WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KeyCorp and City of Seattle v. , Inc.
Case No. D2005-0104
1. The Parties
The Complainants are KeyCorp, an Ohio corporation whose principal place of business is located at Cleveland, Ohio, United States of America; and The City of Seattle, a municipal corporation of the State of Washington, whose principal office is located at Seattle, Washington, United States of America. Both Complainants are represented by Laura Shaw, Esq., KeyCorp, and Phillip E. Brenneman, Seattle City Attorney’s Office.
The Respondent is , Inc., Brian Heeb, Bainbridge Island, Washington, United States of America.
2. The Domain Names and Registrar
The disputed domain names are and . Both domain names are registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on January 31, 2005. On February 1, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On February 2, 2005, Network Solutions, LLC 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. 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 February 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March�7,�2005. The Response was filed with the Center on March 8, 2005.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on March 23, 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.
4. Factual Background
Complainant KeyCorp is a full-service bank holding company in the United States and is the owner of U.S. Trademark Registration No. 2142607 for the mark KEYARENA, registered March 10, 1998, for use in connection with providing facilities for sporting and entertainment events. The registration claims a date of first use of November 1995. In April 1995, KeyCorp entered into a Title Sponsorship Agreement with the City of Seattle pursuant to which the entertainment venue previously known as the Seattle Coliseum was renamed KeyArena.
KeyArena is the venue for a wide variety of sporting, entertainment and special events. It is also the home of the Seattle Supersonics, a National Basketball Association (NBA) team, the Seattle Storm, a Women’s National Basketball Association (WNBA) team and the Seattle Thunderbirds, a Western Hockey League (WHL) team. KeyArena is also the venue for national touring musical concerts and entertainment events.
The City of Seattle owns and operates the KeyArena at the Seattle Center, in Seattle. Pursuant to the Title Sponsorship Agreement, KeyCorp granted the City an unrestricted license to use the KEYARENA trademark in connection with identification and promotion of events and activities at KeyArena. Consistent with its license to use the KEYARENA trademark, the City of Seattle planned to establish the Internet domain . When it attempted to do so, the City discovered that this domain name and the other and domain names were registered to Respondent. The Respondent’s unauthorized registrations prevent the City from registering domain names using the name of the entertainment facility for which it has obtained a trademark license from the trademark owner, KeyCorp.
Pursuant to paragraph 7F of the Title Sponsorship Agreement, the City of Seattle and “any third party that has been authorized by the City” have an unrestricted right to use the KeyArena mark “for purposes of identification, the provision of directions, the promotion of events and activities of the City or of any such third party at or in [KeyArena].” Complainants have never authorized Respondent to use the KEYARENA mark.
Respondent registered and on April 5, 1999, and October 24, 1999, respectively. The registrations of the and domain names were last renewed in April 2004 and October 2003 respectively. Respondent was also the registrant of , originally registered on October 24, 1999. That registration lapsed in October 2003.
Respondent is or was a for profit corporation providing website design, hosting and marketing services. i-designsolutions’ website has in the past actively offered website design and other services to prospective business clients. Complainants’ recent attempts to access ’s website have been met with a return message indicating that the searcher is not authorized to view the website.
Despite his request to obtain a license, Respondent has never been licensed or permitted by KeyCorp or The City of Seattle to use the KEYARENA service mark.
Respondent has never used either of the domain names in connection with providing any goods or services legitimately associated with those names. Neither or resolve to an active website. Complainants’ attempts to access such sites repeatedly return a “Cannot find server or DNS error” with the result “The page cannot be displayed.” In a letter dated January 2, 2004, from Respondent to The City of Seattle, Respondent indicated that “No website has ever been uploaded to the Internet addresses www., www. or www..” and “No revenue has been generated from the use or registration of the domain names.”
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain names and are identical or confusingly similar to the KEYARENA U.S. trademark registration number 214607 owned by Complainant KeyCorp. This registration issued on March 10, 1998, prior to Respondent’s registration of the domain names in dispute. Complainant contends that Respondent knew or should have known that the domain names would be confused with the Complainant KeyCorp’s registered trademark.
Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain names or , pursuant to paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.
Respondent uses the name rather than “” or “” for its business of offering website design and other services. Respondent has never been licensed or permitted by KeyCorp or the City of Seattle to use the registered trademark KEYCORP. Respondent requested a license to use KeyCorp’s trademark after receiving written notification from KeyCorp of KeyCorp’s trademark rights in the KEYARENA mark. Respondent’s license request was refused in April�2003. Subsequent to Complainants’ refusal of Respondent’s license request, Respondent renewed his registrations for the Domain Names.
Complainant contends that Respondent cannot demonstrate rights or legitimate interests in the domain names under paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the domain names in connection with a bona fide offering of goods or services. Respondent has never used the Domain Names in connection with providing any goods or services legitimately associated with those names. In a letter sent on or about January 2, 2004 (incorrectly dated January 2, 2003), from Respondent to The City of Seattle, Respondent indicated that “No website has ever been uploaded to the Internet addresses www., www. or www..” and “No revenue has been generated from the use or registration of the domain names.” As of the filing of the Complaint, no websites were available at the disputed domain names.
Complainant further contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Names under paragraph 4(c)(ii) because it is not commonly known by the Domain Names. Respondent has no connection or affiliation with Complainants, has not received any license or consent, express or implied, to use the KEYARENA registered trademark in a domain name or in any other manner.
Complainant further contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name.
Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of paragraph 4(b)(iii). The Respondent’s unauthorized domain name registrations are preventing the City of Seattle from rightfully registering domain names using the KEYARENA name for the entertainment facility for which it has obtained a trademark license from the trademark owner, KeyCorp. Any use by Respondent of the or domain names would actively infringe upon KeyCorp’s registered trademark by attracting visitors to Respondent’s website and could not qualify as legitimate use. See Eurail Group GIE v. DOTrader, WIPO Case No. D2003-0422.
On numerous occasions during 2003 and 2004, Complainants wrote to Respondent attempting to obtain transfer of the Domain Names from Respondent and offering to pay Respondent’s reasonable expenses incurred in registering and maintaining the Domain Names and in connection with the transfer. Respondent refused to transfer the Domain Names, but agreed to defer to the decision of the panelist in a UDRP proceeding.
B. Respondent
Respondent admits that he “registered the Domain Names because the spelling was identical to the actual [KEYARENA] facility, and Respondent intended to use the familiarity with the Trademark to benefit a website under the same name.”
Respondent contends that because the Title Sponsorship Agreement between Complainant KeyCorp and Complainant City of Seattle (to which Respondent is not a party or named beneficiary) specifically allows for third parties to be granted licenses under the KEYARENA trademark, that any company or individual has rights to register the domain names in question as long as they intend to obtain a licensing agreement or other authorization to use the Trademark in a lawful manner. Respondent admits, however, that “use of a domain name, without a trademark licensing agreement in place would violate trademark and patent laws” and that “use of the domain names, in the absence of a trademark licensing agreement, would constitute an unlawful and bad faith use. Respondent states that he has continued to register the domain names “in hopes that the Complainants will honor their initial intent of negotiating a licensing agreement for the Trademark.” This statement appears to be based on a letter from KeyCorp’s in-house counsel dated November 30, 1999, in which KeyCorp’s counsel advised Respondent of KeyCorp’s ownership of its federal registration for the KEYARENA mark and stated that Respondent’s “use of KEYARENA.ORG and KEYARENA.NET is an infringement upon our mark.” The letter also stated “please contact the undersigned at your earliest convenience in order to discuss a suitable license arrangement for our trademark in connection with your web sites.”
On December 18, 1999, Respondent wrote to KeyCorp indicating that “We intend to start creating the website during Quarter 2 2000 . . . . Prior to launching our website we will contact you regarding a suitable licensing arrangement...” KeyCorp apparently did not respond to this letter. On July 16, 2001, Respondent again wrote to KeyCorp stating that “Prior to placing this website into production, which entails a considerable investment on our behalf, I wanted to re-address the possibility of obtaining a license for use of your trademark.”
On April 10, 2003, KeyCorp wrote to Respondent reminding Respondent that KEYARENA is a registered trademark of KeyCorp and demanding transfer of the Domain Names to KeyCorp. Subsequent correspondence between Complainants and Respondent during 2003 and 2004 reiterated Complainants’ demands for the transfer of the Domain Names to Complainants. During this correspondence, Complainants did not offer Respondent a license.
Respondent contends that the Domain Names in question were never used to deceive visitors to the Domain Names, that no revenue has ever been generated from use of the domain names (as doing so without having a licensing agreement in place would violate trademark law) and that no attempt has been made to release the domain names in exchange for monetary or other gain to either the Complainants or another third party. Respondent further contends that he believes he has a bona-fide and legitimate purpose for registering and maintaining registration of the domain names because Complainants have authorized licensing of the trademark to third parties (as evidenced in the Title Sponsorship Agreement between KeyCorp and the City of Seattle) and because Complainant KeyCorp’s initial correspondence with Respondent on November�30,�1999, stated that KeyCorp had interest in discussing a suitable licensing agreement.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: “A panel shall 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.”
Because both the Complainants and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Sole Panelist in determining whether the Complainant has met its burden as established by paragraph 4(a) of the Policy, the Sole Panelist shall look to rules and principles of law set out in decisions of the courts of the United States. Autosales Incorporated v. Don Terrill, WIPO Case No. D2001-1341.
A. Identical or Confusingly Similar
Complainant has a United States federal trademark registration for the mark KEYARENA which was registered prior to Respondent’s registration of the disputed Domain Names. Complainant’s registration is incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated goods and services. 15 U.S.C. �� 1065 and 1115(b).
The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See, Autosales Incorporated v. Don Terrill, WIPO Case No. D2001-1341, and cases cited therein. Here, the Domain Names both incorporate Complainants’ federally registered KEYARENA trademark in its entirety. The addition of the suffix “.com” or “.org” is not a distinguishing factor. Nike, Inc. v. William Coleman, WIPO Case No. D2000-1120.
Therefore, the Panelist finds that the Domain Names are identical to Complainant KeyCorp’s registered KEYARENA trademark pursuant to the Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Names. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of proof on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a).
The record indicates that Respondent has no relationship with or permission from Complainants to use of the KEYARENA trademark.
The Policy paragraph 4(b) allows three nonexclusive methods for the Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Names:
(i) before any notice to Respondent of the dispute, his 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is 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.
The Complainants have sustained their burden of proving that the Respondent lacks rights to or legitimate interests in the Domain Names.
Respondent claims that his request to license the KEYARENA mark, which was clearly refused in April 2003, is sufficient evidence to establish that he has a legitimate interest in the domain names, even though he has never used those domain names in connection with a legitimate business and could not do so without obtaining a license from KeyCorp to use the KEYARENA mark.
The KEYARENA trademark was registered with the United States Patent and Trademark Office (“USPTO”) on March 10, 1998, prior to Respondent’s registration of the Domain Names in April and October 1999. Registration of a trademark with the USPTO provides constructive notice of the registrant’s claim of ownership thereof. 15 U.S.C. � 1072. Where a Respondent has constructive notice of a trademark, and yet registers a confusingly similar domain name thereto, the Respondent cannot be said to have a legitimate interest in the domain name. See, e.g., CCA Industries v. Dailey, WIPO Case No. D2000-0148, and Young Genius Software AB v. MWD, WIPO Case No. D2000-0591. In this case, Respondent proceeded to register the Domain Names without first requesting a license from the registered owner of the KEYARENA mark. Respondent admits on several occasions that his use of the KEYARENA mark in the Domain Names without a license would be in violation of federal trademark laws. Repondent cannot have a legitimate interest in the Domain Names because he cannot use them without a license, and Complainants have refused to give him such a license.
The file contains no evidence that the use of the Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(b). Therefore, the Panelist finds that the Respondent has no rights or legitimate interests in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
Complainant’s mark was registered with the USPTO prior to registration of the domain names. A simple on-line check with the USPTO website would have revealed that KeyCorp is the owner of the U.S. registered KEYARENA service mark. Respondent had at least constructive notice of KeyCorp’s trademark rights at the time the Domain Names were registered, and had actual notice of those rights at the time he renewed the Domain Name registrations. Actual or constructive knowledge of the Complainant’s rights in its trademark prior to registering a domain name incorporating that mark is a factor supporting bad faith. See eBay Inc. v. SGR Enterprises and Joyce Ayres, WIPO Case No. D2001-0259; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. There does not have to be a positive act of misdirection or an offer to sell in order for bad faith to be established. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242, Advanced Comfort Inc. v. Frank Grillo, WIPO Case No. D2002-0762.
Respondent requested but was refused a license to use the KEYARENA mark. Respondent nevertheless refused Complainants’ repeated requests that he transfer the Domain Names to Complainants, even though Complainants offered to pay his “reasonable costs and expenses in registering and maintaining the domain names with Network Solutions and [his] reasonable costs and expenses in transferring the domain names to the City of Seattle.”
Moreover, in a letter dated July 29, 2004, Respondent refused Complainants’ invitation to a settlement meeting because the offer to pay his reasonable costs “did not offer me any ability to negotiate a beneficial solution.” It is reasonable to infer from this statement by Respondent that he was passively holding the Domain Names for the purpose of commercial gain, either to ultimately sell them for more than his reasonable registration costs or to attempt to obtain a license to use the KEYARENA mark, which had already been refused. Indeed, Respondent admits that he has continued to register the domain names “in hopes that the Complainants will honor their initial intent of negotiating a licensing agreement for the Trademark.” Complainant KeyCorp mentioned a possible license in one letter dated November 30, 1999. All subsequent correspondence from Complainants during 2003 and 2004 clearly demanded that Respondent transfer the Domain Names to Complainants.
The long period of time Respondent has held the domain names without using them is also evidence of bad faith. See, Mondich v. Brown, WIPO Case No. D2000-0004, SAir Group v. Reinhart, WIPO Case No. D2000-0482, ebay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259. Although Respondent’s stated intent was to use the domain name “to develop an Internet website highlighting the activities and functions hosted at the KeyArena facility,” he could not lawfully use the KEYARENA mark for such use without a license from the KEYARENA trademark owner. Thus, his use would not be legitimate. See, Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 and Telstra Corp., Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Moreover, Respondent’s registrations are preventing the legitimate trademark owner and licensee from lawfully registering and using the Domain Names. As stated in Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044, “because Respondent is contributing no value-added to the Internet--it is merely attempting to exploit a general rule of registration -- the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it.”
Respondent’s constructive knowledge of KeyCorp’s trademark rights at the time of registering the Domain Names, his actual knowledge of KeyCorp’s rights at the time of renewing the Domain Names, his knowledge that Complainants had refused a trademark license at the time he renewed the Domain Name registrations, his failure since 1999, to use the Domain Names in connection with lawful business activities and his repeated refusals to transfer the Domain Names to Complainants after his request for a license had been denied are all evidence of Respondent’s bad faith.
Based on the facts and administrative decisions discussed above, the Panel finds that the disputed Domain Names have been registered and are being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, and be transferred to the Complainants.
Lynda J. Zadra-Symes
Sole Panelist
Dated: April 14, 2005
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