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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Richard L. Kane v. Daniel Lewis, Wealth Wizards
Case No. D2001-0980
1. The Parties
The Complainant in this proceeding is Richard L. Kane ("Mr. Kane"), a Florida resident residing in Lake Worth, Florida, USA. Respondent is Daniel Lewis/Wealth Wizards ("Mr. Lewis"), a California resident residing in Beverly Hills, California, USA.
2. The Domain Name and Registrar
This dispute concerns the domain name <wealthwizard.net>. The registrar with whom the domain name is registered is BulkRegister, Inc. a/k/a Bulkregister.com ("BulkRegister") of Baltimore, Maryland, USA.
3. Procedural History
Mr. Kane’s Complaint was filed with the World Intellectual Property Organization, Arbitration and Mediation Center (the "Center") in electronic form on August 1, 2001, and in hardcopy on August 15, 2001, pursuant to 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 Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On August 7, 2001, the Center notified the registrar, BulkRegister, that Mr. Kane had filed his Complaint with the Center, and requested that BulkRegister verify certain details regarding Mr. Kane’s Complaint, as well as the registration and current status of the contested domain name. On August 15, 2001, BulkRegister notified the Center: (i) that BulkRegister received Mr. Kane’s Complaint, (ii) that BulkRegister is the Registrar for the contested domain name, (iii) that Wealth Wizards is the current listed registrant of the <wealthwizard.net> domain name registration, (iv) of the contact details for the contested domain name (including that Mr. Lewis is the administrative contact therefore), (v) that the Policy applies to the contested domain name through application of BulkRegister’s Service Agreement in effect, and (vi) that the domain name registration for the <wealthwizard.net> domain name is in "Registrar Lock" status.
It appears that Mr. Kane made proper payment of the administrative fee, but that on August 20, 2001, the Center notified Mr. Kane of his failure to comply with certain formal filing requirements. Mr. Kane cured these deficiencies by submitting an Amended Complaint that the Center received by e-mail on August 20, 2001, and in hardcopy on September 19, 2001. Subsequent to Mr. Kane’s curative actions, the Center confirmed that Mr. Kane complied with all of the formal filing requirements.
On September 20, 2001, the Center began the process to notify Mr. Lewis of the filing of Mr. Kane’s Complaint in accordance with paragraph 2(a) of the Rules. Mr. Lewis was given until October 10, 2001, to file a Response. The Center attempted e-mail transmission of its Notice of the filing of Mr. Kane’s Complaint and Commencement of this Administrative Proceeding at the e-mail addresses listed in the WhoIs contact details for the contested domain name. There is no indication in the case file that the e-mail transmission did not reach its destination.
Also on September 20, 2001, the Center sent by facsimile transmission the printed version of Mr. Kane’s Complaint and the Notice of Commencement to the facsimile telephone number courier listed in the WhoIs contact details for the contested domain name. The attempted facsimile transmission was unsuccessful. Additionally on September 20, 2001, the printed version of Mr. Kane’s Complaint, with exhibits, and the Notice of Commencement were sent to Mr. Kane’s mailing address listed in the WhoIs contact details for the contested domain name. According to documentation contained in the case file, the courier package reached the intended addressee. Thus, the Panel finds that Mr. Lewis was properly notified of this administrative proceeding.
It appears that Mr. Lewis did not submit a Response to Mr. Kane’s Complaint to the Center. The Panel deems Mr. Lewis to be in default with respect to this administrative proceeding.
In his Complaint, Mr. Kane elected to have this proceeding decided by a single member panel. On October 19, 2001, the Center contacted the undersigned to solicit interest in being the sole panelist who would decide this matter. After investigating and clearing potential conflicts of interest, the undersigned notified the Center on October 22, 2001, of the ability and availability to serve as the sole panelist for this matter. Also on October 22, 2001, the undersigned submitted to the Center a "Statement of Acceptance and Declaration of Impartiality and Independence." Thus, the panel for this administrative proceeding was properly constituted.
On October 23, 2001, the Center forwarded to the undersigned the case file for this administrative proceeding. Also on October 23, 2001, the Center notified the parties that the undersigned would be the sole panelist to decide this matter.
4. Factual Background
Mr. Kane is the owner of U.S. Trademark Registration No. 2,451,245 for the mark wealth wizard for "computer program for stock trading." The U. S. Patent and Trademark Office issued the Registration on May 15, 2001. In the Registration, Mr. Kane claims that his first use of the WEALTH WIZARD mark anywhere was June 1, 1997, and that his first use of the mark in commerce was January 1, 2000. A copy of the registration was attached to the Amended Complaint. Mr. Kane did not submit any evidence of his use of WEALTH WIZARD as a trademark.
Mr. Kane asserts that he is known throughout the financial industry for "the Wealth Wizard," but does not provide any documentary support for this contention. Mr. Kane submitted patent and copyright ownership information in connection with his WEALTH WIZARD computer program. However, this patent and copyright information does not support use of the WEALTH WIZARD mark in connection with any products or services.
Mr. Kane asserts that the contested domain name <wealthwizard.net> contains essentially the identical phrase WEALTH WIZARD that is the subject of Mr. Kane’s federally registered trademark.
According to the registrar’s WhoIs database information attached to the Amended Complaint, the <wealthwizard.net> domain name was registered on March 27, 2001, prior to the United States federal registration of Complainant’s WEALTH WIZARD trademark noted above, and one year and three months after Mr. Kane’s alleged first use in commerce of the mark.
There is no web site associated with the <wealthwizard.net> domain name. Submitted with the Amended Complaint is a copy of an unsuccessful attempt by Mr. Kane (or his representative) to access a web site under the <wealthwizard.net> domain name.
Mr. Kane makes no allegation that Mr. Lewis registered the contested domain name knowing that it was owned by, used by or registered to Mr. Kane. In fact, Mr. Kane’s United States federal registration of the WEALTH WIZARD mark occurred after Mr. Lewis registered the domain name. Mr. Kane asserts that there is no proof suggesting that Mr. Lewis has any rights or legitimate interest in respect of the <wealthwizard.net> domain name. As Mr. Lewis has not responded to the Amended Complaint, he has not come forward to dispute Mr. Kane’s assertions in this regard.
As evidence of bad faith, Mr. Kane attaches to his Amended Complaint an exchange of correspondence between his attorney and Mr. Lewis. In response to a request that Mr. Lewis authorize the transfer of the contested domain name, Mr. Lewis stated that: (i) he "owns" the domain name, (ii) he is not using nor does he plan to use the domain name, (iii) if Mr. Kane wants it [the domain name] he must pay for it, (iv) he would not authorize the transfer of the domain name to Mr. Kane, and that (v) if Mr. Kane wanted the domain name, he could make an offer to Mr. Lewis for which Mr. Lewis "would consider" transferring the domain name to Mr. Kane.
5. Parties’ Contentions
Mr. Kane asserts that the contested domain name is identical or confusingly similar to the WEALTH WIZARD trademark in which Mr. Kane has rights; that Mr. Lewis has no rights or legitimate interests in respect of the domain name; and that the contested domain name was registered and is being used in bad faith.
As Mr. Lewis has failed to respond to the Complaint, the Panel does not have the benefit Mr. Lewis’ point of view.
6. Discussion and Findings
Transfer of the contested domain name will be ordered if Mr. Kane has shown that the following three elements are present:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name; and
(iii) the contested domain name has been registered and is being used in bad faith.
In an administrative proceeding pursuant to the Policy, Rules and Supplemental Rules, the Complainant must prove that each of these three elements is present.
(Paragraph 4(a) of the Policy)
The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the registrant registered or 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 registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant 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 it is shown that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on his web site or location.
(Paragraph 4(b) of the Policy)
On the other hand, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the registrant’s rights or legitimate interests to the domain name:
(i) before any notice to the registrant of the dispute, his 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 registrant (as an individual, business, or other organization) have been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
(iii) the registrant 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.
(Paragraph 4(c) of the Policy)
Mr. Lewis had the opportunity to respond and present evidence that he has rights or legitimate interests in respect of the contested domain name. He chose not to do so. Mr. Kane is not entitled to relief simply by reason of the default. However, the Panel can and does draw evidentiary inferences from the failure to respond. See Miles D., Ltd. d/b/a Jazz Alley v. Shosha, Case No. AF-00318 (eResolution, August 29, 2000), citing, Royal Bank of Canada v. D3M Domain Sales, Case No. AF-0147 (eResolution, May 1, 2000).
For example, Paragraph 14 of the Rules provides that:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the Complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate."
Thus, Mr. Kane’s rights in the mark WEALTH WIZARD are demonstrated by his United
States federal registration for this mark. The Panel also finds that the contested
domain name is nearly identical to and/or is confusingly similar to a trademark
in which Mr. Kane has rights. The presence or absence of punctuation (i.e.,
a space or lack thereof between "wealth" and "wizard" or
the top-level domain <.net>) are of no consequence when establishing the
identity or confusing similarity of the disputed domain name to Mr. Kane’s mark.
See, Barney’s Inc. v. BNY Bulletin Board, Case
No. D2000-0059 (WIPO April 2, 2000); AutoNation, Inc. v. Paul Schaefer,
Case No. D2001-0289 (WIPO April 24, 2001).
Mr. Lewis has not come forward with evidence or argument in an effort to show that he has any rights or legitimate interests in respect of the contested domain name. (Paragraph 4(c) of the Policy). Mr. Lewis has explicitly stated that he has not used the contested domain name, nor does he intend to do so. The Panel, therefore, finds that Respondent does not have any demonstrable rights or legitimate interests in respect of the contested domain name.
The Panel now must decide whether Mr. Kane has come forward with sufficient evidence that the contested domain name has been registered and is being used in bad faith. The Panel finds that such circumstances have not been shown.
It is the Complainant that has the burden of proving all three elements of paragraph 4(a) of the Policy. Complainant’s failure to prove any one of these three elements is fatal to his claim. See, e.g, Emoney Group, Inc. v. Eom, San Sik, Case No. FA001000096337 (NAF March 26, 2001); J. L. Wilson, Inc. d/b/a Suntan Supply v. Ultraviolet Resources Intl., Case No. FA0105000097148 (NAF June 18, 2001).
From a review of the limited evidence in the case file, and upon considering Mr. Kane’s arguments, none of the examples of bad faith use and registration recited in Paragraphs 4(b) (ii)-(iv) of the Policy appear to apply. Mr. Kane has not provided any other grounds, not recited in the Policy, for the Panel to find bad use and registration of the contested domain name on the part of Mr. Lewis.
The only recited element of bad faith use and registration that conceivably could apply here is Paragraph 4(b)(i) of the Policy. While Mr. Lewis did request that Mr. Kane make him a financial offer in return for the transfer of the domain name, the amount of Mr. Lewis’ demand is not stated. Thus, Mr. Kane has not proved that Mr. Lewis demanded payment "in excess of [his] documented out-of-pocket costs directly related to the domain name."
More fundamentally, there is no proof that Mr. Lewis registered the domain name in bad faith. Since Mr. Lewis registered the <wealthwizard.net> domain name before the issuance of the United States federal registration of Mr. Kane’s WEALTH WIZARD mark, Mr. Lewis was not on constructive notice of Mr. Kane’s rights. Further, there is nothing in the record to suggest that Mr. Lewis had actual notice of Mr. Kane’s trademark rights. According to the federal registration Mr. Kane submitted, he had begun using the WEALTH WIZARD mark in commerce one year and three months prior to Mr. Lewis’ registration of the domain name. Mr. Kane does not allege, much less prove, that the parties are involved in the same or related industry(ies) or field(s) of endeavor. There is nothing in the record to suggest that Mr. Lewis was at all aware of Mr. Kane’s rights at the time Mr. Lewis registered the contested domain name.
Based upon the foregoing, the Panel finds in favor of Respondent, and denies Complainant’s request for the compulsory transfer of the domain name <wealthwizard.net>.
Dated: November 1, 2001