Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Ripley Entertainment Inc., Orlando, FL, USA ("Complainant") represented by Scott Line, Ripley Entertainment, Inc. The Respondent is Lily Ko, San Jose, CA, USA ("Respondent").

The domain name at issue is "ripleysbelieveitornot.com" registered with Network Solutions.

The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Judge Ralph Yachnin, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on November 13, 2000; The Forum received a hard copy of the Complaint on November 13, 2000.

On November 28, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name "ripleysbelieveitornot.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On November 30, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 20, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts, and to postmaster@ripleysbelieveitornot.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 22, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Judge Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forumís Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

B. Respondent

The Respondent failed to submit a response in this proceeding.

Paragraph 15(a) of the Rules instructs this Panel to "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."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Based on its federal trademark registrations, the Complainant has acquired exclusive rights to use each of its RIPLEYíS BELIEVE IT OR NOT marks.

The ripleysbelieveitornot.com domain name of Respondent complained of herein is identical to the RIPLEYíS BELIEVE IT OR NOT trademark in which Complainant has rights. The addition of the generic top-level domain (gTLD) name ".com" is without legal significance. See, e.g., Sportyís Farm v. Sportsmanís Market, [1953] USCA9 52; 202 F.2d 489, 498 (2d Cir. 2000) (citing Brookfield Comm. Inc. v. West Coast Entertainment Group, [1999] USCA9 225; 174 F.3d 1036 (9th Cir. 1999)). See also BMW AG v. Loophole, D2000-1156 (WIPO Oct 26, 2000) (finding that there "is no doubt that the domain name [bmw.org] is identical to the Complainantís well-known and registered trademarks [BMW]").

Respondent clearly knew or should have known of Complainantís usage and rights in the RIPLEYíS BELIEVE IT OR NOT mark. Since RIPLEYíS BELIEVE IT OR NOT is famous worldwide, it cannot credibly be argued that Respondent arrived at this name independently.

The Respondent has yet to provide any basis that would legitimize any claim it has to the contested domain name. In fact, it is extremely unlikely that the Respondent can even make such a claim given the renowned status of the Complainantís mark. Given this renowned status, the Respondent can make no argument that it is commonly known by the Complainantís mark. Policy � 4.c.(ii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainantís mark by redirecting Internet traffic to its own website).

In addition, Respondent has not made and is not making a bona fide commercial or noncommercial use of the RIPLEYíS BELIEVE IT OR NOT mark given that the web site associated with the ripleysbelieveitornot.com domain name is not in use. Policy � 4.c (i), (iii). The Respondent has made no claim that bona fide preparations to use the domain name are being made. Policy � 4.c.(i).

Accordingly, the Panel finds the Respondent has no rights or interests in the disputed domain name. Policy 4 (a)(ii).

Respondent has submitted no evidence to negate the Complainantís claims that the domain names were registered and being used in bad faith.

Paragraph 4(b) of the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith. The list of circumstances does not exhaust the Panel's inquiry regarding the element of bad faith, since the Policy indicates that its listing of bad faith factors is without limitation. Thus, the Panel takes the view that, although the Policy does not specifically address such a circumstance, in a situation where an impropriety (i.e., passive holding of domain name for almost 2 years) has been established, and where the Respondent has failed to prove arguments in his own favor, the Panel is entirely within its powers to establish that Respondent's failure to use the domain name is a prima facie case of bad faith. It is not necessary to show that a domain name resolves to a web site to show "use" of the domain name under the Policy. See Westfield Corp. v. Graeme, Michael Hobbs, D2000-0227 (WIPO May 18, 2000). Therefore, it is within the Panelís authority to find bad faith use when the domain name has actually not been "used" for a significant period of time. See TV Globo Ltda v. Globoesportes.com, D2000-0791 (WIPO Sept. 12, 2000) (finding bad faith where (1) the domain name in dispute is obviously connected with a well known mark, (2) Respondent deliberately chose a domain name which is the mark of the largest TV operator in the worldís largest Portuguese speaking country, and (3) Respondent failed to develop the site).

The Panel's opinion is therefore that Respondent deliberately acted in bad faith when it registered and failed to use the domain name.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name ripleysbelieveitornot.com be transferred from the Respondent to the Complainant.