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Ruben L. Lopez v. Rock-City [2000] GENDND 852 (8 August 2000)

National Arbitration Forum

DECISION

Ruben L. Lopez v. Rock-City

Claim Number: FA0005000094907

PARTIES

The Complainant is Ruben L. Lopez, Los Angeles, CA, USA ("Complainant"). The Respondent is Rock-City, Oklahoma City, OK, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "ROCK-CITY.COM", registered with Network Solutions, Inc. ("NSI").

PANELIST(s) Tyrus R. Atkinson, Jr., Esquire, David H. Bernstein, Esquire and Judge Karl V. Fink (Retired), Chair.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum. The Forum received a hard copy of the Complaint 05/25/2000.

On 06/13/2000, NSI confirmed by e-mail to The Forum that the domain name(s) "ROCK-CITY.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On 06/02/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/22/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts by email.

The Forum proceeded to appoint a panel of three arbitrators (pursuant to Respondentís request), and set a decision date of July 28, 2000 Because of a conflict that later became clear, two of the panelists had to be replaced. On July 14, 2000, the Forum appointed a Panel consisting of Tyrus R. Atkinson, Jr., Esquire, David H. Bernstein, Esquire and Judge Karl V. Fink (Retired). Because of the delays in appointing the new panel and scheduling conflicts, the date for decision was reset for August 8, 2000.

Complainant has submitted and the Panel has considered Complainantís reply to the Respondentís response.

RELIEF SOUGHT

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

PARTIESí CONTENTIONS

1. Complainant

1. In 1987, Complainant filed a fictitious business name for Rock City News and on March 18, 1988 filed a fictitious business name for Rock City and began using that name instead of Rock City News. In 1995 Complainant renewed the fictitious names for Rock City and Rock City News and throughout that time used Rock City continuously in business.
2. On December 15, 1996 Complainant established an internet web site www.pacificnet.net /~Rock City. On February 5, 1997 Complainant attempted to change that name to rockcity.com, which he was not allowed to do since that name was taken. He used the second choice, rockcitynews.com. Complainant attempted to purchase the domain name rockcity.com from the then registrant and was told it would cost $25,000.
3. Complainant continued to use its domain name rockcitynews.com and would periodically check to see if rockcity.com was being used. In January 2000 Complainant determined that rockcity.com was being used.
4. Complainant has used the mark Rock City and has applied for a US Trademark registration for that mark.
5. Respondent has rented high visibility street front property less than one mile from the office of Complainant which has had an office in that area since 1983.
6. Complainant contends that he has met all the requirements for the transfer of the domain name.

1. Respondent

1. Respondent contends that this dispute is not an applicable dispute as defined by the ICANN Uniform Domain Name Dispute Policy and rules. Complainant can not meet the three required factors under paragraph 4a of the policy.
2. In February 1999 the founders of Respondent selected the name rockcity.com to serve as the companyís primary name and service mark. They discovered that it was already registered by an individual and negotiated the purchase of that name which was assigned to Respondent in February 1999. They also attempted to register the domain name at issue rock-city.com which was registered to another individual from whom the domain name was purchased in February 1999 and assigned to Respondent.
3. Shortly thereafter Respondent formed Rockcity.com, LLC and filed an application for registration of the mark rockcity.com.
4. Respondent acquired the domain name rock-city.com in March 1999 and has been using the domain name rockcity.com, which is a name corresponding to the domain name at issue, since that time.
5. Respondent used the domain name rockcity.com and trade name and service mark in connection with a bonafide offering of original media broadcasting for nearly 8 months before receiving notification of this dispute. Its preparations for use of the domain name rockcity.com began over a year before receiving any contact by Complainant.
6. Respondentís domain name is not confusingly similar to Complainantís trademark.
7. The Complaint should be dismissed for failure by Complainant to properly serve Respondent as required by the Rules.
8. The Complaint does not contain a single allegation with respect to the domain name rock-city.com referring only to the domain name rockcity.com.
9. Respondent contends that the complaint was brought in bad faith and constitutes abuse of the administrative proceeding and therefore, Complainant should be sanctioned by the panel.

FINDINGS

1. Complainant has valid common law trademark rights in the mark ROCK CITY. Complainant has used the ROCK CITY mark since 1987 in connection with a newspaper covering rock ën roll bands, particularly in the Los Angeles area.
2. In 1997, Complainant attempted to register the domain name rockcity.com, but learned that it was registered by a third party. Complainant thus registered the domain name rockcitynews.com, and launched an Internet version of its newspaper.
3. Complainant alleges that it has received telephone calls from consumers complaining about the content on the rockcity.com website and commenting on the rockcity.com offices on Sunset Strip (which actually belong to Respondent), and that these calls demonstrate the existence of actual confusion. These allegations, if true, may support a finding that Respondentís use of the mark and domain name ROCKCITY.COM constitutes trademark infringement, but there is not sufficient evidence in the record for the Panel to make a definitive conclusion in this regard.
4. Although Respondent may not be making actual use of the domain name rock-city.com because it is virtually identical to the domain name it does use, rockcity.com, it has the same rights to the use of the domain name in question rock-city.com as it does to the domain name rockcity.com.
5. Respondent asserts that, although rock-city is Respondent the domain name technically is owned by Irish Realty Corp., and the true owner in interest is Rockcity.com, LLC, which operates the rockcity.com website. Respondent notes that the rock-city.com domain name is held for the benefit of Rockcity.com, LLC.

DISCUSSION

This panel has today decided the matter of Ruben I. Lopez v. Irish Realty Corp., Claim No: FA0005000094906 relating to the domain name rockcity.com. In that matter the parties allegations are virtually identical to the allegations in this matter. In that matter it was ruled that Complainantís request for transfer of the domain name rockcity.com was denied.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements in order to demonstrate claims 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; and

(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.

The domain name is question rock-city.com is identical to Complainantís mark ROCK CITY.

Complainant alleges that Respondent has no rights or legitimate interests in the domain name rock-city.com. Once Complainant makes out a prima facie showing in that regard, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the domain name. See Document Technologies, Inc. v. International Electronic Communications Inc., Case No. D2000-0270 (WIPO June 6, 2000).

Respondent has shown that it has a legitimate interest in the domain name rockcity.com, and asserts that it therefore has equally legitimate rights in the domain name rock-city.com. Respondent does not, however, appear to be using the domain name rock-city.com ń that domain name does not forward a user on to Respondentís main site at rockcity.com, but instead leads to a page that states only that the domain name has been registered through the registrar Verio. Nevertheless, the Panel notes that it is a common practice to register close variants of a domain name actively in use in order to protect the name and similar names against cybersquatters and against the potential for confusion. Accordingly, on this record, and because this is not the proper forum to adjudicate Complainantís allegations of trademark infringement, the Panel finds that Respondent does have a legitimate interest in the domain name rock-city.com.

Given the truncated nature of these UDRP proceedings and the inability of the parties to fully litigate allegations of trademark infringement, the Panel concludes that Complainant has not proven that the domain name has been registered and is being used in bad faith. If Complainant believes that there was bad faith (for example, that its ROCK CITY mark and rockcitynews.com domain name were disclosed in a search report commissioned by Respondent, that Respondent was concerned that its adoption if rock-city.com would cause confusion with those marks, but that Respondent willfully adopted the ROCK CITY mark notwithstanding such concerns), then it should pursue its claims in a forum (e.g., court) that is more appropriate for such disputes. See Document Technologies, Inc. v. International Electronic Communications Inc., Case No. D2000-0270 (WIPO June 6, 2000); Inter Continental Hotels Corp. v. Khalid Ali Soussi, Case No. D2000-0252 (WIPO July 5, 2000).

Respondent has requested that the Panel chastise Complainant for filing the complaint in bad faith, and find that Complainantís filing constitutes an abuse of the administrative process. The Panel rejects these arguments. Complainant may have a bona fide claim against Respondent, particularly if Complainant can prevail in its allegation that Respondentís website, rock-city.com, infringes Complainantís common law rights in the mark ROCK CITY. Accordingly, the Panel concludes that Complainantís conduct does not constitute reverse domain name hijacking.

The Panel similarly rejects Respondentís argument that the Complaint should be dismissed because Complainant failed to serve the Complaint on the Respondent, as required by the Rules. Complainant is acting on a largely pro se basis in this proceeding, and its failure to properly serve Respondent did not prejudice Respondent in any way, particularly given that Respondent has received actual notice of this proceeding through the Forum, and has submitted a response on the merits. That procedural defect under the facts of this case is not considered to be significant by the Panel.

Finally the panel also rejects Respondentís argument that the complaint should be dismissed because it made no specific allegations as to rock-city.com. Complainant originally filed a petition relating to the domain names rockcity.com and rock-city.com. NAF required that there be 2 separate proceedings because there were 2 different registrants for those domain names. In complainantís response in this matter sufficient allegations were made concerning the domain name at issue, rock-city.com, for the complaint to be considered by the Panel.

DECISION

Complainantís request for transfer of the domain name is denied.

Panel: Tyrus R. Atkinson, Jr., Esquire

David H. Bernstein, Esquire

Judge Karl V. Fink (Retired)

For the Panel

Judge Karl V. Fink, (Ret.), Chair

Dated: August 8, 2000

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