DECISION

Earth Forums c/o Rick Papaleo v. Lee Yi

Claim Number:  FA0301000143702

PARTIES

Complainant is Earth Forums c/o Rick Papaleo, Kings Beach, CA, USA(“Complainant”) represented by Rick Papaleo, of Earth Forums. Respondent is Lee Yi, Yung Ho TW 234, TAIWAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <earthforums.com>, registered with Stargate Communications, Inc.

PANEL

On March 4, 2002, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.  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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 29, 2003; the Forum received a hard copy of the Complaint on January 30, 2003.

On January 31, 2003, Stargate Communications, Inc. confirmed by e-mail to the Forum that the domain name <earthforums.com> is registered with Stargate Communications, Inc. and that Respondent is the current registrant of the name. Stargate Communications, Inc. has verified that Respondent is bound by the Stargate Communications, Inc. 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 February 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 24, 2003 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@earthforums.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.

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 makes the following assertions:

1. Respondent’s <earthforums.com> domain name is identical to Complainant’s EARTH FORUMS mark.

2. Respondent does not have any rights or legitimate interests in the <earthforums.com> domain name.

3. Respondent registered and used the <earthforums.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Earth Forums c/o Rick Papaleo, is an organization that provides information about environmental issues, online discussion forums based on environmental topics, environmental news, and a free environmental directory. As an integral part of its organizational plan, Complainant registered the <earthforums.com> domain name on December 12, 1999.

From its registration of the <earthforums.com> domain name, Complainant invested significant amounts of time and money developing awareness of its organization in the environmental community. During a sample week in December of 2002, Complainant received 17,684 unique visitors to its domain name and over 104,000 hits. Websites that linked directly to the <earthforums.com> domain name included <art.com>, <backcountrystore.com>, <allposters.com>, <cj.com>, and the U.S. Department of Energy at <eren.doe.gov>.

Besides attracting these links to Complainant’s website, Complainant has consistently spent funds on pay-per-click listings promoting products that were listed in the shopping section of Complainant’s website. Throughout its website and in all links and advertisements to that website, the EARTH FORUMS mark was used to represent the source of the information provided and products listed. Advertisers of products listed at the <earthforums.com> domain name relied upon the value of that mark as a resource for marketing their goods. As a result of an administrative billing error, Complainant unknowingly and inadvertently allowed its domain name registration to expire on January 24, 2003.

Respondent, Lee Yi, registered the <earthforums.com> domain name on January 24, 2003. Respondent’s registration came on the same day that Complainant inadvertently permitted its domain name registration to expire. Respondent currently uses the disputed domain name to host a search engine.

Respondent has been brought before administrative panels in the past for its pattern of registering domain names that have been permitted to lapse, each time replacing the existing webpage with a search engine. Eventually, several of the subject domain names were offered for sale.

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 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 has established common law rights in the EARTH FORUMS mark by demonstrating that there is sufficient secondary meaning associated with its mark. See British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).

Respondent’s <earthforums.com> domain name is identical to Complainant’s EARTH FORUMS mark. Neither the elimination of the space between the words EARTH and FORUMS nor the addition of the top-level domain “.com” distinguish the domain name for the purposes of Policy ¶ 4(a)(i). 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”); see also Technology Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK).

Accordingly, the Panel finds that the <earthforums.com> domain name is identical to Complainant’s EARTH FORUMS mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant originally registered the <earthforums.com> domain name three years ago, and used it consistently until its registration was inadvertently allowed to lapse. Respondent’s immediate registration of the disputed domain name after Complainant’s registration expired is evidence that Respondent lacks rights or legitimate interests in the domain name. In coming to this conclusion, the Panel notes that other domain names incorporating the EARTH FORUMS mark with a different generic top-level domain were available for registration at the time that Respondent deliberately chose to register Complainant’s lapsed domain name. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that “Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name”).

Complainant can also show that Respondent has no rights or legitimate interests in the disputed domain name by demonstrating that the provisions of Policy ¶¶ 4(c)(i)-(iii) do not apply to Respondent. Such a successful showing shifts Complainant’s burden to Respondent. Respondent’s failure to submit a response in this proceeding will then result in a finding for Complainant on this element. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

In assessing whether Complainant has met its burden under Policy ¶ 4(a)(ii), the Panel chooses to consider Respondent’s lack of response as evidence that it lacks rights and legitimate interests in the disputed domain name. The Panel will also view the evidence submitted in the Complaint in a light most favorable to Complainant, and will draw all appropriate inferences available therein. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent’s <earthforums.com> domain name is used to host a simple online search engine. Considering the circumstances surrounding Respondent’s registration of the domain name, the Panel finds that this is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the domain name, and Policy ¶¶ 4(c)(i) and (iii) do not apply in these circumstances. See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

There is no evidence before the Panel that Respondent is “commonly known by” the name EARTH FORUMS or <earthforums.com>. Thus, the Panel finds Policy ¶ 4(c)(ii) does not apply to this dispute. 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <earthforums.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

While the Policy lists four examples demonstrating registration and use of a domain name in bad faith, this list merely illustrates possible situations that demonstrate bad faith. The Panel may look to the totality of the circumstances surrounding the registration and use of a domain name in determining whether bad faith is present. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

In this dispute, the Panel infers that Respondent knew of Complainant’s rights in the EARTH FORUMS mark, and the value of the disputed domain name to Complainant, when it registered the <earthforums.com> domain name. Registering Complainant’s active domain name for its own purposes is strong evidence that Respondent registered and used the disputed domain name in bad faith. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of the Complainant’s failure to renew a domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (inferring that Respondent had knowledge that the <tercent.com> domain name previously belonged to Complainant when Respondent registered said domain name the very same day Complainant’s registration lapsed).

Furthermore, Respondent’s actions run afoul of one of the enumerated examples of bad faith listed in the Policy. Policy ¶ 4(b)(ii) considers a pattern of preventing trademark holders from reflecting their mark online as evidence of bad faith use and registration. Here, Respondent is preventing Complainant from reflecting its common law EARTH FORUMS mark at the domain name that played such an integral role in developing the goodwill surrounding that mark. This prevention satisfies the first prong of Policy ¶ 4(b)(ii).

Respondent’s pattern of such conduct, satisfying the second prong required under Policy ¶ 4(b)(ii), is evidenced by Respondent’s loss of at least two domain names in decisions by previous administrative panels. Both of these disputes were decided on the basis of facts nearly identical to those in the present dispute. See R-H-Interactive Jobfinance v. Mooburi Services, FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (finding that Respondent’s registration and use of the <jobfinance.com> domain name “immediately after Complainant failed to timely renew the domain name registration” was done in bad faith, where Respondent’s WHOIS contact information listed Lee Yi as owner of Respondent); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that Respondent’s pattern of registering domain names which had inadvertently been permitted to lapse satisfied the provisions of Policy ¶ 4(b)(ii)).

The Panel thus finds that Respondent registered and used the <earthforums.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

James P. Buchele, Panelist

Dated: March 7, 2003

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