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WIPO Arbitration and Mediation Center

Complainant is Substance Abuse Management, Inc., located at 500 N. 19^th Street, Milwaukee, Wisconsin 53233 USA. Complainant is represented by Alan E. Wagner, Esq., of the firm Whyte Hirschboeck Dudek S.C., 111 East Wisconsin Avenue, Suite 2100, Milwaukee, Wisconsin 53202-4894, USA.

Respondent is Screen Actors Modesl [sic] International, Inc. (SAMI). There has been communication on behalf of the Respondent by Darryl Lee. Respondent, located at 1109 Kalihiwai Place, Honolulu, Hawaii 96825, USA, is not represented by counsel.

The domain name in dispute is <sami.com>. The registrar is Network Solutions, Inc., located at 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, USA.

Complainant submitted its complaint to the WIPO Arbitration and Mediation Center (the "Center") by e-mail on June 13, 2001, and by hard copy on June 15, 2001. The complaint requests that the Center apply the Uniform Domain Name Dispute Resolution Policy (the "Policy" or the "UDRP"). The complaint was filed in accordance with the requirements of both WIPO’s Supplemental Rules as well as the rules governing the Policy. In addition, the Complainant has met all other requirements for the complaint to be adjudicated, including payment of proper fees.

A verification request was sent to Network Solutions on June 18, 2001, asking that it confirm receipt of the complaint, confirm that the domain name <sami.com> is registered with it, and that the Respondent is the current registrant of the domain name. The requested verification was provided on June 22, 2001. Thereafter, by notice dated June 25, 2001, the Center advised Respondent that the administrative proceeding had been commenced. The notification further advised Respondent than an answer to the complaint was to be filed no later than July 14, 2001. The notification was sent to Respondent by post, facsimile and e-mail, using the contact details that had been provided. Respondent did not file a response within the time required, nor did Respondent seek any extensions of time to file a response. As such, Respondent was declared in default, and a notice advising of this fact was sent on July 17, 2001.

Although Respondent did not submit a formal response to the complaint, it did acknowledge that it had received the complaint by sending an e-mail to the Center on July 17, 2001, asking the Center "What is this all about?" The Center responded on July 19, 2001 by advising that a domain name dispute had been filed concerning the domain name <sami.com>.

The Center appointed an Administrative Panel (the "Panel") on July 30, 2001, and requested that a decision be forwarded by August 12, 2001.

Complainant is the owner of the federally registered service mark SAMI, registered in the United States Patent and Trademark Office as Registration No. 1,831,771. The registration was issued on April 19, 1994, and alleges use dating back to March 3, 1989. Compl. Exh. 4. Complainant also owns a Community Trademark for SAMI, Registration No. 00,134,1684, which was issued on January 19, 2001. Compl. Exh. 5. The SAMI mark has been used on Complainant’s webpage to promote, sell and facilitate Complainant’s services although Complainant does not indicate when the webpage was first available.

On October 31, 1995, Respondent registered the domain name <sami.com>. Compl. Exh. 1. Other than the registration of the domain name, there is no indication that there has been any use of the domain name in connection with offering any goods or services. On April 14, 2000, Complainant’s counsel sent an e-mail to Respondent asking if he was interested in selling the domain name. Mr. Lee, on behalf of Respondent, advised that he would consider an offer. The offer made by Complainant of $3,000 was rejected. Mr. Lee did not provide a counter-proposal. Compl. Exh. 18. Thereafter, the domain name was renewed and is now set to expire on November 1, 2001.

A. Complainant

Complainant argues that it has rights in the mark SAMI by virtue of its use of the mark and registrations in the United States and the European community.

Complainant next argues that the domain name <sami.com> is confusingly similar to the SAMI trademark.

With respect to whether Respondent has rights or legitimate interests in the domain name, Complainant claims that Respondent is not commonly known as <sami.com> since the Respondent ceased to exist five years ago. Complainant further alleges that Respondent has no rights or legitimate interests in the domain name <sami.com> because Respondent renewed the registration for the domain name <sami.com> under the name Screen Actors and Models International, Inc. despite the fact that this entity dissolved in 1996. In addition, Complainant contends that Respondent lacks legitimate rights or interests in the domain name <sami.com> because Respondent failed to take any steps to use the domain name in connection with a bona fide offering of goods or services and renewed the name with the sole intent of selling it for a profit.

On the issue of bad faith registration, Complainant relies primarily on the acts surrounding the renewal of the domain name in 2000, arguing that because the domain name was renewed in the name of an entity that Complainant alleges no longer exists, such conduct constitutes registration of a domain name in bad faith. Complainant also bases its argument of bad faith on the grounds that its U.S. federal trademark registration put Respondent on constructive notice of its rights in the SAMI mark prior to Respondent’s registration. Additionally, Complainant alleges that Respondent renewed the domain name after Complainant approached Respondent seeking to purchase it. Complainant contends that Respondent not only rejected Complainant’s offer but counter-offered to sell it for $250,000. This, Complainant argues, also shows bad faith. Finally, Complainant states that bad faith use of the domain name can be found because the domain name has not been used and the website corresponding to that domain name has been inactive.

B. Respondent

Respondent has not responded to the allegations in the complaint and, as such, has not contested any of the facts and allegations made by the Complainant. Respondent did submit an e-mail to the Center on July 19, 2001, which was after the due date for a proper answer under the Center’s Order. Nevertheless, the Panel will, and has, taken notice of the contents of that e-mail [1]. In his e-mail, Respondent admits that he had attempted to sell the domain name and had listed it for an open bid. Respondent concludes his e-mail by stating that he is available to "entertain all offers for a sale of my name."

In order for Complainant to prevail in this matter and to obtain the requested relief of a transfer of the domain name <sami.com>, Complainant must prove:

- that Complainant has rights in the mark SAMI;

- that the domain name is identical or confusingly similar to Complainant’s trademark or service mark;

- that the Respondent has no rights or legitimate interests in the domain name; and

- That the domain name was registered and is being used in bad faith. See Policy paragraph 4(a).

Even though there has been no response by Respondent, nevertheless, Complainant maintains the burden of proving that of the elements required for the UDRP exist. Ingram Micro Inc. v. Noton Inc., WIPO Case No. D2001-0124.

The uncontradicted evidence shows that Complainant is the owner of a United States Federal Registration for the mark SAMI, Registration No. 1,831,771. The mark was registered on April 19, 1994. The application was filed January 22, 1992. As a matter of U.S. trademark law, Complainant has established nationwide priority of rights in the mark SAMI as of its filing date of 1992. Complainant’s registration is incontestable under U.S. law and therefore serves as conclusive evidence of Complainant’s exclusive right to use the mark SAMI for the goods and services specified in the registration. The evidence further shows that Complainant is the owner of a Community Trademark for SAMI, Registration No. 00,134,1684.

Given the existence of these registrations, Complainant has satisfied the first element and has shown that it has rights in the mark SAMI.

The domain name at issue copies in its entirety Complainant’s trademark. Nothing has been added to distinguish the domain name from Complainant. On its face, it is evident that the domain name is identical to the mark SAMI in which the Complainant has established rights. Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029.

Under the Policy, legitimate interest in a domain name may be demonstrated by showing that: (a) before any notice of the dispute Respondent used, or made preparations to use, the domain name in connection with a bona fide offering of goods or services; (b) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (c) Respondent is making legitimate, non-commercial and fair use of the domain name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademarks at issue. Policy paragraph 4(c). By failing to file a response in this action, Respondent has not demonstrated any legitimate rights or interests in the domain name. In addition, the evidence provided by Complainant shows that there is no use of the domain name by Respondent in connection with a bona fide offering of goods or services or that the Respondent is making legitimate common non-commercial or fair use of the domain name.

This leaves us with the question of whether Respondent has been commonly known by the domain name. There is no dispute but that when the domain name was initially registered in 1995, Respondent had an existing business called Screen Actors Models International, Inc. Complainant contends that one year after the domain name was registered, the Respondent dissolved. In support of this statement, Complaint points to records of the Hawaii Secretary of State showing that the companies Sami and Sami, Inc. have dissolved. Compl. Exh. 7. However, these documents do not refer to Screen Actors Models International nor do the addresses of the corporations listed on the documents correspond with Respondent’s address. Thus, there is no evidence that Respondent dissolved as a corporate entity.

The Policy refers to a respondent "having been" commonly known by the domain name. It does not seem to require that Respondent be known by the domain name at the time of the adjudication of the dispute but only at some point in time. It is possible that Respondent, may have been known by the acronym SAMI at the time it registered the domain name. However, it is not for the Panel to guess. Because Respondent has not provided any evidence to show it was known by the acronym SAMI and given the lack of use of the domain name, the Panel finds that Complainant has met its burden with respect to paragraph 4(a)(ii) of the Policy.

These elements of the Policy, embodied in paragraph 4(b), while often considered together are separate inquiries. Complaint must show that "the registration was undertaken in bad faith and that Respondent is continuing to act in bad faith." Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Kabushiki Kaisha Toshiba v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464. Given the conclusion reached below, the issue of bad faith use need not be addressed.

In arguing that the Respondent registered the domain name in bad faith, Complainant relies on its trademark for SAMI which was issued prior to the registration of the domain name <sami.com>. While Respondent is deemed to be on constructive notice of Complainant’s rights in the trademark SAMI as a matter of U.S. law, there is no evidence that Respondent knew or should have known of the domain name [2]. Indeed, no evidence has been presented by Complainant to suggest that Respondent would know or would have reason to know of Complainant’s mark. Under these facts, constructive notice is not sufficient evidence of bad faith registration. Complainant has put forth no evidence that Respondent originally registered or acquired the domain name in bad faith primarily for the purpose of selling it or for other purposes.

Complainant seems to recognize that the original registration of the domain name was not in bad faith and thus concentrates its argument on the renewal of the registration in November, 2000. This renewal, according to Complainant, constitutes a new registration. Complainant cites no case for this position. Complainant argues that changed circumstances can convert a registration originally obtained in good faith to one registered in bad faith. Such a position finds no support in WIPO precedent and, in fact, the cases hold to the contrary. In Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993, the complainant, like the Complainant here, did not have strong, if any, evidence that the Respondent initially registered the domain name in bad faith. Nevertheless, the complainant, like the Complainant here, contended that it was entitled to a transfer of the domain name because the renewal of the registration was made in bad faith. While not addressing specifically the issue of whether renewal in bad faith satisfies the requirements of the Policy, the Panel did hold that the complaint was brought in bad faith and constituted an abuse of the administrative proceeding and mentioned, as one of the factors leading to the conclusion, the fact that complainant could not establish bad faith registration and therefore argued bad faith renewal.

The issue of whether renewal of a registration made in bad faith can convert a name originally registered in good faith to a name registered in bad faith was addressed head-on in Weatherall Green & Smith v. Everymedia.com, WIPO Case No. D2000-1528. The Panel in that case, like the Panel here, found no evidence that the original registration was obtained in bad faith. The Panel did find that the registration was renewed in bad faith and that at the time of the renewal the domain name was being used in bad faith. However, even with this evidence, the Panel did not find a violation of the UDRP, concluding "a registration of a domain name that at inception did not breach Rule 4(a)(iii) but is found later to be used in bad faith does not fall foul of Rule 4(a)(iii)." The Panel also relied on the Report of the WIPO Internet Domain Name Process (April 30, 1999) which states that the Report was not intended to extend the definition of abusive registration "to include domain names originally registered in good faith." See also Teradyne, Inc. v. 4tel Technology, WIPO Case No. D2000-0026. Clearly, the authors of the Report could have extended its analysis of the UDRP to cover registrations obtained in bad faith either at the time of the original registration or at the time of renewal. It chose not to do so. Similarly, the Policy could have been drafted to address both bad faith registration and bad faith renewal. It does not, referring only to a registration having been obtained in bad faith. Thus, there is no support for Complainant’s position.

Not only does the Complainant’s position lack the support of the Policy and the case law, but also it lacks the support of the domain name registrars who do not seem to treat renewals as new registrations. Indeed, in the WHOIS results for the domain name <sami.com> annexed as Exhibit 2 to the complaint, the domain name registrar lists the domain name as being created on October 31, 1995, and expiring on November 1, 2001. There is no indication that there was a "re-registration". Rather, the renewal is treated as a ministerial function.

Because Complainant has not presented any evidence to suggest that when the domain name was originally registered it was done so in bad faith, and because there is no indication in the UDRP that a renewal constitutes a new registration, Complainant has not satisfied its burden of showing bad faith registration. If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith. Accord, Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005. Absent proof of bad faith registration, the Complainant has not satisfied the requirements of the UDRP. Weatherall Green & Smith v. Everymedia.com, WIPO Case No. D2000-1528.

The UDRP has a narrow focus which is to combat abusive domain name registration. The charge given to Panelists is to determine whether there is bad faith use and registration of a domain name. In this regard, the scope of the UDRP is narrower than the scope of U.S. law to which both parties are bound. While the UDRP requires both bad faith use and registration, the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125, requires bad faith use, registration, or trafficking. Thus, evidence that might not be sufficient for purposes of the UDRP may be sufficient to prove a violation of U.S. law. In this case, it is for the courts to determine whether the conduct of the Respondent violated federal law.

On the facts presented in this dispute, and given the focus and requirements of the UDRP, Complainant has not met his burden. While Complainant has shown rights in the mark SAMI, has shown that the domain name <sami.com> is identical to the trademark SAMI, and has shown that Respondent has no legitimate rights or interest in the domain name, Complainant has not shown bad faith registration of the domain name. Accordingly, for the reasons set forth above, the request made by the Complainant for transfer of the domain name <sami.com> is denied.

Barbara A. Solomon, Esq.
Sole Panelist

Dated: August 14, 2001

Footnotes:

1. The Panel is entitled to take notice of submissions filed after the due date to the extent that they help to illuminate the issues. Given the basis for the decision, this e-mail is of no relevance.

2. This clearly distinguishes the case from Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059 relied on by Complainant. That case specifically noted the complainant’s high profile presence in the retail mark and the fame of complainant’s mark.