DECISION

Charles P. Stetson, Jr. v. Data Text

Claim Number:  FA0409000333070

PARTIES

Complainant is Charles P. Stetson, Jr. (“Complainant”), represented by Marco Ciavolino, 1603 Belvue Drive, Forest Hill, MD 21050-2508.  Respondent is Data Text  (“Respondent”), 2000 E. Lamar Blvd., Ste. 600, Arlington, TX 76006-7340.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <releasetime.org>, registered with Network Solutions LLC.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 22, 2004; the Forum received a hard copy of the Complaint on September 29, 2004.

On September 24, 2004, Network Solutions LLC confirmed by e-mail to the Forum that the domain name <releasetime.org> is registered with Network Solutions LLC and that Respondent is the current registrant of the name. Network Solutions LLC has verified that Respondent is bound by the Network Solutions LLC 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 October 6, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 26, 2004 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@releasetime.org 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 November 3, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 makes the following assertions:

1. Respondent’s <releasetime.org> domain name is identical to Complainant’s RELEASETIME.ORG mark.

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

3. Respondent registered and used the <releasetime.org> domain name in bad faith.

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

FINDINGS

Complainant, Charles P. Stetson, Jr., is an individual claiming rights in the <releasetime.org> domain name.  On March 1, 2001, the National Bible Association passed a resolution stating that it transferred right and title interest in various assets, including the <releasetime.org> domain name.  Complainant asserts that it has had difficulty transferring the domain name from Respondent to itself.  Complainant also states that it has created a new site, <releasedtime.org>, so it could copy the educational content at <releasetime.org> and administer <releasedtime.org> in accordance with the National Bible Association’s wishes.  Complainant has not filed a trademark registration for RELEASETIME.ORG.

Respondent, Data Text, registered the <releasetime.org> domain name on May 11, 1999.  David Saul is registered as the administrative contact.  Respondent is using the domain name to provide religious education materials on the Internet.

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 not established adequate rights in a mark to bring a claim under the Policy.  Complainant asserts that it holds the rights to the <releasetime.org> domain name, as evidenced by the National Bible Association board resolution transferring right and title interest in <releasetime.org> to Complainant.  However, the Policy protects holders of a mark from abusive registrations of domain names.  Complainant has not asserted rights in a mark that is confusingly similar or identical to the disputed domain name.  Complainant has actually averred that it has not filed a trademark.  See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that in order to bring a claim under the Policy, Complainant must first establish a prima facie case, and Complainant’s initial burden is to provide proof of “valid, subsisting rights in a mark that is similar or identical to the domain name in question”); see also FRH Freies Rechenzerntrum v. Ingenieurburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that Complainant has not proven by a preponderance of the relevant, admissible, and credible evidence that the domain name in question is identical to a trademark in which Complainant has rights despite Complainant’s mark being the dominant feature of Complainant’s trade name).

The essence of Complainant’s Complaint is that the National Bible Association does not have the authority to transfer the domain name.  For Complainant to bring a claim under Policy ¶ 4(a)(i), it would need to show that it has rights in the RELEASETIME.ORG mark by registration with the U.S. Patent and Trademark Office or by establishing secondary meaning under the common law.  Complainant has not made a prima facie showing under Policy ¶ 4(a)(i). 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 McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy.).

The Panel finds that Complainant has not established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to file a Response; therefore, the Panel shall accept any reasonable allegations by Complainant as true.  See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

The Panel admits that it finds it difficult to determine whether Complainant has made a prima facie allegation that Respondent lacks rights or legitimate interests in the <releasetime.org> domain name.  At best, the Panel accepts that Bruster Mance and David Saul registered the <releasetime.org> domain name in their names and in the name of Data Text (Respondent).  Because Saul is listed as the administrative contact of the disputed domain name, the Panel infers that Saul was affiliated with Data Text.  The Panel also accepts that at the time of registration of the domain name, Respondent was acting on the behalf of the National Bible Association.

Complainant has asserted that it has been unsuccessful contacting Saul to transfer the domain name.  The Panel infers that the National Bible Association chose Saul to acquire and administer the <releasetime.org> domain name, and now it would like Complainant to take over that task.  However, Complainant’s allegations that Respondent is difficult to contact does not constitute a prima facie allegation that Respondent lacks rights or legitimate interests in the disputed domain name.  See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when Respondent does file a Response, Complainant must allege facts, which if true, would establish that Respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by Complainant that establish Respondent lacks rights or legitimate interests in the disputed domain name, the Panel may decline to transfer the disputed domain name).

The Panel finds that Complainant has not established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

This Complaint centers on Complainant’s efforts to transfer the registration of the <releasetime.org> domain name.  Complainant’s entire bad faith argument is as follows:

[i]   The Appendix outlines in detail the good faith attempts to contact Mr. Saul and his associate Mr. Mance.

[ii]    Mr. Saul has been unreachable and/or unwilling to respond to direct requests to comply with the board decision.

[iii.]   The Registrant [sic] rights to the domain should be withdrawn because it is direct conflict with the board resolution shown above and the fact that by [sic] Mr. Saul has been unreachable or unwilling to respond to a range of inquiries.

[iv.]   Mr. Saul should never have registered the domains in question in his own name and should have instead registered them in the name of the organization.

Complainant asserts that upon the domain name’s inception, Respondent did not have the authority to register the <releasetime.org> domain name under Respondent’s name.  And now the National Bible Association, the entity behind the content of the <releasetime.org> domain name, would like Complainant to administer the <releasetime.org> domain name.  This dispute is outside the scope of the Policy.  The essence of this dispute is a contract claim.  See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (dispute concerning employee’s registration of domain name in his own name and subsequent refusal to transfer it to employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP Panel); see also Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (refusing to transfer the domain name and stating that the ICANN Policy does not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy”).

Additionally, the Panel may only order a transfer of a domain name upon evidence of the abuse of the registration process.  If the Panel were to assume, arguendo, that the National Bible Association was Complainant, and it held the rights to the RELEASETIME.ORG mark, it would also find at the time of the initial registration that Complainant has failed to demonstrate that Respondent registered the <releasetime.org> domain name in bad faith.  See Eddy’s (Nottingham) Ltd v. Smith, D2000-0789 (WIPO Sept. 7, 2000) (finding no bad faith registration of the domain name where Respondent registered the domain name in good faith, without objection by Complainant, and in the interest of promoting Complainant’s business); see also Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (finding that Respondent did not register the disputed domain name in bad faith where it "registered the Domain Name with the full consent and knowledge of Complainant" and therefore "did not have the requisite bad faith when he registered the Domain Name, which is an express requirement of the Policy").

Therefore, the Panel finds that Complainant has not established Policy ¶ 4(a)(iii).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

John J. Upchurch, Panelist

  Dated:  November 17, 2004

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