DECISION

Working Words Inc. v. Working Words

Claim Number: FA0204000110838

PARTIES

Complainant is Working Words Inc., Malvern, PA, USA (“Complainant”) represented by Donald A. Nogowski, of Earp Cohn P.C.  Respondent is Working Words, San Juan, PUERTO RICO (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <workingwords.com>, registered with Network Solutions.

PANEL

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

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 25, 2002; the Forum received a hard copy of the Complaint on May 9, 2002.

On May 1, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <workingwords.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 13, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 3, 2002 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 Respondent’s registration as technical, administrative and billing contacts, and to postmaster@workingwords.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 June 21, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <workingwords.com> domain name is identical to Complainant’s registered WORKING WORDS service mark and common law mark.

2. Respondent has no rights or legitimate interests in the <workingwords.com> domain name.

3. Respondent registered and used the disputed domain name in bad faith.

B. Respondent failed to submit a Response.

FINDINGS

Complainant is the owner of U.S. Patent and Trademark Office (“USPTO”) Reg. No. 1,875,701 for the WORKING WORDS service mark, registered on January 24, 1995, as listed on the Principal Register of the USPTO. Complainant has been using the trade name “Working Words” as the name of its business since 1990. As of February 2, 2002, the above-referenced service mark registration was unintentionally allowed to lapse, although Complainant has retained common law rights in the mark since.

In September 1999, Complainant attempted to register the subject domain name and discovered that Respondent had already registered it. Complainant’s investigation revealed that Respondent registered the disputed <workingwords.com> domain name on September 5, 1997. Respondent’s website remained inactive until January 2001, at which time it was offering web hosting services. Upon Complainant’s offer to purchase the contested domain name from Respondent for $250.00, Respondent refused to sell, instead requesting $40,000.00.

DISCUSSION

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; 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

Complainant maintains rights in its WORKING WORDS mark. Complainant has operated under the WORKING WORDS mark since 1990, and has held a service mark in the mark registered on the Principal Register of the USPTO since 1995. Although Complainant’s mark has since expired, past registration indicates that Complainant’s mark is not generic and can be protected as a trademark. Complainant has acquired common law rights in the WORKING WORDS mark through continuous use since 1990, thereby satisfying Policy ¶ 4(a)(i) requirements. See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that complainant has a bona fide basis for making the complaint in the first place); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the UDRP to “unregistered trademarks and service marks”).

Respondent’s <workingwords.com> domain name is identical to Complainant’s WORKING WORDS mark because the absence of a space has been held to be inconsequential when conducting an “identical” analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

Accordingly, the Panel finds that Policy ¶4(a)(i) has been satisfied.

Rights or Legitimate Interests

Because Respondent has not submitted a Response in this matter, the Panel may presume it has no rights or legitimate interests in respect of the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Complainant’s investigation revealed that Respondent failed to make use of the contested domain name and attached website until January 2001. Respondent only manufactured a purpose for the domain after Complainant contacted Respondent and communicated to Respondent that it was aware of the non-use of Respondent’s <workingwords.com> domain name. Respondent’s inaction in developing its website does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent has not used the domain names in connection with any type of bona fide offering of goods and services); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v.  Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

Respondent failed to make use of the domain name until notified that its passive holding of the domain may lead to a dispute. Prior to any notice of the dispute, Respondent had not used the domain name in connection with any type of bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the Respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving the Complainant’s “cease and desist” notice).

Furthermore, Respondent is not commonly known by “workingwords” or <workingwords.com> pursuant to Policy ¶ 4(c)(ii). Complainant’s investigation revealed that Respondent’s alleged business entity, named “Working Words,” does not exist. Respondent’s non-existent fictional entity, “Working Words,” is the alter ego of Respondent Mediawire Communications, Inc., having an office in San Juan, Puerto Rico. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Because of Complainant’s registration with the USPTO and listing on the Principal Register when Respondent initially registered the disputed domain name, Respondent is thought to have been on constructive notice as to the existence of Complainant’s mark. Thus, Respondent’s registration despite this notice is evidence of bad faith registration. See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

Complainant offered to purchase the contested domain name for Respondent’s out-of-pocket expenses related to the registration of the domain name. Respondent refused Complainant’s offer, instead requesting $40,000.00 in compensation rather than the $250.00 that the Complainant originally proposed. Respondent’s demand of payment in excess of what was incurred for registration evidences bad faith under Policy ¶ 4(b)(i). See World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs); see also Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a Panel should not “put much weight on the fact that it was the Complainant who contacted the Respondent to see if it was interested in selling the domain name”).

Respondent failed to make any use of the contested domain name until it was alerted to the possibility of a dispute by Complainant’s communications. Respondent’s passive holding of the domain name permits an inference of registration and use in bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.

Accordingly, it is Ordered that the <workingwords.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: June 26, 2002

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