WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EZ Pittsburgh, Inc. v. James M. Van Johns
Case No. D2001-0612
1.
The Parties
The complainant is EZ Pittsburgh, Inc. (“Complainant”), a Virginia corporation with its
principal place of business at 51 West 52nd Street, New York, New York 10019, USA.
The respondent is James M. Van Johns, the registrant of the domain name <b94.com>
with a listed mailing address of 900 Highland Avenue, Johnstown, Pennsylvania
15902-2848, USA. The Respondent is also listed as the administrative and billing
contact for the registration of this domain name.
2.
The Domain Name and Registrar
The domain name in issue is <b94.com>.
The registrar of the domain name in issue is Bulkregister.com, Inc., located at East
Baltimore Street, Suite 1500, Baltimore, Maryland, USA.
3.
Procedural History
On April 27, 2001, the Complainant filed a Complaint with the WIPO Arbitration and
Mediation Center (“Center”) concerning the domain name <b94.com> and paid the
required filing fee for appointing a single member Panel. In the Complaint, the
Complainant named "Damian Macafee" as the respondent for this proceeding with a
mailing address of 69 Charlotte Street, London, W1P 1LA, United Kingdom. The
Complainant also listed Network Solutions, Inc. ("NSI"), as the registrar for the domain
name in issue. On April 30, 2001, the Center sent an “Acknowledgement of Receipt of
Complaint” to the Complainant by e-mail.
On May 1, 2001, a “Request for Verification” concerning the domain name in issue
was sent to NSI. On May 2, 2001, the Center received an e-mail message from NSI
stating that it was not the registrar for the domain name in issue. On May 3, 2001, the
Center sent the Complainant a “Request for Amendment to Registrar” requesting the
Complainant to amend its Complaint to identify the correct registrar of the domain
name in issue.
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On May 3, 2001, a “Request for Registrar Verification” concerning the domain name in
issue was sent to Bulkregister.com. On May 8, 2001, Bulkregister.com sent a
Verification Response to the Center stating, in pertinent part, that: (i) it had received a
copy of the Complaint; (ii) it is the registrar of the domain name <b94.com>; (iii)
“James M. Van Johns” is the current registrant of the domain name registration with a
listed mailing address of 900 Highland Avenue, Johnstown, PA 15902-2848, USA; and
(iv) the domain name in issue is currently under Registrar LOCK pending the outcome
of this proceeding.
On May 10, 2001, the Complainant filed an Amended Complaint by e-mail and on
May 13, 2001, in hardcopy with the Center naming "Mr. James M. van Johns" as the
respondent in this proceeding ("Respondent") and listing Bulkregister.com as the
registrar of the domain name in issue ("Registrar").
On May 16, 2001, the Center found the Complaint to be in compliance with the formal
requirements of ICANN’s Uniform Domain Name Dispute Resolution Policy
(“Policy”), ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy
("Rules”) and WIPO’s Supplemental Rules for Uniform Domain Name Dispute
Resolution Policy (“Supplemental Rules”).
On May 17, 2001, the Center sent a “Notification of Complaint and Commencement of
Administrative Proceeding,” the Complaint and the Amended Complaint to the
Respondent at the e-mail addresses provided for that purpose and to the mailing address
listed for the Respondent in the domain name registration. Copies of the Notification,
Complaint and Amended Complaint were also sent to ICANN, the Registrar and the
Complainant. The Center received an error message and a notice of non-delivery when
the Notification, Complaint and Amended Complaint were sent by e-mail and courier,
respectively, to the Respondent.
On June 7, 2001, after the twenty day period had expired as required by paragraph 5(a)
of the Rules and no responses from the Respondent were received, the Center sent a
“Notification of Respondent Default” to the Respondent by e-mail with a copy to the
Complainant. The Center received an error message when the Notification of
Respondent Default was sent to the Respondent's e-mail address.
On June 21, 2001, the Center sent a “Notification of Appointment of Administrative
Panel and Projected Decision Date” by e-mail to the parties notifying them that an
Administrative Panel consisting of a single Panelist had been appointed in the
proceeding.
Having reviewed the entire record submitted for this proceeding, the Panelist concurs
with the Center's finding that the Complaint is in compliance with the Policy, Rules and
Supplemental Rules and finds that the Panel was properly constituted and appointed.
The Panelist also finds that the Center has discharged its responsibility under
paragraph 2(a) of the Rules “to employ reasonably available means calculated to
achieve actual notice to Respondent” of this proceeding and that the Respondent is in
default for failing to file a response to the Complaint or the Amended Complaint. The
Panelist shall therefore draw inferences from the Respondent's default as the Panelist
considers appropriate based upon paragraph 14(b) of the Rules and shall issue a
decision based on the Complaint, the Amended Complaint, the Policy, the Rules and
the Supplemental Rules.
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4.
Factual Background
The Complaint is based on the mark B94 registered with the U.S. Patent and Trademark
Office. In support of the Complaint, the Complainant relies on U.S. service mark
Registration No. 2,404,380 (first use and first use in commerce 4/1/81; issued
November 14, 2000) for radio broadcasting services. A copy of the registration
certificate was attached as Annex C to the Complaint and the Amended Complaint.
The Complaint is also based on the Complainant’s common law rights in the mark B94.
A search result from a query of the Registrar’s Whois database shows that the domain
name <b94.com> was registered by the Respondent and that the registration for the
domain name in issue was created on September 17, 1999. A Web site is currently
accessible at the domain name in issue. Printouts of the Whois information for the
domain name and the Web site were attached as Annexes A and J, respectively, to the
Amended Complaint.
5.
Parties’ Contentions
Complainant
The Complainant asserts that since at least April 1, 1981, it has used the service mark
B94 in interstate commerce in connection with its radio broadcasting services,
specifically, the broadcasting services of WBZZ, a radio station owned and operated by
the Complainant that broadcasts to the Pittsburgh, Pennsylvania market. The
Complainant asserts that it first used the service mark B94 in commerce in the United
States on April 1, 1981, and that the mark was registered with the U.S. Patent and
Trademark Office on November 14, 2000. (a copy of the registration certificate
attached as Annex C) The Complainant also asserts that its registration certificate is
prima facie evidence of the validity of its mark and its exclusive right to use the mark
in commerce. The Complainant, further asserts that even if this were not the case, it
enjoys common law rights in the mark since it uses the mark as a service mark to
promote its radio broadcasting services. The Complainant also asserts that it maintains
a presence on the Internet through a web site located at <http://www.b94fm.com> that
contains numerous references to the Complainant’s mark B94. (a printout of the
Complainant’s home page attached as Annex F)
The Complainant asserts that it is famous for its radio broadcasting and entertainment
services and undertakes broadcasting and entertainment services under the mark B94,
including use of the mark as its business name. (a copy of stationery attached as
Annex D) The Complainant asserts that the B94 mark possesses a great deal of
goodwill and popularity as a result of the Complainant’s substantial expenditures for
advertising and promotion of its radio broadcasting services under this mark.
(Advertising and Promotional Material attached as Annex E). As a result of the
Complainant’s long use of the mark B94, its advertising and promotional efforts in
connection with the mark and the wide recognition achieved for the mark, the
Complainant asserts that the public associates the B94 mark with services originating
with, emanating from, sponsored by or otherwise associated with or approved by the
Complainant. The Complainant also asserts that the mark has become an extremely
valuable symbol of the Complainant, with substantial commercial magnetism.
The Complainant asserts that the Respondent is an individual that, upon information
and belief, resides in Johnstown, Pennsylvania and that, on or about
September 17, 1999, registered the domain name in issue. The Complainant asserts that
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the Respondent was employed by the Complainant as a board operator from
March 24, 1998, through March 18, 2000.
The Complainant asserts that the domain name in issue is identical to the
Complainant’s B94 mark. The Complainant asserts that the Respondent has no rights or
legitimate interests in the domain name because the Respondent is not, either as an
individual, business or other organization, known by the name B94 or B94.com nor has
the Respondent obtained the Complainant’s consent or authorization to use the domain
name in issue.
The Complainant asserts that the Respondent registered the domain name in bad faith.
The Complainant asserts that after discovering the Respondent’s registration of the
domain name, it promptly notified the Respondent of his infringing use and requested a
transfer of the domain name. The Complainant asserts that in exchange for the domain
name the Respondent demanded advertising banner inventory on its <b94fm.com> web
site, the value of which the Complainant asserts was several hundreds, if not thousands,
of dollars, and thus exceeds the Respondent’s documented out-of-pocket costs directly
related to the domain name in issue. The Complainant further asserts that it agreed to
provide the Respondent with advertising banner inventory on its site to settle the matter
and recover the domain name in an expeditious manner. However, before the
arrangement was completed, the Complainant asserts that the Respondent left the
Complainant’s employment and indicated that he desired to develop a new
“executable” plan with respect to the Complainant’s recovery of the domain name. (a
copy of the Complainant’ e-mail message attached as Annex G)
The Complainant asserts that the Respondent subsequently contacted the Complainant
and offered to transfer the domain name in issue to the Complainant in exchange for a
piece of radio equipment known as a “board” or in the alternative, the payment of
$250.00. In response, the Complainant asserts that it advised the Respondent that it did
not have an available board but that it was willing to settle the matter for $250. (a copy
of the Complainant’s e-mail message attached as Annex H) The Respondent did not
respond to this or other e-mail messages from the Complainant. (a copy of the
Complainant’s e-mail message attached as Annex I)
The Complainant asserts that the Respondent’s offer to sell the domain name in issue to
the Complainant whether in exchange for advertising banner inventory on the
Complainant’s site, a piece of radio equipment or $250 all provide evidence of the
Respondent’s bad faith. The Complainant asserts that the Respondent’s bad faith is
further confirmed because the Respondent has failed to develop a web site at the
domain name in issue despite the fact of having registered the domain name for over
one and one half years. Instead, the Complainant asserts that the Respondent is using
the domain name in issue to direct traffic to the web site located at
<http://www.atomictime.net>, and that on information and belief, is also registered to
the Respondent since the phone number for the administrative contact for the domain
name <atomictime.net> is the same as that for the domain name <thorofare.com>
which is registered to the Respondent. (copies of the Whois information for these
domain names attached as Annex J)
Respondent
No response was received from the Respondent with respect to this proceeding.
6.
Discussion and Findings
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The Proceeding - Three Elements
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a
mandatory administrative proceeding in the event that a third party complainant asserts
to an ICANN-approved dispute provider that:
(i)
the domain name holder’s domain name is identical or confusingly similar
to a trademark or service mark in which the complainant has rights
(“Element (i)”); and
(ii)
the domain name holder has no rights or legitimate interests in respect of
the domain name (“Element (ii)”); and
(iii) the domain name of the domain name holder has been registered and is
being used in bad faith (“Element (iii)”).
The Panelist can only rule in a complainant’s favor after the complainant has proven
that the above-listed elements are present.
Element (i) - Domain Name Identical or Confusingly Similar to the Mark
Based upon the uncontested evidence submitted, the Panelist finds that the Complainant
is the owner of the registered service mark B94. When comparing the second-level
domain <b94> of the domain name in issue with the Complainant’s mark B94, the
Panelist finds that the domain name in issue is identical to the Complainant’s mark. The
Panelist accordingly concludes that Element (i) has been satisfied.
Element (ii) - Rights or Legitimate Interests in the Domain Name
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation,
which, if found by the Panelist to be proven based on the evaluation of all of the
evidence presented, can demonstrate the domain name holder’s rights to or legitimate
interests in the domain name. These circumstances include:
(i)
before any notice to the holder of the dispute, the holder’s use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain
name in connection with a bona fide offering of goods or services; or
(ii)
the holder (as an individual, business, or other organization) has been commonly
known by the domain name, even if the holder has acquired no trademark or
service mark rights; or
(iii) the domain name holder is making a legitimate noncommercial or fair use of the
domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue.
No evidence has been presented that any time, while employed or otherwise, that the
Complainant ever assigned, granted, licensed, sold, transferred or in any way
authorized the Respondent to register or use the mark B94 in any manner or that the
Respondent has ever been commonly known by the domain name in issue.
Furthermore, no evidence has been presented that, before any notice to the Respondent
of this dispute, the Respondent had been using or was making demonstrable
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preparations to use the domain name in connection with any type of bona fide offering
of goods or services. A review of the evidence submitted also shows that the
registration and use of the domain name in issue by the Respondent does not predate
the Complainant’s much earlier first use and first use in commerce of its mark B94.
Indeed, based upon the uncontested assertions and evidence submitted by the
Complainant that the Respondent was an employee of the Complainant at the time that
the domain name in issue was registered, it is apparent that the Respondent was clearly
aware and had knowledge of the Complainant's rights in the mark.
Finally, no evidence has been presented that the Respondent was making any type of
legitimate noncommercial or fair use of the domain name. Rather, the printouts of the
web site at <http://www.b94.com> provided by the Complainant and the Panelist’s own
review of the site confirm that the domain name resolves to a web site that consists of
multiple advertising/promotional banners and click-through banner advertisements.
Such does not support a finding that the Respondent was or has been making a
legitimate noncommercial or fair use of the domain name but rather suggests use of the
domain name in issue for some type of commercial gain. Accordingly, based upon the
findings and evidence and the lack of evidence to show otherwise, the Panelist
concludes that the Respondent has no rights or legitimate interests in the domain name
and that Element (ii) has been satisfied.
Element (iii) - Domain Name Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by
the holder includes, but is not limited to:
(i)
circumstances indicating that the holder has registered or has acquired the domain
name primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to the complainant who is the owner of the trademark
or service mark or to a competitor of that complainant, for valuable consideration
in excess of the holder’s documented out-of-pocket costs directly related to the
domain name; or
(ii)
the holder has registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting
the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for
commercial gain, Internet users to the holder’s web site or other online location,
by creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation, or endorsement of your web site or location or of
a product or service on the holder’s web site or location.
Based upon the uncontested evidence, the Panelist finds that the Respondent registered
the domain name in issue while employed by the Complainant and thus was clearly
aware and had knowledge of the Complainant’s rights in its mark B94 at the time he
registered the domain name.
In further support of its assertions of bad faith by the Respondent, the Complainant has
also submitted uncontested evidence of the Respondent’s demands at various times to
sell the domain name in issue to the Complainant in exchange for advertising banner
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inventory on the Complainant’s web site or for a piece of radio equipment or for $250.
The Panelist also notes and the uncontested evidence submitted by the Complainant
shows that other than for offering the domain name for sale to the Complainant and
providing multiple advertising/promotional banners and click-through banner
advertisements on the web site accessible at the domain name in issue, the Respondent
has not made any other uses of this domain name. Nor has any evidence been
presented of any type of actual or contemplated legitimate noncommercial good faith or
fair use of the domain name in issue since the registration thereof by the Respondent.
Accordingly, when considering such findings and uncontested evidence in their
entirety, the Panelist finds that the Respondent has no rights or legitimate interests in
the domain name in issue and has registered the domain name primarily for the purpose
of selling or transferring the domain name registration to the Complainant for valuable
consideration in excess of documented out-of-pocket costs. The Panelist therefore
concludes that the Respondent has registered and is using the domain name in issue in
bad faith and that Element (iii) has been satisfied.
8.
Decision
The Panelist accordingly requires that the registration of the domain name in issue be
transferred to the Complainant.
Marylee Jenkins
Panelist
Dated: July 27, 2001
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