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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crystal Geyser Water Company v. bayCAD
Case No. D2001-1293
1. The Parties
1.1 The Complainant is Crystal Geyser Water Company, a corporation organized under the laws of the State of California, United States of America, having its principal place of business at 55 Francisco Street, Suite 410, San Francisco, California, United States of America.
1.2 The Respondent is bayCAD, an entity having an address at P.O. Box 51832, Pacific Grove, California, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <crystalgeyser.com>, which domain name is registered with BulkRegister.com, Inc. ("BulkRegister"), based in the United States of America.
3. Procedural History
3.1 The Complainant submitted an original and four hardcopies of the original Complaint to the World Intellectual Property Organization Arbitration Center (the "WIPO Center") on October 24, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated October 29, 2001. The WIPO Center received the electronic version of the complaint on November 1, 2001.
3.2 On October 31, 2001, a Request for Registrar Verification was transmitted to the registrar identified in the Complaint, 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 November 1, 2001, NSI replied by email that the domain name at issue was not registered with NSI.
3.4 On November 1, 2001, the WIPO Center notified the Complainant that it had misidentified the registrar and requested that an Amended Complaint be filed identifying the correct registrar.
3.5 On November 3, 2001, in electronic form, and on November 16, 2001, in hardcopy, the WIPO Center received a first Amended Complaint, identifying BulkRegister as the registrar.
3.6 On November 5, 2001, a Request for Registrar Verification was transmitted to BulkRegister, requesting it to: (1) confirm that the domain name at issue is registered with BulkRegister; (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.
3.7 On November 6, 2001, the registrar replied by email, stating that the person identified in the Complaint as the Respondent was not registrant of the domain name at issue.
3.8 On November 9, 2001, the WIPO Center notified the Complainant that it had misidentified the Respondent and requested that an Amended Complaint be filed, identifying the registrant of the domain name at issue as the Respondent.
3.9 On November 20, 2001, in hardcopy, and on November 26, 2001, in electronic form, the WIPO Center received a second Amended Complaint, identifying bayCAD as the Respondent (hereinafter the "Complaint").
3.10 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 WIPO 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.
3.11 No further formal deficiencies having been recorded, on November 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, BulkRegister and ICANN), setting a deadline of December 17, 2001, 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 BulkRegister’s confirmation, and by facsimile. 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."
3.12 On December 6, 2001, Respondent's representative sent an email to the WIPO Center stating that Respondent did not intend to participate or to oppose the relief sought by the Complainant.
3.13 On December 21, 2001, not having received any formal Response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.14 On January 15, 2002, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist. The Notification of Appointment set January 29, 2002, as the date by which the decision should be delivered to the WIPO Center.
4. Factual Background
4.1 Complainant registered the trademark CRYSTAL GEYSER and design in connection with sparkling mineral water with the United States Patent Office ("USPTO") on December 9, 1980, and the registration has been renewed for an additional 20-year period. Complaint, Annex C.
4.2 Complainant has used the CRYSTAL GEYSER mark in connection with sparkling mineral water since at least March 1978.
4.3 Complainant spends in excess of US$1,000,000 annually in the United States in the advertisement and promotion of its trademarked CRYSTAL GEYSER products.
4.4 On March 11, 2000, Respondent registered the domain name <cystalgeyser.com>. Complaint, Annex A.
4.5 To date, Respondent has not used the domain name to develop a web site.
4.6 Complainant has sent Respondent a letter requesting transfer of the domain name at issue. Complaint, Annex F. As of the date that Complainant filed its Complaint, Respondent had not responded to the request.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered a domain name which is identical to the trademark 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 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."
6.2 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.
6.3 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 rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
6.4 It is clear that the domain name at issue <crystalgeyser.com> is identical to the service mark in which the Complainant has rights. Digitronics Inventioneering Corporation v. @Six.Net Registered, WIPO Case No. D2000-0008.
6.5 Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011.
6.6 Complainant's allegations fail to come within any of the four examples of bad faith registration and use set out in Paragraph 4(b) of the Policy.
6.7 However, the Examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
6.8 In Telstra it was established that "inaction" can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd., WIPO Case No. D2000-0086; Sanrio Co. Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Strålfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075.
6.9 Telstra established that whether "inaction" could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.
6.10 In this case, the Panel finds that where (1) the mark is one that is widely known in the United States and especially in California, where Respondent purportedly has its place of business, and was widely known at the time Respondent registered the domain name at issue; (2) Respondent gave no street address for itself or its Administrative Contact in the information it supplied to the registrar; (3) Respondent failed to respond to a letter from Complainant; and (4) Respondent failed to Respond to the Complaint at issue or to deny any of its allegations, that Respondent's inaction constitutes bad faith registration and use of the domain name at issue. CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <crystalgeyser.com> be transferred to the Complainant.
M. Scott Donahey
Dated: January 18, 2002