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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Asphalt Research Technology, Inc. v. National Press & Publishing, Inc.

Case No. D2000-1005

 

1. The Parties

The Complainant is Asphalt Research Technology, Inc., a corporation organized under the laws of the State of Florida, United States of America, having its principal place of business at 4649 Ponce De Leon Boulevard, Suite 303, Miami, Florida, United States of America.

The Respondent is National Press & Publishing, Inc., an entity having an address at P.O. Box 92085, Lakewood, Washington, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <ezstreet.net>, which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.

 

3. Procedural History

3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on August 10, 2000, and the signed original, together with four copies, was received on August 11, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated August 18, 2000.

3.2 On August 23, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.

3.3 On August 24, 2000, NSI confirmed by reply e-mail that the domain name is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.

3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant.

3.5 No formal deficiencies having been recorded, on September 15, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of October 4, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." In any event, the record shows that the Respondent received actual notice of the Complaint.

3.6 On October 10, 2000, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.

3.7 On November 2, 2000, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.

3.8 On the night of November 2, 2000, after the Notification of Panel Appointment had been sent, the Respondent sent an email to the WIPO Center asking if it was too late for the Respondent to submit a Response. The WIPO Center forwarded the request to the Panel for its consideration.

 

4. Factual Background

4.1 Complainant registered the service mark "EZ STREET" in connection with asphalt products with the United States Patent Office ("USPTO") on May 6, 1997. Complainant also has a pending application before the USPTO with respect to concrete and concrete mixes and related products, which was filed on February 17, 1998.

4.2 On April 28, 2000, Respondent registered the domain name <ezstreet.net>.

4.3 Complainant has produced evidence that Respondent has used the domain name at issue to resolve to link to a web site at www.donpowell.com.

4.4 The web site contains a link entitled "Domain Names," which in turn links to a web page, entitled "Domain Names for Sale."

4.5 On that page, which Complainant attaches as an Annex, Respondent lists the domain name at issue for sale, along with the following domain names for sale: <800help.net>, <ezst.com>, <main-stream.com>, <freckels.com>, <lawn.ws>, <lawpractice.ws>, <motels.ws>, <retirement.ws>, <sailboat.ws>, <sailboats.ws>, <skiboat.ws>, <skiboats.ws>, and <tacoma.ws>.

4.6 Complainant has produced no evidence that Complainant has sent Respondent a letter or any other communication requesting transfer of the domain name at issue.

 

5. Parties’ Contentions

5.1 Complainant contends that Respondent has registered as a domain name a mark which is identical and confusingly similar to the service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

5.2 Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

6.1 It is within the Panel's discretion to accept or reject a late filed pleading. Uniform Rules, Rule 10(d). Almost one month after the Response was due and after Notice of the Appointment of the Panel had been sent, Respondent requested permission to file a Response. The Panel finds that this request is made much too late in the proceedings and further finds that such a response would likely not assist the Panel in arriving at its decision. Accordingly, Respondent's request is denied.

6.2 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."

6.3 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

6.4 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

(2) that the Respondent has no legitimate interests in respect of the domain name; and,

(3) that the domain name has been registered and is being used in bad faith.

6.5 The Panel finds that the domain name at issue <ezstreet.net> is identical or confusingly similar to the trademark in which the Complainant has rights.

6.6 Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.

6.7 However, the second-level domain name at issue is a variation of and phonographic for a common English phrase which means "a situation with no worries" [Webster's Ninth New Collegiate Dictionary, 1987] and is the title of a song in the musical production and movie, "Annie," and is well known to all Americans.

6.8 Moreover, the other names which respondent offers for sale are also variations of or are common English descriptive words or phrases.

6.9 Common words and descriptive terms are legitimately subject to registration as domain names on a "first come, first served" basis. Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, ICANN Case No. D2000-0161; EAuto, L.L.C. v. EAuto Parts, ICANN Case No. D2000-0096.

6.10 Moreover, neither mere registration, nor general offers to sell, domain names which consist of generic, common, or descriptive terms can be considered acts of bad faith. Shirmax Retail Ltd./Detaillants Shirmax Ltee v. CES Marketing Group, Inc., ICANN Case No. AF-0104; Allocation Network GmbH v. Steve Gregory, ICANN Case No. D2000-0016.

6.11 Finally, under the facts of this case, in which the Complainant produced no evidence that it had attempted to contact the Respondent and negotiate a resolution of the matter prior to initiating the panel proceeding, and where the domain name at issue consists of a well known common, descriptive English phrase, and where the Complainant knew that Respondent had registered for sale other domain names all of which consist of common and/or descriptive words and phrases together with the generic Top Level Domain names, the Panel is of the opinion that this proceeding was brought in bad faith and constitutes an attempt at Reverse Domain Name Highjacking.

 

7. Decision

For all of the foregoing reasons, the Panel decides that while the domain name registered by Respondent is identical to the trademark in which the Complainant has rights, that the Respondent has rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has not been registered, nor is it being used in bad faith. Accordingly, the Panel denies the relief requested in the Complaint and finds that the Complainant has acted in bad faith in bringing this proceeding.

 

 

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M. Scott Donahey
Panelist

Dated: November 13, 2000