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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CONOCO INC. v. RDH Computer Solutions / Ronald D. Harris
Case No. D2000-0960
1. The Parties
Complainant is Conoco Inc., a corporation of the state of Delaware, 600 North Dairy Ashford, Houston, Texas 77079 USA.
Respondent is RDH Computer Solutions / Ronald D. Harris, 31310 Bradford Village, Spring, Texas 77386 USA.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is: "conoco.net", registered through Register.com, located in New York, NY USA.
3. Procedural History
A complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") and was received by the Center in electronic form on August 8, 2000, and also received in hardcopy. Payment of the required single-member panel fee was made on August 4, 2000.
The Center reviewed the complaint for compliance with the requirements of the ICANN Uniform Dispute Resolution Policy (the "Policy"). The Center acknowledged receipt of the complaint on August 11, 2000 1, and on August 24, 2000, the Center transmitted to the registrar, Register.com, a request for verification of the details of the domain name registration. On August 25, 2000, the registrar confirmed the details, including that the domain name conoco.net was registered through Register.com, Inc., and that Ronald D. Harris was the current registrant of the domain name. Finally, the registrar confirmed that the Uniform Dispute Resolution Policy was applicable to the conoco.net domain name. A printout of the WHOIS database relating to the domain name was attached, showing that the domain name registration was active.
A Notification of Complaint and Commencement of Administrative Proceeding was issued by the Center on September 6, 2000, and Respondent was allowed 20 days, or until September 25, 2000, in which to respond to the Complaint. On September 27, 2000, the Center, having received no formal response from Respondent, issued a Notification of Respondent Default 2.
On October 11, 2000, having received Jeffrey H. Kaufman’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center formally notified the parties of the Transmission of the Case File to Administrative Panel, appointing the undersigned panelist, Jeffrey H. Kaufman, as the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant is the owner of the registered trademark CONOCO. The trademark is registered for various goods and services, including internal combustion engine fuels, lubricating oils and greases, and automotive service station services. Six U.S. Trademark Registrations were attached to the complaint, with use of the mark by the Complainant dating back as early as 1914. The U.S. registrations attached to the complaint show the mark in various forms, including in block letters. The registered trademark CONOCO is identical to the domain name, conoco.net.
In addition to the U.S. Trademark registrations attached to the complaint, Complainant alleges that since 1984, Complainant has continuously used the corporate name "Conoco Inc.".
Complainant contacted Respondent by letter dated July 6, 2000, demanding that Respondent abandon the domain name conoco.net. Respondent replied, by letter dated July 11, 2000, and therein stated: "There is no dispute that the word or phrase ‘Conoco’ is currently a registered Trademark of ‘Conoco, Inc.’" However, Respondent challenged Complainant’s right to the domain name "conoco.net", and claimed that Respondent had the lawful right to own the domain name, although he had no intention to use the domain name "until such time as it is legal for me to do so." Respondent concluded the letter by stating that in view of the risk that Conoco Inc. may take action against Respondent, Respondent had decided to auction off the domain name. Respondent did not offer to sell the domain name to the Complainant, but at the same time stated: "Any URL by its very nature in the growing Internet community, and the dwindling URL’s available to register is inherently valuable."
Thereafter, Respondent offered the domain name at auction on the www.afternic.com website, requesting a minimum bid for the domain name of $1,500 (US Dollars). Complainant has attached to the complaint a printout of the afternic.com website evidencing the offering of the domain name by Respondent.
5. Parties’ Contentions
Complainant alleges that it is the owner of the CONOCO trademark and Respondent’s ownership of the domain name conoco.net shows that Respondent both registered and is using the domain in bad faith. Complainant states that Respondent’s website had a "Coming Soon" notice prior to Complainant issuing its July 6, 2000, demand letter to Respondent. Complainant alleges that the statement "Coming Soon", in addition to the offering of the conoco.net domain name on the www.afternic.com auction website, constitutes bad faith by Respondent.
Respondent failed to file a formal response to the complaint. However, the Panel has considered the contents of Respondent’s e-mail messages of August 8, 9, and 14 (all filed prior to the Notification of Complaint), and his e-mail of October 16, 2000, filed well after the period provided for the Respondent’s reply.
In Respondent’s e-mail reply of October 16, 2000, Respondent states that he did not understand what he was required to respond to, and challenges the Notification of Default. He states that "I have been trying for 3 months to release this domain name, now the registrar, Register.com, says I can not release it because it is in dispute." Respondent then lists the reasons why he does not believe he has violated the rights of the Complainant.
Respondent claims that when the Complainant threatened him with a lawsuit, he "got scared [and] put the domain up for auction just to get rid of it." Complainant also alleges that "I have not attempted in anyway to use this domain name…."
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements:
1) The domain is identical or confusingly similar to a trademark in which the complainant has rights;
2) The respondent has no rights or legitimate interest in respect of the domain name; and
3) The domain has been registered and is being used in bad faith.
The Panel finds that Complainant has satisfied the first test, as the Respondent’s domain name conoco.net is identical to the Complainant’s registered trademark.
The Panel further finds that Respondent has no rights or legitimate interest in respect of the domain name conoco.net. Respondent has not offered a satisfactory explanation for his claim that he has a legitimate interest in this domain name.
The final element that Complainant must prove is that Respondent both registered and is using the domain name in bad faith. Paragraph 4(b) of the Policy sets forth the types of evidence that, if found by a panel, shall be evidence of bad faith. The first stated element, namely, "circumstances indicating that you have registered or you have 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 the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name" is applicable here. Respondent admitted, prior to Complainant’s filing of the complaint, that Complainant was the owner of the trademark CONOCO. Although there is no evidence that Respondent attempted to sell the domain name directly to Complainant, Respondent’s explanation that he was "scared" and put the domain name on an auction site "just to get rid of it" is not a reasonable explanation.
Respondent had ample opportunity to relinquish the domain name 3 or transfer it to the Complainant as owner of the trademark. Instead, Respondent placed the domain name on an auction site, seeking $1,500 as an opening bid. This is deemed to be evidence of Respondent’s bad faith, for the apparent purpose of transferring the domain name for consideration far in excess of the $35 that Respondent paid to obtain the domain name.
There is support in prior panels’ decisions that offering a domain name for sale on an auction site is evidence of bad faith. See, Harrods Limited v. Robert Boyd, WIPO-D2000-0060 (the logical target of the offering of the domain name for auction on GreatDomains.com was the Complainant); and Robert Ellenbogen v. Mike Pearson, WIPO-D2000-0001 (Respondent had been trying to disassociate himself from the domain name and offered the domain name on GreatDomains.com. This offer was to the general public, including complainant and competitors).
Further evidence of Respondent’s bad faith was his ineffective effort to surrender the domain name to the registrar. See, Robert Ellenbogen, WIPO-D2000-0001, noted above, and EFG Bank European Financial Group SA v. Jacob Foundation, WIPO-D2000-0036 (Respondent’s request to the registrar to annul the domain name registration supports the inference that respondent has no legitimate interest in the domain name).
The Panel concludes that (i) the domain name "conoco.net" is confusingly similar to the trademark CONOCO; (ii) that Respondent has no rights or legitimate interest in the domain name; and (iii) Respondent registered and used the domain name in bad faith.
Therefore, pursuant to Paragraph 4(i) of the Policy and the Rules, the Panel orders that the domain name "conoco.net" be transferred to the Complainant, Conoco Inc.
Jeffrey H. Kaufman
Dated: October 25, 2000
1. Respondent sent several e-mails to the Center and the Complainant before the proceeding was formally commenced, but after the filing of the complaint. On August 8, 2000, Respondent sent an e-mail that read, in part: "Update: The domain ‘conoco.net’ is no longer available to the Internet. The automatic site that was put there by the registrar has been removed. The domain name ‘conoco.net’ will NEVER be auctioned off on any website." Then, on August 14, 2000, upon receipt of e-mail from Complainant regarding the filing of the complaint, Respondent replied by e-mail stating: "I have deleted this domain name through the registrar, ‘Register.com’ as of August 10th, 2000. Therefore there is no dispute, I am no longer the registered owner of this domain name. Respectfully, Ronald D. Harris." The Center’s Case Manager responded, in an e-mail of the same date, that once a complaint has been filed, "the Center will not suspend or terminate the proceedings unless and until it receives a request (copied to the respondent) in writing to this effect from the complainant…".
2. See note 1, above, regarding Respondent’s responses to the filing of the complaint.
3. The Panel recognizes that Respondent subsequently contacted Register.com in an effort to surrender the domain name, but this effort by Respondent occurred after the complaint was filed by Complainant. Also, there is information in the record suggesting that Respondent previously tried to surrender the domain name, but due to administrative problems at the registrar, the surrender was not effective. However, in the Panel’s opinion, this does not justify offering the domain name for sale at auction.