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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Ruben L. Lopez v. Irish Realty Corporation
Claim Number: FA0005000094906
PARTIES
The Complainant is Ruben L. Lopez, Los Angeles, CA, USA ("Complainant"). The Respondent is Irish Realty Corporation, Oklahoma City, OK, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "ROCKCITY.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"). 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) "ROCKCITY.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 5.0 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 respondent filed a timely response on 6/21/00.
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
A. Complainant
FINDINGS
DISCUSSION
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 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.
Identical and/or Confusingly Similar
The domain name in question rockcity.com is identical to Complainantís mark ROCK CITY.
Rights or Legitimate Interests
Complainant alleges that Respondent has no rights or legitimate interests in the domain name rockcity.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 this domain name. It asserts that it selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of this dispute. See Policy 4(c)(i). To neutralize that assertion, Complainant would have to show that the domain name is causing confusion and constitutes infringement, in which case it would undermine any assertion that Respondent was engaged in a bona fide offering of services. Id. Because of the nature of these truncated proceedings, this is not the proper forum for adjudication of any such allegations. Thus, if Complainant wishes to prove that Respondent lacks a legitimate interest in this domain name (and that its registration and use is in bad faith), it should pursue those claims in court, which is a more appropriate forum because it provides for discovery, live testimony, and credibility determinations. See Document Technologies, Inc. v. International Electronic Communications Inc., Case No. D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotels Corp. v. Khaled Ali Soussi, Case No. D2000-0252 (WIPO July 5, 2000).
Bad Faith
For the same reasons as discussed in the proceeding section on the legitimacy of Respondentís interest, Complainant has not proven that the domain name has been registered and is being used in bad faith. Again, 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 of rockcity.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. Id.
Bad Faith by Complainant
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, rockcity.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.
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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URL: http://www.worldlii.org/int/other/GENDND/2000/854.html