure both parties are treated with equality and each party is given a fair opportunity to present its case, the Panel has decided to accept both supplemental filings into the administrative proceedings.
Second, the Panel must address the issue of who is the Respondent.
The reply submitted by the Complainant questions who is the respondent in this case and whether the material received from Ms. Cynthia Newcomer can be admitted to the proceedings.
The Complainant asserts that the Respondent in this case is Dateline BBS rather than Cynthia Newcomer and requests that her Response not be admitted into the administrative proceedings. The Complainant considers that the evidence provided in the Response indicates that the assignment of the disputed domain name to Cynthia Newcomer in July�2000 has no legal effect because the assignment documentation identifies an individual known as James Melvin as the assignee. The formal Registrant, Dateline BBS, is not featured in this document. Therefore, the Complainant maintains that Dateline BBS remains the legal proprietor of the domain name.
The response made by Ms.�Newcomer’s representative to the Complainant’s assertion states that Mr.�Melvin was the sole proprietor of Dateline BBS and that, when completing the authorization to modify the Registrar’s database following the sale of the domain name in July 2000, he mistakenly showed the new owner, Ms.�Newcomer, as the administrative contact and left Dateline BBS as the Registrant assuming it was a pseudonym for the domain name. As supporting evidence, copies of Mr.�Melvin’s emails to Network Solutions dated July�17,�2000 were provided as well as a signed statement from Mr.�Melvin explaining that he was the sole proprietor of Dateline BBS and that he mistakenly placed the new owner’s name against the Administrative Contact (rather than the Registrant). His statement also confirmed that as sole proprietor of the domain name he had the authority to assign the domain name.
The Rules define the Respondent as “the holder of a domain-name registration against which a complaint is initiated”. Based on the evidence provided, the Panel is satisfied that Ms.�Newcomer is the current holder of the domain name even though her name does not appear as the Registrant. In the alternative, she is clearly acting on behalf of “Dateline BBS”, the current registrant of record for the disputed domain name. For the purposes of this administrative proceeding, the Panel will refer to Ms.�Newcomer as the Respondent and admit her response into the proceeding. The Panel will also name “Dateline BBS” as the second Respondent in this proceeding as it is the current registrant of record.
4. Factual Background
The Complainant, a company incorporated in England and Wales, is the longest operating dating business in the United Kingdom (UK). In 1966, it began distributing contact magazines, and in 1990 began offering dating agency services under the DATELINE mark. It has 14,000 registered members in the UK. Its magazine and online services are available in 32 countries including the United States of America.
The UK registered trademark DATELINE was filed on February�24,�2000. The company filed a US trademark for DATELINE on September�29,�2004.
Network Solutions’ records indicate that the disputed domain name was first registered on December�20,�1994. The Archive WaybackMachine, provided by the Respondent, shows that the DATELINE website was in the past used to promote a TV/VCR repair business, film/video transfers and selling or trading 16mm film.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has developed considerable goodwill and reputation in the mark DATELINE having been operating its business since 1966.
The Complainant contends that the Respondent has no legitimate interest in the disputed domain name due to the fact that for about one year prior to the Complainant first contacting the Respondent the website was devoid of any content. Also, immediately following the commencement of the negotiation to purchase the domain name the Respondent asked Network Solutions to manage the site which pointed to a page which stated “Network Solutions. This site is currently under construction and coming soon.” Subsequently, the Respondent placed various sponsored links on the site which related to a range of dating sites, several of which were located in the UK, with the apparent purpose of diverting consumers looking for the Complainant’s website.
In December�2004, the website showed a home page with no operational hyperlinks. In the Complainant’s view, the Respondent’s actions were an attempt to artificially generate legitimate use in the light of the dispute proceedings.
Finally, the Complainant contends that the Respondent has registered the domain name in bad faith as it had not been using the site and had not been doing so for some time, that during negotiations to purchase the domain name the Respondent quoted a selling price of $US 1 million and since being approached to sell the domain name the Respondent has placed advertisements from other UK dating services on the site.
B. Respondent
The Respondent contends that there is no evidence that the Complainant currently sells goods or offers services under the DATELINE mark in the United States nor does the Complainant target US consumers in its marketing efforts. While the Complainant may have filed a trademark application in the US on September�29,�2004, the Respondent points out that the filing was under Section 1(b) of the Lanham Act as an “Intended for Use in Commerce” application, proving that at the time of filing of the application the Complainant made no use of the mark in commerce for the goods and services claimed. Even if the application was registered, the Respondent claims that it will retain the right to use the DATELINE mark throughout the US as “a senior user” of the term in the US as its domain name was registered nearly ten years prior to the filing of the Complainant’s trademark application. The Respondent concludes that the Complainant “has no rights to the DATELINE mark in the US and, as such, the domain name at issue is not identical or confusingly (sic) to a trademark in which the Complainant has rights.”
In terms of having rights or legitimate interests in respect to the domain name, the Respondent contends that at least from October�18,�2001, and prior to receiving notice of the dispute, the Respondent’s use of the website was in connection to a bona fide offering of goods and services. In fact, the Respondent’s successful marketing of her site yielded in excess of $US 62,000 in commissions and advertising revenue over nearly four years to December�10,�2004.
The Respondent refutes the Complainant’s claim that the domain name was registered in bad faith based on a period of non-use of the domain name during the Complainant’s investigation of the domain name’s current use. The Respondent contends that the website was not operational during the first half of 2004 due to the Respondent being unable to maintain her website as she was suffering from severe medical problems. A statement from the Respondent’s medical practitioner was provided to confirm her condition. The Respondent cites Olymp Bezner GmbH & Co. KG v. Olympus Access Service, WIPO Case No. D2003-0958, where inactivity was insufficient to establish bad faith on the part of the Respondent.
Also, the Respondent refutes the Complainant’s claim of bad faith due to the Respondent refusing an offer to purchase the domain name and counter-offering with an allegedly excessive asking price. In the Respondent’s view, the Complainant’s offer of the equivalent to $US 19,000 was significantly less than the $US 45,000 she had paid to acquire the domain name which was generating significant commissions. The Respondent states that the counter-offer to sell at $US 1 million in the light of the unrealistic offer made by the Complainant, is better understood as a negative response to the ridiculously low offer made by the Complainant. The Respondent contends that an offer to sell the domain name, particularly when the discussion of a sale is initiated by the Complainant, is not indicative of bad faith. The Respondent refers to the Policy paragraph 4 (b)(i) and eM, Inc. v. Sjafy Lim, WIPO Case No.�DTV2001-0003.
The Respondent contends that there is no evidence that the domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant or to a competitor as the domain name was registered in 1994 and acquired by the Respondent in 2000. In fact, the Respondent operated a successful business for a number of years before the Complainant initiated discussions for the sale of the domain name.
Finally, the Respondent contends that the domain name was not registered in an attempt to attract for commercial gain Internet users to the Respondent’s website 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 website or location or of a product or service on the Respondent’s website or location.
6. Discussion and Findings
A. Identical or Confusingly Similar
According to paragraph 4(a) of the Policy, the Complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant’s trademark is DATELINE. The disputed domain name is . Apart from the “.com” extension, the two are identical. The Complainant filed a UK trademark application on February�24,�2000, and registration was granted on April�20,�2001. That registration confirms the Complainant has rights in the trademark. The Complainant also implies that it has common law trademark rights dating from its first use associated with contact magazines since 1966 and its use with dating agency services since 1990.
The Complainant also filed a US trademark application on September�29,�2004. The Respondent went to some trouble to argue that the Complainant currently has no trademark rights in the US and even if it eventually did, the mark would be subordinate to the Respondent’s domain name which has been used since 1994. The Panel notes that the Policy does not require, for the purposes of paragraph 4(a)(i), the trademark in which the Complainant has rights to be located in the same geographical area as the Respondent and that there is considerable precedent to this view.
The Panel finds that the Complainant has proven that the domain name is identical or confusingly similar to a trademark in which it has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a Respondent can demonstrate rights to and legitimate interest in the disputed domain name. The ways include, but are not limited to:
(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 an organisation) 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 non-commercial 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.”
The Complainant’s case relies on its inability to identify any legitimate interest that the Respondent may have in the domain name, indicating that for around one year prior to first contacting the Respondent the website was void of content, then following negotiations to purchase the domain name the site was “currently under construction” and later the site contained sponsored links to other dating sites, and so diverting consumers looking for the Complainant’s site. Even later the Complainant states that the site became non-operational.
On the other hand, the Respondent submitted as evidence screen shots from the Internet Archive WaybackMachine to demonstrate that she had rights and legitimate interests in the domain name. Seven screen shots showed various versions of the website between October�2001 and September�2003 as used by the current domain name holder. The Respondent also provided evidence (a payments’ table together with copies of deposit slips and cheque stubs) showing that before receiving notice of the dispute income was being generated through her business use of the website.
With respect to the Complainant’s claim that non-use of the domain name for some time prior and after seeking to purchase the domain name indicated no legitimate use, the Respondent provided evidence (a declaration by the Respondent and a doctor’s statement) that for the first half of 2004 the Respondent was incapacitated and unable to operate the domain name.
In the Panel’s opinion, the Complainant’s observations of the Respondent’s use of the website was over a relatively short period when, as the Respondent has confirmed, there was inactivity with respect to the use of the domain name. On the other hand, the Respondent has been able to provide evidence, using historic screen shots of the website and deposit slips and cheque butts, that in fact demonstrate that there had been considerable legitimate use of the domain name since early 2001 and prior to receiving notice of the dispute. There is no evidence that this use was generated by Respondent taking advantage of Complainant’s mark.
While the information provided by the Complainant and the Respondent differ over the period of time that the site may have been inoperative, the Panel is satisfied that the Respondent has legitimate interests in the domain name.
The Panel concludes that the Complainant has failed to prove this point.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph�4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
To be successful, the Complainant must prove that the domain name was registered and used in bad faith. The information provided by Network Solutions indicates that the domain name was first registered in 1994. The Complainant provides no evidence that that registration was in bad faith arguing rather that its recent use or non-use was in bad faith. Complainant provides no evidence that the domain name transfer in 2000 was in bad faith either. In addition, the Complainant argues that the bad faith use was evidenced by the Respondent quoting a selling price of $US 1 million and placing advertisements for other UK dating agencies on the site to divert business away from the Complainant.
Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations. In Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782, the panel stated that “If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”. In Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Technology, WIPO Case No.�D2000-0026, the Respondent registered a domain name to reflect its own business name but subsequently sought to sell the name for profit when its business dissolved. The panel found that to decide the case on the subsequent bad faith action would “extend the Policy to cover cases clearly intended to be outside its scope.” Similarly, in Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005, the respondent registered the disputed domain name in good faith but subsequently began to use it in bad faith. It was held that because the registration was made in good faith the requirement of Paragraph 4(a)(iii) was not met.
In the Panel’s view, this case is unlike those above where good faith registration was followed by bad faith use.
In view of the above, the Panel finds that the registration and use of the domain name was in good faith and there is no need to go further and consider any of the Complainant’s arguments for bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Ross Wilson
Sole Panelist
Date: February 22, 2005
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