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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Adelphia Communications Corporation v. Robert Williams, Jr. et al.

Case No. D2000-1170

 

1. The Parties

Complainant is Adelphia Communications Corporation, a Delaware corporation with its principal place of business in Coudersport, Pennsyvlvania, U.S.A. ("Adelphia").

Respondents are Adelphiacable.com, Adelphiacable.net, Adelphiaonline.com, Adelphiaonline.net, and Robert Williams, Jr., all with an address at 2234 N. Federal Highway, Suite 409, Boca Raton, Florida 33431, U.S.A. ("Respondents"). Mr. Williams is the administrative contact for the disputed domain names.

 

2. Domain Names and Registrar

The domain names in issue are:

adelphiacable.com,

adelphiacable.net,

adelphiaonline.com, and

adelphiaonline.net.

The registrar is Network Solutions, Inc. (NSI).

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received Adelphia’s complaint in hard copy on September 5, 2000, and via email on September 15, 2000. The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). Adelphia made the required payment to the Center. The formal date of the commencement of this administrative proceeding is September 19, 2000.

On September 12, 2000, the Center transmitted via email to NSI a request for registrar verification in connection with this case. On September 14, 2000, NSI transmitted via email to the Center NSI’s Verification Response, confirming that (1) the registrant of each domain name in issue is the domain name itself, all at the same address in Boca Raton, Florida (Footnote 1), and with no administrative and billing contact information, and (2) each domain name registration in issue is in "Active" status. An August 31, 2000 print out of WHOIS data base searches conducted by Adelphia and reproduced at Annex A to the complaint lists for each domain name registration the administrative contact, technical contact, zone contact and billing contact as Robert Williams, Jr., at the N. Federal Highway address listed in Section 1. above for Respondents.

On September 19, 2000, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, via post/courier and via facsimile to Robert Williams, Jr. (at fax no. 561 483 3699), and via email to, inter alia, metasite@bellsouth.net. The Center advised that the response was due by October 8, 2000, pointed out the response should be in accordance with specified rules, and described the consequences of a default if the response were not sent by that date. The Center noted also that Adelphia had elected a three-member Panel and Respondents were required to submit the names of three potential Panel members.

On September 20, 2000, the Center received an email from Robert Williams, Jr., stating:

"I am no longer associated with the four domain names identified above. This information was made available to Vivian Polak, legal council [sic] for Adelphia Communications, Corp. in writing via email on 25 August 2000.

"The complaint should be directed to another party."

On September 20, 2000, the Center acknowledged via email to Mr. Williams that the Center had received his September 20 email and informed Mr. Williams that the proceeding would continue against the four "unidentified Registrants" of the four domain names in accordance with data provided by NSI.

On September 27, 2000, the Center received an email from Adelphia’s counsel advising the Center that (1) as of the filing and service of the complaint Mr. Williams was the contact for the four domain names, (2) Mr. Williams’s August 25 correspondence (attached as "Exhibit I" to the complaint) is "simply a threat to sell the domain names if Adelphia failed to provide him with a ‘settlement offer’ within 3 business days," (3) since the filing of the complaint the administrative contact is:

Seth Sauberman

E-mail: ss5@ix.netcom.com

Address: Nationwide PrimeLocations, Inc.
21346 St. Andrews Boulevard, Suite 188
Boca Raton, Florida 33433

Telephone: (561) 391-4069,

and (4) NSI has confirmed that registrant for all the domain names has not been transferred.

On October 1, 2000, the Center received an email from Mr. Williams advising he had received "your fax", had received email and fax notifications, and had not received any material via postal or courier mail.

Also on October 1, 2000, the Center received an email from Mr. Williams advising that Adelphia’s email dated 27 September "is not accurate." Mr. Williams asserted that Adelphia’s "complaint to you took place after I was no longer associated with the 4 domain names ... . The complaint was not served on the correct party ... . As of 30 August 2000 Robert Williams, Jr. was no longer associated with these domain names."

On October 2, 2000, the Center (1) acknowledged receipt of Mr. Williams’s two messages dated October 1, (2) stated a hard copy of the complaint had been sent to 21346 St. Andrews Boulevard in Boca Raton, (3) undertook to send a hard copy to another address, and (4) stated, in light of the second message of October 1, that Mr. Williams is not "the Respondent in this matter ... we will no longer communicate with you." The Center stated also the case will proceed as earlier stated.

On October 2, 2000, the Center received an email from Mr. Williams advising that (1) the St. Andrews Boulevard address in Boca Raton is not his address, and (2) his correct address is:

2234 N. Federal Highway
Suite 409
Boca Raton, FL 33431

Telephone: 561.395.6321

Fax: 561/483.3699

Email: MetaSite@aBellSouth.Net.

On October 3, 2000, the Center transmitted to Mr. Williams an email inquiring as to whether he "he would like us to send you a copy, of the complaint to the Federal Highway address." It appears that Mr. Williams did not reply to this inquiry.

On October 10, 2000, the Center transmitted via email to Adelphia’s counsel and to the four "com" and "net" Respondents Notification of Respondent Default. The Notification provided, inter alia, (1) the Center would proceed to appoint an Administrative Panel, (2) the Panel would be informed of Respondents’ default, (3) the Panel would have discretion whether to consider any late response (if any), and (4) the Center would continue to send communications to the four Respondents.

On November 1, 2000, the Center transmitted via email to Adelphia’s counsel and to Mr. Williams a Notification of Appointment of Administrative Panel and Projected Decision Date. The panelists named are those who have signed this decision below. The projected due date for the decision was November 15, 2000.

Also on November 1, 2000, the Center transmitted via email to Adlephia’s counsel and to Mr. Williams copy of the Transmission of Case File to Administrative Panel.

As a result of exceptional circumstances the projected due date for the decisions was extended to December 8, 2000.

On December 8, 2000, on behalf of the Panel, the Center requested from Respondents by December 15 the following information:

1. The identity of the "third party" to whom Mr. Willimas proposed in his August 25 email to sell the domain names.

2. If the domain names were in fact sold, the identity and addresses of each purchaser, the date of purchase, and the terms and conditions of the sale.

3. If the domain names were not sold, the terms and condition offered or discussed in connection with the proposed sale.

4. If the domain names have been transferred in any manner, the identity and addresses of each transferee, the date of transfer, and the terms and conditions of the transfer.

5. The identity and addresses of each person or other entity who has an interest of any kind (e.g. owner, registrant, contact, purchaser, transferee, licensee) in any o the domain names in issue.

On December 15, 2000, the Center received from "Seth Sauberman" the following email:

"I am unaware of the case # below.

"I am the sole decision-maker of four domains that start with word adeliphia [sic].

"If you could please direct any information about these sites only to me. I hope this clears up any disputes of these domain names for you.

"I hope you have a nice holiday.

"Sincerely,

"Seth Sauberman"

On December 18, 2000, the Center received an email from counsel for Adelphia iterating counsel’s assertions in its September 27 email. Counsel asserted that Mr. Williams’s allegation that he transferred the domain names on August 30, 2000 is not supported by NSI’s records. Exhibit A to the complaint shows that on August 31, 2000, a WHOIS search reveals that Mr. Williams was the contact person for all four domain names. The WHOIS data base was updated on August 31, after Mr. Williams allegedly transferred the domain names. A telephone conversation with NSI on December 15, 2000 confirmed that the administrative contact for the domain names changed on September 5, 2000, after Mr. Williams was served with the complaint. Also a telephone conversation with NSI on September 20, 2000 confirmed that the domain names have not been transferred, all four domain names have been placed on hold, and only the administrative contact has changed.

On December 18, 2000, the Center advised the parties that the Panel (1) assumes that Mr. Sauberman’s December 15 email is to be regarded as Respondents’ response to the Panel’s December 8 order, (2) will proceed to decide the case on the premise that Respondents are in default under Rule 5, and (3) will consider at least initially all documents and email messages in the file. The Panel expects to transmit a draft decision to the Center by January 8, 2001.

 

4. Factual Background; Parties’ Contentions

a. The Trademarks

The complaint is based on the trademarks ADELPHIA, ADELPHIA CABLE ENTERTAINMENT, ADELPHIA CABLE COMMUNICATIONS, ADELPHIA DIGITAL TV, ADELPHIA POWER LINK, ADELPHIA YOUR LINK FOR EVERYTHING, and ADELPHIA DIGITAL CABLE.

Adelphia avers the marks are used in connection with various services, including for example cable television broadcasting and transmissions, Internet access, telecommunication services, delivery of messages by electronic transmission, and electronic transmission of messages and data.

Adelphia avers that since 1972 Adelphia and its predecessors have continually used ADELPHIA and other marks in which ADELPHIA is the predominant feature. Also, Adelphia avers it owns eight U.S. registrations for trademarks and service marks containing the term ADELPHIA. Copies of these registrations are at Annex C to the complaint. (Footnote 2)

Adelphia avers the ADELPHIA company name and trademark has become widely known in the United States, the marks have been marketed and promoted extensively on the Internet, and the marks are famous in Adelphia’s industry. Adelphia avers that as a result of extensive sales, advertising, promotion and unsolicited media coverage, the marks have come to be recognized and relied upon by the trade and the public as identifying Adelphia and its products and services, and distinguishing them from others and the products and services of others.

Adelphia avers it has an active presence on the Internet, the principal domain names being used by Adelphia including "adelphia.com", "adelphia.net", and "adelphiacom.com".

b. The Complaint Re Respondents’ Activities

Adelphia avers that all three elements of Policy 4.(a) are met because:

1. the domain names are identical to a trademark in which Adelphia has rights;

2. Respondents have not rights or legitimate interests in respect of the domain names; and

3. the domain names were registered and are being used in bad faith.

Adelphia avers that without authorization, Respondents registered the two "net" domain names in issue on September 3, 1999, and the two "com" domain names on March 30, 2000. Adelphia has been unable to locate "any official business listings" for any of the four domain names through Dun & Bradstreet or the Florida Secretary of State.

Adelphia avers Respondents have failed to develop a website in connection with any of the four domain names.

Adelphia avers that, on November 1, 1999, Respondents wrote to Adelphia (copy at Annex E to the complaint), stating in part Respondents wished "to demonstrate how you (Adelphia) can save over 1.5 million dollars annually." Mr. Robert Williams, Jr., 2234 N. Federal Highway, Suite 409, Boca Raton, FL 33431, appears to have signed the letter. Mr. Williams proposed that the two ADELPHIACABLE domain names in issue be used for Adelphia’s cable TV operations, and the two ADELPHIAONLINE domain names be used for Adelphia’s Internet operations. Mr. Williams asserted:

"The key factor here is name recognition."

Mr. Williams set out his calculation of the annual $1.5 million savings he envisioned for Adelphia, and concluded:

"I wish to provide Adelphia Communicatons the opportunity to acquire the four domain names indicated above for the amount of $100,000. The asking price represents only 6% of your total annual savings, not to mention other opportunities for generating income that can be achieved by using these domain names."

Adelphia avers that, on June 5, 2000, Adelphia’s counsel sent to Respondents a cease and desist letter. In fact the letter is addressed to three of the domain names in issue and to Mr. Williams (copy at Annex F). (Footnote 3) Inter alia, Adelphia demanded that the three domain name registrations be transferred to Adelphia.

Adelphia avers that, on June 20, 2000, Mr. Williams transmitted a letter of Adelphia’s counsel (copy at Annex G to the complaint). Mr. Williams denied he is a cybersquatter or ever made demands on Adelphia with respect to the four domain names in issue. Mr. Williams referred to his November 1, 1999 letter as a "proposal" for Adelphia to acquire the domain names and a demonstration of how Adelphia could benefit financially from the acquisition of the domain names. Mr. Williams stated, "I am willing to entertain a reasonable settlement offer from you."

Adelphia avers that, on August 15, 2000, Adelphia’s counsel responded to the June 20 letter (copy at Annex H). Counsel’s letter was addressed to Mr. Williams, repeated the charges in counsel’s June 5 letter, stated Adelphia "has no interest in paying you any sum to acquire the ‘Infringing Registrations’," and repeated the demand that Mr. Williams transfer the domain name registrations to Adelphia.

Adelphia avers that, on August 25, 2000, Respondents transmitted an email to Adelphia’s counsel (copy at Annex I to the complaint). The email, apparently from Mr. Williams, reads as follows:

"I am in receipt of your letter dated 15 August 2000. My position has not changed and I am not concerned with your continued legal threats. These domains are going to be sold to a third party. I will be taking action within 3 business days, you have until then to provide me with a reasonable settlement offer.

"Deadline: Wednesday 30 August 5: 00 PM.

"Sincerely,

"Robert Williams, Jr."

Adelphia avers that the four domain names in issue are "in some cases identical to, and in every instance confusingly similar to, the Adelphia Marks," citing Twentieth Century Fox v. David Risser, FA 0002 000093761.

Adelphia avers that the two "cable" domain names "obviously are designed and intended to imply a connection with or sponsorship by Adelphia and its activities in the cable and communications fields." Adelphia refers to its trademark registrations for ADELPHIA CABLE ENTERTAINMENT and ADELPHIA CABLE COMMUNICATIONS. Similarly, Adelphia contends the two "online" domain names are "designed to cause consumers to assume" the domain names "are connected or associated with Adelphia and Adelphia’s Internet access services," and will cause confusion among the consuming public as to their source.

Adelphia iterates that Respondents clearly intended to cause consumers to connect the domain names to Adelphia’s cable and Internet activities, citing the November 1, 1999 letter (Annex E) which elaborates on the economic benefits to Adelphia associated with using the domain names.

Adelphia avers its marks "have long been used, are both famous and distinctive, and were both famous and distinctive" when Respondents registered the domain names.

Adelphia avers Respondents have no rights or legitimate interests in the domain names. The domain names bear no relation to an actual or intended business of Respondents.

Adelphia avers Respondents’ bad faith is evidenced by their (1) having failed to use the domain names with any bona fide offering of goods or services, (2) having not been commonly known by the domain names, and (3) having not made any legitimate, noncommercial or fair use of the domain names. Adelphia avers Respondents’ bad faith is further evidenced by their attempt to sell the domain names and the threat to sell to third parties, citing Policy, Paragraph 4.(b)(i) and various domain name decisions. (Footnote 4)

Adelphia avers that Respondents registered the domain names in order to prevent Adelphia from having access to and reflecting the marks in corresponding domain names, citing Policy, Paragraph 4.(b)(ii).

Adelphia requests that the domain names in issue be transferred to Adelphia.

The complaint concludes with the requisite certification, signed by counsel, that the information in the complaint is complete and accurate.

c. The Response

No response has been received by the Center.

 

5. Discussion and Findings

Paragraph 4.(a) of the Policy directs that Adelphia must prove, with respect to each domain name in issue, each of the following:

(i) The domain name is identical or confusingly similar to an Adelphia trademark in issue here, and

(ii) Respondents have no rights or legitimate interests in respect of the domain name, and

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

Paragraph 4.(b) of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4.(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4.(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondents, shall demonstrate Respondents’ rights or legitimate interests to a domain name in issue for purposes of Paragraph 4.(a)(ii) above.

a. Default

Rule 5.(a) of the Rules requires Respondents to have submitted a response in accordance with Rule 5.(b). Respondents have had notice of this proceeding, the complaint, the due date for a response and the consequences of default. Notwithstanding Mr. Williams’s emails to the Center and Mr. Sauberman’s email to the Center (none of which comprises a response), Respondents have not in any respect complied with Rule 5. Accordingly, Respondents are in default.

Rule 5.(e) provides that if Respondents have not submitted a response, the Panel shall, in the absence of exceptional circumstances, decide the dispute based upon the complaint. In this case, the Panel has elected, in light of the exceptional circumstances here, to decide the dispute on the complaint and on the various submissions to the Center summarized in Section 3. above. See Rule 10.(a), (b), and (d).

b. Identity or Confusing Similarity

Adelphia has the burden of proving this element and each of the other two elements of Paragraph 4.(a) of the Policy. This is especially so in light of Respondents’ default.

The Adelphia marks and the domain names in issue are virtually identical on their faces. In addition, in placing a $100,000 value on the domain names in issue, Mr. Williams was relying on this identity and the likelihood the consuming public would connect the domain names with Adelphia. Mr. Williams’s letter of November 1, 1999 dispels any doubt that may exist on this score. After listing the four domain names in dispute here, Mr. Williams wrote:

"The key factor involved here is name recognition."

On this record, Adelphia’s averments as to identity and the likelihood of confusion are well grounded. Adelphia has established this element.

c. Rights or Legitimate Interests

On this record, no challenge has been leveled with respect to (1) the validity of any trademark in issue, (2) Adelphia’s rights in the marks with respect to Adelphia’s goods and services, (3) the fame and goodwill associated with the Adelphia marks, (4) any fact averred by Adelphia as to promotion of its marks and use of the marks, or (5) Adelphia’s assertions that Adelphia or it predecessors have used the ADELPHIA mark long before Respondents registered any of the four domain names in issue.

Moreover, the record contains no evidence or suggestion that Respondents could satisfy any of the illustrative criteria set out in Policy, Paragraph 4.(c), with regard to any possible right or legitimate interest Respondents might arguably have in any of the domain names. On this record, it is fair to infer that the only interest Respondents had in registering the four domain names was to sell them at a profit to Complainant.

Thus, Adelphia has established this element.

d. Registration and Use in Bad Faith

Registration and use of the domain names in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence. Both registration in bad faith and use in bad faith must be proved by Adelphia.

It is plain from this record that Respondents have both registered and used the domain names for the purpose of selling the registrations to Adelphia for valuable consideration in excess of Respondents’ out-of-pocket costs directly related to the domain names. Policy, Paragraph 4.(b)(i). Mr. Williams’s own words make this plain, viz.: Mr. Williams’s letter of November 1, 1999 (providing Adelphia the "opportunity to acquire the four domain names ... for $100,000. ... The asking price ...."), and his letter of June 30, 2000 ("I am unwilling to release these names to you without consideration. ... I am willing to entertain a reasonable settlement offer from you."). Mr. Williams’s email of 25 August 2000 is to the same effect, augmented with the threat of his selling the domain names to a third party ("My position has not changed ... . These domains are going to be sold to a third party. I will be taking action in 3 business days, you have until then to provide me with a reasonable settlement offer."). Apposite here are, for example, World Wrestling Federation v. Michael Bosnan, WIPO Case No. D99-0001, Educational Testing Service v. TOEFL, WIPO Case No. 2000-0044, Rolls-Royce et al v. Suood AL-Mansoori, WIPO Case No. D2000-0383, General Electric Company v. John Bakhit, WIPO Case No. D2000-0386, and NCAA v. Rodd Garner et al, WIPO Case No. D2000-0940.

This inference is buttressed by Respondents’ apparent failure to set up a website using any of the domain names as an address. Yahoo! Inc. v. Domain Collection, WIPO Case No. D2000-0476. The inference is also confirmed by Respondents’ failure to reveal their identities in any of the registrations, their failure here to respond to the Panel’s December 8, 2000 inquiry as to the identities of any relevant parties, and Mr. Sauberman’s failure to provide any identifying information about himself and any information as to his legal interest in any of the domain names. Telstra v. Nuclear Marshmallows. WIPO Case No. D2000-0003.

Respondents’ bad faith in registering and in using each of the domain names is apparent.

 

6. Decision

In light of the findings by the Panel, the Panel decides that Adelphia has met its burden of proving (1) the four domain names in issue are identical to the Adelphia marks, (2) Respondents have no rights and no legitimate interest in respect of any of the domain names, and (3) the four domain names have been registered and are being used by Respondents in bad faith.

Accordingly, the Panel requires that the registrations of the "adelphiacable.com", "adelphiacable.net", "adelphiaonline.com", and "adelphiaonline.net" domain names be transferred to Adelphia.

 


 

David W. Plant
Presiding Panelist

M. Scott Donahey
Panelist

R. Eric Gaum
Panelist

Dated: January 10, 2001

 


 

Footnotes:

1. Viz.: 21346 St. Andrews Boulevard, Suite 188, Boca Raton, FL 33433 US.

2. Registration No. 2231488 for ADELPHIA asserts first use in commerce in 1972.

3. Adelphia does not account for the seven-month hiatus between Mr. Williams’s November 1, 1999 letter and Adelphia’s June 5, 2000 letter.

4. Astro-Med, Inc. v. Merry Christmas Everyone!, WIPO Case No. D2000-0072, AOL v. Avrasva Yayincilik Danismanlik, Ltd., FA 0002000093679, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001, TV Azteca, S. v. Allan Oretegaray, Forum File No. 92533, Ellenbogen v. Pearson, WIPO Case No. D2000-001, Intermatic Inc. v. Toeppen, 947 F.Supp. 1227 (N.D. Ill. 1996).

 

Источник информации: https://internet-law.ru/intlaw/udrp/2000/d2000-1170.html

 

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