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Levi, Ray & Shoup, Inc. v. Capitol Systems Corporation [2005] GENDND 1419 (31 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Levi, Ray & Shoup, Inc. v. Capitol Systems Corporation

Case No. D2005-0700

1. The Parties

Complainant is Levi, Ray & Shoup, Inc., an Illinois corporation with a place of business in Springfield, Illinois, United States of America.

Respondent is Capitol Systems Corporation, an entity with an address in Phoenix, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed domain name <pensiongold.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on July 1, 2005. On July 4, 2005, the Center transmitted by email to Network Solutions a request for registrar verification in connection with the disputed domain name. On July 6, 2005, Network Solutions transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant for the domain name, indicating that it had “locked” the domain name, confirming several details of its registration agreement, and providing the Center with contact information for the administrative and technical contacts.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).

In accordance with Rules, Paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint and the proceedings commenced on July 12, 2005. In accordance with Rules, Paragraph 5(a), the Response was due on August 1, 2005.

No response was received from Respondent by the August 1, 2005 deadline. On August 2, 2005, the Center transmitted to Respondent, via email, a Notification of Respondent Default.

The Center appointed Debra J. Stanek as the sole panelist in this matter on August 17, 2005. The Panel finds that the Panel 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 Rules, Paragraph 7.

4. Factual Background

Complainant owns a United States federal trademark registration for the mark PENSIONGOLD, issued in 1997, for software used to administer pension funds. In addition, Complainant owns other marks that include the term “pensiongold.”

According to Complainant, Respondent registered the domain name <pensiongold.com> in December 2001, but has never maintained an active web site at the domain name.

5. Parties’ Contentions

A. Complainant

Complainant makes the following contentions:

The disputed domain name, <pensiongold.com>, is identical to Complainant’s PENSIONGOLD trademark.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant contends that Respondent has never used the domain name in connection with any offering of goods or services, the domain name has been “parked” since it was registered in 2001, and there are no indications of preparations to use the domain name. Finally, Complainant states that, to the best of its knowledge, Respondent is not known by the name “PensionGold.”

Respondent next contends that Respondent has registered and is using the disputed domain name in bad faith because: (1) despite Complainant’s demand letters, Respondent has renewed its registration of the domain name; (2) in a conversation with Complainant’s counsel, Respondent acknowledged that it had no rights in the name “PensionGold”; and (3) Respondent offered to sell the domain name to Complainant.

B. Respondent

As noted above, Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to prevail, Complainant must prove:

(i) The <pensiongold.com> domain name is identical or confusingly similar to Complainant’s PENSIONGOLD mark; and

(ii) Respondent has no rights or legitimate interests in respect of the <pensiongold.com> domain name; and

(iii) The domain name has been registered and is being used in bad faith.

The Policy, at Paragraph 4(b), sets out four sets of circumstances that may evidence a Respondent’s bad faith registration and use. The Policy also sets out, at Paragraph 4(c), examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name.

Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, Paragraph 14(b).

A. Identical or Confusingly Similar

Complainant has established its rights in the mark PENSIONGOLD by providing proof of its federal trademark registrations. Further, the disputed domain name is identical to Complainant’s PENSIONGOLD mark.

The Panel finds that Complainant has met its burden of establishing that Respondent’s domain name is identical to Complainant’s trademark.

B. Respondent Has No Rights or Legitimate Interests in the Domain Name

Establishing that Respondent has no rights or legitimate interest in a domain name -- proving a negative -- can be difficult. Some panels have held that the burden of establishing this element is light because the evidence lies within a respondent’s knowledge. Others have held that after a complainant makes a prima facie showing, the burden shifts to the respondent to rebut the complainant’s evidence. These approaches are consistent with the general structure of Rules. Rules, Paragraph 3(b)(ix)(2), requires a complainant to show why the respondent “should be considered” as having no rights or interests in the domain name (not why the respondent has no rights or interests in the name), while Rules, Paragraph 5(b), requires the respondent to “[r]espond specifically to the statements and allegations” of the complaint (emphasis added).

The Panel concludes that Complainant has made a minimal, but prima facie, showing that none of the three examples set forth in Paragraph 4(c) of the Policy apply.

First, it does not appear that Respondent was making a bona fide use of the domain name before notice of the dispute. See Policy, Paragraph 4(c)(i). As noted above, the disputed domain name is identical to Complainant’s mark, the use and federal registration of which predate the registration of the domain name, which does not appear to be actively used.

Second, although Complainant does not cite any evidence,¹ it does not appear that the disputed domain name is Respondent’s legal name or is used to identify Respondent. See Policy, Paragraph 4(c)(ii). The domain name is registered under the corporate name, Capitol Systems Corporation.

Third, it does not appear that Respondent is making a legitimate noncommercial or fair use of the domain name. See Policy, Paragraph 4(c)(iii).

Accordingly, the Panel believes that Complainant has met its burden under Rules, Paragraph 3(b)(ix)(2). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Respondent Has Registered and Used the Domain Name in Bad Faith

Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, Paragraph 4(b)(i)-(iv):

(i) registering the domain name primarily to sell it for more than documented out-of-pocket costs; or

(ii) registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct; or

(iii) registering the domain name primarily to disrupt the business of a competitor; or

(iv) using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement.

Here, Complainant has provided no evidence that Respondent’s conduct falls within any of these circumstances. The affidavit of Complainant’s counsel does state that in a telephone conversation between counsel and Respondent’s president, Respondent offered to sell the domain name to Complainant, “[making] it clear he wanted more than to recoup his registration fees.”² This vague characterization is not sufficient to establish that Respondent registered the domain name, in 2001, “primarily for the purpose of selling… [it] for valuable consideration in excess of… documented out-of-pocket costs.” See Policy, Paragraph 4(b)(i). Complainant provides no evidence and makes no argument that any of the circumstances in Paragraphs 4(b)(ii)-(iv) apply.

In the absence of evidence that Respondent’s conduct falls within the circumstances outlined above, Complainant must prove both registration and use in bad faith.

The Complaint argues that: (1) Respondent had actual knowledge, by virtue of Complainant’s cease and desist letters, of Complainant’s PENSIONGOLD mark at the time it renewed the domain name registration; and (2) Respondent is passively holding the domain name.

The Panel finds that the mere renewal of the domain name does not amount to registration for the purposes of determining bad faith. Accordingly, evidence that Respondent knew of Complainant’s mark at the time of renewing the domain name registration is not evidence of registration in bad faith. This is consistent with the consensus view. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 3.7; Substance Abuse Management, Inc. v Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782; PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338.

In the interests of completeness, the Panel also finds that under the circumstances presented here, the passive holding of the domain name does not amount to use of the domain name in bad faith. Passive holding of a domain name neither precludes nor compels a finding of bad faith. Consistent with the consensus view on this issue, see WIPO Overview, Paragraph 3.2, the Panel has considered all of the circumstances in concluding that they do not establish that Respondent is using the domain name in bad faith. Unlike the circumstances presented in the leading “passive holding” decision, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, there is no evidence that Respondent provided false contact information or actively concealed its identity, or that Complainant’s mark is so famous that it is not possible to conceive of a legitimate use of the domain name.

Under these circumstances, the Panel finds that Complainant has not established that Respondent has registered and used the domain name in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

Debra J. Stanek
Sole Panelist

Dated: August 31, 2005

² The Complaint also asserts that in a conversation with Complainant’s counsel, Respondent acknowledged that it had no rights in the name “PensionGold.” However, this statement is not supported by the affidavit.