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Alan Gibby v. Frank Avence [2005] GENDND 1284 (21 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alan Gibby v. Frank Avence

Case No. D2005-0541

1. The Parties

The Complainant is Alan Gibby, Del Avion, California, United States of America, represented by Knobbe, Martens, Olson & Bear, LLP, United States of America.

The Respondent is Frank Avence, Paris, France.

2. The Domain Name and Registrar

The disputed domain name <extremesports.com> is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2005. On May 20, 2005, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On May 27, 2005, InnerWise, Inc. d/b/a ItsYourDomain.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24,2005.

The Center appointed Ross Carson as the sole panelist in this matter on July 7, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

DynoComm Sports DBA Alan Gibby Productions, Inc. is the Registrant of United States Service Mark Registration No. 2,546,157 {Annex 8 to the Complaint} for the trademark ExtremeSports.com&Design registered on March 12, 2002 on the Principal Register in relation to “Online computer services, namely, providing information regarding the goods and services of others in the nature of buyers’ guide links to sports and sports products sites, by means of a global computer network”. The design is comprised of two interconnected rings disposed at right angles to each other.

The registration includes the disclaimer: No claim is made to the exclusive right to use “Extremesports.com” apart from the mark as shown. The application was based on first use in commerce since: 19900815, the application for the above noted mark made reference in the application to the U.S. Trademark Application number 75/701611. A review of the U. S. Trademarks Office database discloses that U.S. Trademark Application No. 75/701611 for the word mark” Extremesports.com” was abandoned after several non-final actions.

A request to correct the Certificate of Registration of Reg. No. 2,546,157 to amend Registrant’s name to Alan Gibby Productions, Inc. dba Dynocomm Sports was filed in the U.S. Trademarks Office on May 13, 2005. The request to correct is based on the fact that at the date of application due a typographical error the applicant’s name was reversed and should have read Alan Gibby Productions, Inc. dba Dynacomm Sports. The request is supported by affidavits and certificates. The Request also advised that Alan Gibby has merged into another entity since the issuance of the Certificate of Registration on March 12, 2002. The request advises that the merger documents will be recorded once the correct Certificate of Registration issues.

5. Parties’ Contentions

A. Complainant

The Complainant caused Alan Gibby Productions, Inc. to be incorporated in the State of California on December 30, 1987. (Annex 4 to the Complaint). Alan Gibby Productions, Inc. carried on business under the name DynoComm Sports. DynoComm Sports was the domain name registrant of the domain name <extremesports.com> having a record creation date of September 8, 1995. Alan Gibby was named as the Administrative and Billing Contact of <extremesports.com>. (Annex 5 to the Complaint). Alan Gibby was also the owner of the domain name <dynocommsports.com>. (Annex 5 to the Complaint).

The Complainant was the President and majority shareholder of Extremesports.Com Inc. a corporation of the State of Delaware.

Effective the first day of August 2002, Alan Gibby Productions, Inc. was merged into Extremesports. Com, Inc. under the name Extremesports.Com, Inc. in the State of Delaware. (Annex 9 to the Complaint).

Pursuant to an undated Nunc Pro Tunc Assignment of Service and Design Marks between Extremesports. Com, Inc., the Assignor, and Alan Gibby the Assignee. The Assignor represented and confirmed that prior to April 15, 2003, it was the owner of the Internet domain name <extremesports.com>, the trademarks EXTREMESPORTS, EXTREMESPORTS.COM, EXTREMESPORTS.COM and Design and EXTREMESPORTS Design and United States Trademark Registration No. 2,546,157 for the Service Mark EXTREMESPORTS.COM & Design. (Annex 9 to the Complaint, pages 9 to 11). The Assignee states that prior to April 15, 2003, he was the President, founder and majority share-holder of Assignor. The Assignment included the domain name, trademarks and registered trademark along with the goodwill and business associated therewith.

Alan Gibby of DynoComm renewed the domain name registration <extremesports.com> for five years until September 9, 2005. (Annex 6 to the Complaint).

As a result of the merger, the website located at “www.dynocommsports.com” and the associated e-mail addresses, including dynacomm@dynocommsports.com were shut down. The e-mail address at dynocomm@dynocommsports.com was shown as the e-mail address to contact Alan Gibby the Administrative Contact for the domain name <extremesports.com>. (Annex 5 to the Complaint).

The Complainant submits that on or around November 14, 2003, Sandra Jerfons obtained use of the e-mail address dynocomm@dynocommsports.com. Thereafter, Ms. Jerfons, pretending to be the Complainant’s authorized representative, contacted NSI and altered the contact information for the <extremesports.com> domain name to her own contact information. Subsequently, on or about November 18, 2003, Ms. Jerfons transferred the domain name to the Respondent Frank Avence.

Despite numerous attempts to contact the Respondent at the Registrant street address and telephone number, it was found that the telephone number was not a working telephone number. A Godiva Chocolate Shop is in existence at the address in Paris provided for the Registrant, Frank Avence.

The Complainant has made considerable effort to contact Ms. Jerfons and Frank Avence, informing them of Complainant’s rights in the domain name in dispute, without any success in locating them or obtaining a response. (Annexes 14 to 19 to the Complaint).

On several occasions, Complainant communicated with NSI, the previous registrar for <extremesports.com> regarding the fraudulent transfer of the domain name. However, NSI indicated they could not assist the Complainant. (Annex 13, 14 to the Complaint).

The Complainant states that on or about March 23, 2005, Complainant determined that Mr. Avence was no longer listed as a registrant of the domain name <extremesports.com>. Instead, in a effort to hide the actual registrant’s contact information, SecureWhoIs was now listed as the registrant. The Complainant submits that Secure WhoIs provides a “proxy” service which prevents the actual contact information from being displayed in public “whois” databases. Once a person or entity purchases SecureWhoIs’ services, SecureWhoIs’ contact information is thereafter listed as the “registrant,” “administrative contact,” and “technical contact” for a domain name, with the true registrant information being “masked” A printout showing SecureWhoIs as the registrant is attached as Annex 20 to the Complaint.

The Complainant further states that on or about March 25, 2005, Complainant’s associate, Ms. Abbott, e-mailed SecureWhoIs and advised them that Complainant was the rightful owner of the <extremesports.com> domain name. In response to this e-mail, on or about April 12, 2005, Steven Forte of SecureWhoIs telephoned Complainant’s attorney, Stacey R. Halpern. Mr. Forte also e-mailed Ms. Halpern and indicated that Respondent’s service in connection with the <extremesports.com> domain name would immediately be terminated. Copies of these e-mails are attached as Annex 21 to the Complaint. However, SecureWhoIs’ services were not immediately terminated. Mr. Forte e-mailed Ms. Abbott and advised her that SecureWhoIs’ services had been terminated. (Annex 22 to the Complaint).

Confusingly Similar

The Complainant submits that as assignee of the United States Trademark Registration No. 2,546,157 for EXTREMESPORTS.COM & Design the Complainant has rights in the EXTREMESPORTS.COM mark. By reason of ownership of the corporate name ExtremeSports.com and the assignment of all rights therein to the Complainant the Complainant has trade name rights in ExtremeSports.com. The transfer of the trademark rights and trade name rights to the Complainant effective August 1, 2002, precede the date of the transfer of the domain name in dispute to Ms. Jarfons and subsequently to Frank Avence.

Complainant submits that it has offered services in connection with the trade name ExtremeSports.com.

The Complainant submits that the domain name in dispute <extremesports.com> is confusingly similar with Complainant’s trade name and mark EXTREMESPORTS.Com under Paragraph 4(a) of the Policy.

Respondent Has No Rights or Legitimate Interest.

The Complainant submits that the Respondent has no right to register or use the domain name in dispute, nor can Respondent assert a legitimate interest in the domain name. Rather, Respondent fraudulently obtained the domain name and provided false contact information. Thereafter, Respondent tried to prevent Complainant from bringing this action by engaging SecureWhoIs’ services. SecureWhoIs’ purpose in registering the <extremesports.com>domain name is “masking” the true registrant.

The Complainant submits on information and belief that at no time has Respondent had a website located at the domain name <extremesports.com>. Respondent is not making any legitimate non-commercial or fair use of the domain name under Paragraph 4(c)(iii) of the Policy. Respondent has not, at any time, conducted a business incorporating or using the names “EXTREMESPORTS” or <extremesports.com>, nor are the names associated with or descriptive of any business carried on by Respondent.

Respondent Registered and is Using the Domain Name in Bad Faith.

Complainant submits that the circumstances detailed above suffice to demonstrate that the Respondent registered <extremesports.com> in bad faith. According to the Complainant, the totality of the circumstances, including Complainant’s ownership of a prior service mark registration, Respondent’s failure to respond to Complainant’s e-mails, Respondent’s provision of false contact information, and Respondent’s fraudulent acquisition of the domain name and laundering of the domain name, constitute sufficient evidence of bad faith use.

Complainant paid for the registration of the domain name <extremesports.com> with his personal credit card. This payment and subsequent renewals registered the domain name in Complainant’s name until August 2005. Nonetheless, Respondent sent fraudulent e-mails to NSI requesting that the administrative, technical and billing contacts be changed from Complainant to Respondent’s predecessor. The domain name in dispute was stolen from Complainant. Consequently, Respondent cannot have good title in the domain name or pass good title to another. Despite having been formally placed on notice in writing by Complainant of Complainant’s prior rights in the domain name in dispute, Respondent nevertheless has not returned the domain name to Complainant. (See Agent Host Co. v. Host.com (“Agent”), resolution Case No. AF-0353, 2000). Annex 24 to the Complaint.

Complainant states that in the Agent case, supra, the Panel indicated that “ It would also be difficult to say a thief acts other than in bad faith. While other cases have had difficulty in determining if the initial registration was in bad faith, that is very clear under the present circumstances. The continued possession of the domain name, under the special circumstances of this case, also clearly demonstrates the domain name is being used in bad faith.” The Complainant submits that Ms. Jerfons fraudulently and in bad faith obtained the domain name.

The Complainant further states that further evidence of Respondent’s bad faith is demonstrated by the fact that Ms. Jerfons and Mr. Avence provided false contact information, contending that this fact alone supports a finding of bad faith.

The Complainant argues that while Respondent has not actively used the domain name in dispute, past decisions have held that passive control of a disputed domain name constitutes bad faith.

The Complainant states that in Ubanque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656 (Annex 27 to the Complaint), a case similar to the case at hand, the respondent was able to obtain the domain name. Prior to filing the complaint, the complainant unsuccessfully sought to use administrative channels to have the domain name transferred back to the complainant. The complainant alleged that the respondent had “hijacked” the domain name. The WIPO panel agreed and found that the domain name should be transferred to the complainant. As in Ubanque, the Complainant argues that the Respondent’s bad faith is demonstrated by Ms. Jerfons’ use of the e-mail address listed as the administrative contact to “hijack” the domain name in dispute.

The Complainant submits that the Respondent’s bad faith is also evidenced by Mr. Avence’s elaborate scheme to cover up his true identity. Respondent’s misappropriation of the domain name will irreparably injure the reputation and goodwill associated with Complainant and his trade name and service mark. Further, if Respondent retains ownership of the domain name, Complainant will be unable to use Complainant’s service mark and trade name to designate and identify a website by the domain name most likely to be used by persons looking for Complainant’s services on the Internet and Complainant’s genuine website.

B. Respondent

The Respondent did not file a Response.

6. Discussion and Findings

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”.

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;

(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 fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of the Respondent to file a Reply results in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following therefrom in the Complaint as true. Charles Jourdan v. Holding AG v. AAIM, WIPO Case No. D2000-0403.

Identical or Confusingly Similar

Pursuant to Paragraph 4(a)(i) of the Policy the Complainant must establish rights in a trademark and secondly that the domain name in dispute is confusingly similar to the trademark in which the Complainant has rights.

The Complainant is the owner of United States Service Mark Registration No. 2,546,157 for the trademark ExtremeSports.com and Design registered on March 12, 2002, on the Principal Register in relation to “Online computer services, namely, providing information regarding the goods and services of others in the nature of buyers’ guide links to sports and sports product sites, by means of a global computer network.” The design element of the trademark is comprised of two interconnected rings disposed at right angles to each other.

The registration includes the disclaimer “No claim is made to the exclusive right to use ‘Extremesports.com’ apart from the trademark as shown”.

The application which proceeded to U.S. Registration No. 2546157 made reference in the application to the U.S. Trademark Application No. 75/701611 filed by the same applicant. A review of the U. S. Trademarks Office database discloses that the trademark applied for in U. S Trademark Application No. 75/701611 was the word mark “Extremesports.com”. The application was abandoned by the applicant after several non-find actions.

As to the question whether the domain name in dispute <extremesports.com> is confusingly similar to the registered trademark EXTREMESPORTS.COM & Design, the Panel notes that the distinctive and non-disclaimed part of the registration is the design of the interlocking rings arranged at right angles to one another. However, since the aim of the Policy is to stop bad-faith registrations of domain names and that is the heart of most UDRP proceedings, the Panel will move directly to the third element of the Policy and the issue of bad faith.

The Panel concludes below that the Complainant has not met its burden of persuasion under the third element, and a complainant has to prove all three elements under the Policy (Policy paragraph 4(a), thus it is not necessary to draw a conclusion under the first element of the Policy.

Bad faith registration and use

The Panel does not believe that the Complainant has satisfactorily proven its allegation of bad faith.

The Complainant argues that the following facts prove bad faith:

- Respondent “fraudulent acquired” the domain name

- Complainant’s ownership of a prior US service mark registration

- Respondent’s failure to respond to Complainant’s emails

- Use of registrar’s Secure Who-is service

- Respondent’s incorrect contact information

As to the Complainant allegation that the and Respondent “fraudulent acquired” the domain name through “laundering of the domain name”, there is nothing in the case file which proves this allegation. Nor is there evidence proving the equally bold statements “Respondent sent fraudulent emails to NSI requesting that the administrative, technical and billing contacts be changed from Complainant to Respondent” and “the domain name was stolen from Complainant”. It is unfortunate that these allegations are not evidenced. Following a number of submissions by the Complainant of fraudulent activity by the transferee of the domain name in dispute in acquiring the domain name in dispute, (Annex 13 to the Complaint), the Quality Processing Specialist for NSI informed Alan Gibby in an e-mail dated 04/01/04 (Annex 13 to the Complaint, page 10 of 13) that: “We have completed our investigation and have found no fraudulent activity in regards to the transfer of <extremesports.com>.” The Panel has considered the evidence submitted in the case and finds that the Complainant has not established on a balance of probabilities that the domain name in dispute was transferred to the prior or current registrant through fraudulent activity.

The Complainant has not filed any evidence of substantial use of its registered trademark in the United States or France in respect of the services for which the trademark is registered. Moreover, the domain name is of a descriptive character - a google search yields millions of web pages using the words “extreme” and “sports” and a multitude of uses of the words “extreme sports”. There is no proof in the case file that the Respondent residing in France had prior knowledge of the Complainant and his US registered trademark. The general concept of constructive notice is, if applicable at all under the UDRP Policy, hardly applicable in a case with a French respondent. Quoting the panel from The Way International Inc. v. Diamond Peters, WIPO Case No. D2003-0264. “As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the Complaint is an allegation of bad faith, bad faith targeted at the Complainant. For that bad faith to be present the cybersquatter must have actual knowledge of the existence of the trademark owner. If the registrant is unaware of the existence of the trademark owner, how can he sensibly be regarded as having any bad faith intentions directed at the Complainant? If the existence of a trademark registration was sufficient to give the Respondent knowledge, thousands of innocent domain name registrants would, in the view of the Panel, be brought into the frame quite wrongly”.

It is unsatisfactory that the Respondent has not properly explained why he registered the Domain Name, however, this does not amount to bad faith. Neither does the fact that the Respondent has given incorrect contact details to the registrar nor the fact that the Respondent has not replied to the Complainant’s requests. Whilst it may be that the Respondent has not behaved in a courteous or co-operative matter, the fact remains that there is no hard evidence in the case file proving that the Respondent intended to free ride on the Complainant’s goodwill in its trademark. Had the Domain Name registered been a famous or highly distinctive trademark or there was evidence that the Respondent had targeted the Complainant the whole set of circumstances might have indicated bad faith, but the Panel does not think the incorrect contact details and failure to reply as such or together indicate bad faith in this case.

Use of the registrar’s Secure Who-is service is a not an uncommon way to avoid spam email, and as such no indication of bad faith.

The Panel finds that the Complainant has failed to establish that the domain name was registered by the Respondent in bad faith.

Rights or Legitimate Interests

As the Panel has decided that the Complainant has not proven that the domain name in dispute was registered in bad faith, the Panel will not provide any reasons with respect to Paragraphs 4(a) (ii) of the Policy.

7. Decision

For the reasons expressed above the Panel denies the request that the Panel transfer the domain name <extremesports.com> to the Complainant.

Ross Carson
Sole Panelist

Dated: July 21, 2005