WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fisher Communications, Inc. v. Escape Ventures, Inc.
Case No. DBIZ2001-00041
1. The Parties
Complainant is Fisher Communications, Inc., a Washington corporation with its principal place of business in Seattle, Washington. Complainant is represented by Graham & Dunn in Seattle, Washington, USA.
Respondent is Escape Ventures, Inc., a company located in Scottsdale, Arizona, USA. Respondent appears pro se.
2. The Domain Name and Registrar
The domain name at issue is <kvi.biz> (the "Domain Name"). The Domain Name was registered with Intercosmos Media Group, Inc. d/b/a DirectNIC.com (the "Registrar") on November 19, 2001.
3. Procedural History
The Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by e-mail on December 14, 2001, and in hardcopy on December 18, 2001. The Complaint was made pursuant to the Start-Up Trademark Opposition Policy for .BIZ (the "STOP") adopted by NeuLevel and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, and is in accordance with the Rules under that Policy (the "STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "WIPO Supplemental STOP Rules").
On December 24, 2001, the Center transmitted a Notification of STOP Complaint and Commencement of Administrative Proceedings to the Respondent. Copies of the Complaint were also sent to ICANN and the Registrar.
Respondent was advised that a Response to the Complaint was required within 20 calendar days, or January 13, 2002. On January 9, 2002, Respondent requested an extension of ten days for the filing of a Response. The Center granted this request on January 9, 2002. Respondent submitted a Response on January 20, 2002, which was received by the Center on January 23, 2002.
On February 20, 2002, after clearing for potential conflicts, the Center appointed David H. Bernstein as the sole panelist in this matter.
4. Factual Background
Through its wholly-owned subsidiary Fisher Broadcasting, Inc., Complainant is the owner of an incontestable United States Trademark Registration for the mark KVI for radio broadcasting (Registration No. 1,945,182, registered January 2, 1996). According to the trademark registration, Complainant has been using the KVI mark since December 1929. Complainant uses the mark to identify radio broadcasts, namely, a talk radio station broadcasting from Seattle, Washington.
According to its website at <ev.com>, Respondent identifies itself as "primarily an ‘internet incubator’ that creates and operates a multitude of new internet and e-commerce businesses." Prior to Respondent’s notice of this dispute, the Domain Name seems to have resolved to <ev.com>.
On December 6, 2001, Complainant sent an e-mail to Respondent demanding the transfer of the Domain Name. Respondent replied the same day, stating that the Domain Name was a vital part of an "international business database." Respondent also included a list of companies it intended to list on the <kvi.biz> web site and stated that it intended to add Complainant’s name to its directory. All of the companies on Respondent’s list had the initials "K.V." or "K.V.I."
In a subsequent e-mail, also dated December 6, 2001, Complainant rejected Respondent’s assertion of a legitimate interest in the Domain Name and mentioned the impending deadline for it to file a STOP Complaint. Complainant reiterated its demand that the domain name be transferred and offered to reimburse Respondent for its cost of registration in return for the transfer of the Domain Name.
On December 9, 2001, Respondent sent a reply e-mail asserting its legitimate interest in the domain name, stating that "[a]ny site generating positive cash flow is a ‘legitimate interest’ in our book." Respondent also explained that the Domain Name would be integrated with various search engines in order to display companies meeting particular search criteria. Attached to this e-mail was Respondent’s proposed <kvi.biz> web page, which consisted of a list of names and addresses of businesses with the initials "K.V." or "K.V.I."
In an e-mail dated December 10, 2001, Complainant asked, "Is Escape Ventures willing to sell the domain name <kvi.biz>? If so, for how much?" Respondent replied the same day, offering to lease the Domain Name to Complainant for $3,000 per month. It substantiated that figure by calculating the potential advertising revenue it could derive from what it characterized as a rare, three-letter domain name like <kvi.biz>.
5. Parties’ Allegations
Complainant asserts that each of the elements specified in Paragraph 4(a) of STOP are satisfied.
Complainant asserts that the Domain Name is identical to its trademark KVI.
Complainant alleges that Respondent has no rights or legitimate interests with respect to the domain name because it is not and has never been commonly known by the name "KVI" or by any name bearing the initials "K.V.I." Moreover, Complainant states that it never licensed or otherwise transferred to Respondent any right or interest in the trademark KVI, and has not authorized Respondent to use the KVI trademark. Complainant also alleges that Respondent is not making legitimate noncommercial use of the Domain Name, since the use of the Domain Name to display information about Complainant and other companies with the initials "K.V.I." is neither legitimate nor non-commercial.
Complainant contends that Respondent has registered and used the Domain Name in bad faith because Respondent registered the Domain Name for the purpose of selling it to Complainant for consideration in excess of direct out-of-pocket costs. In particular, in reply to Complainant’s offer to reimburse Respondent for its registration costs, Respondent made a counteroffer of $3,000 per month for the Complainant to lease the Domain Name. Complainant characterizes this amount as "outrageous" and proof that Respondent registered the Domain Name for the purpose of re-sale.
In addition, Complainant asserts that Respondent has "intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or of a product or service of said web site."
In its defense, Respondent claims that Complainant failed to prove any of the three factors listed in Paragraph 4(a) of STOP.
Respondent alleges that the Domain Name is not identical to Complainant’s trademark. To support this claim, Respondent asserts that: (1) its use of "KVI" on its web site is stylized, while Complainant’s mark is printed; (2) the KVI trademark is not identical to the entire "kvi.biz" string, which is to be read as a single unit; (3) KVI is not a word and is merely a set of initials; (4) on its own website, Complainant typically uses "570KVI," a modified version of KVI; (5) the Dallas, Texas radio station KVIL dilutes the KVI mark; (6) KVI is not distinctive, fanciful, or coined, and does not possess a secondary meaning; (7) third-party use of "KVI" was widespread both before and after the registration of Complainant’s trademark, and therefore, the mark KVI is not associated solely with Complainant; and (8) KVI is not a trademark of "international significance" like IBM or AT&T.
Respondent seeks to demonstrate its rights or legitimate interests with respect to the Domain Name by arguing that it is currently using the Domain Name in connection with the bona fide offering of goods and services. In particular, Respondent claims that it is using the Domain Name as part of a free international internet business directory. In addition, Respondent points to its expense of time (hundreds of hours) and money (over $1,200) in the development of the web site in order to support its claim of a legitimate interest with respect to the Domain Name. Finally, Respondent contends that its desire to lease, rather than to sell, the Domain Name is evidence of its legitimate interest.
Respondent claims that it did not register or use the Domain Name in bad faith. It alleges that, since it is not a competitor of Complainant, it could not be attempting to attract Complainant’s customers for commercial gain. Moreover, such an attempt would be impossible because, upon reaching Respondent’s web site, a potentially confused customer would immediately realize that the site does not belong to Complainant. Finally, Respondent asserts that it had never heard of Complainant prior to the filing of the Complaint, further undermining Complainant’s allegations of bad faith.
As for Complainant’s allegations that Respondent registered the web site primarily for the reason of selling it for consideration exceeding its out-of-pocket costs, Respondent states that the $3,000 lease sum reflects realistic projected advertising income streams using industry averages.
In its Response, Respondent also "reserved" the right to make a claim of reverse domain name hijacking, arguing that it lacked sufficient information to support such a claim at the time the Response was submitted.
C. Additional Response
In a February 9, 2002 submission labeled "Additional Response," Respondent attempted to exercise its self-reserved right to make a claim of reverse domain name hijacking against Complainant. In its submission, Respondent did not indicate any new information justifying this change of heart.
Under the STOP and the STOP Rules, Respondents are given one opportunity to make a submission, and generally should not file additional submissions. See Plaza Operating Partners, Ltd. v. Pop Data Technologies, Case No. D2000-0166 (WIPO June 1, 2000) ("Rule 12 [of the UDRP, which mirrors STOP Rule 12,] unambiguously provides that only the Panel may request further submissions"); Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO June 29, 2000). In this case, there is no basis for Respondent to file an additional submission: Respondent does not point to any exceptional circumstances necessitating further submissions, nor does the Additional Response disclose any new facts not available at the time the Response was submitted. Accordingly, the Panel declines to consider Respondent's claim of reverse domain name hijacking, which, in any event, is moot given the decision in Complainant's favor, as explained below.
Under the STOP, complaints can only be filed by "IP Claimants" who had filed an IP Claim for a particular alphanumeric string. If that string becomes registered as a .BIZ domain name, NeuLevel, the Registry Operator of the .BIZ gTLD, notifies the concerned IP Claimant and invites it to initiate a STOP proceeding within 20 days. If there are multiple Claimants for a particular string, NeuLevel determines the priority order among various Claimants on a randomized basis. STOP, Paragraph 4(1)(i). Only the priority Claimant will be invited to initiate a STOP Complaint. The Center is required to inform the Panel if a given domain name in dispute is subject to multiple IP Claims. In the present case, no such information has been given to the Panel.
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the STOP have been satisfied:
(i) the domain name in dispute is identical to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the Domain Name; and
(iii) the domain name has been registered or used in bad faith.
1. The Domain Name is Identical to Complainant’s Trademark.
The Domain Name is clearly identical to Complainant’s KVI mark for purposes of the STOP. For purposes of this analysis, the .BIZ gTLD is to be disregarded. AIMS Pty. Ltd. v. Lee, Case No. DBIZ2001-00001 (WIPO February 14, 2001); Domain Bank, Inc. v. Sonic Co., Ltd., Case No. DBIZ2001-00014 (WIPO February 13, 2001). Disregarding the gTLD, the Domain Name consists in its entirety of the KVI mark, which is registered in the U.S. Patent and Trademark Office and thus is entitled to a presumption of validity. EAuto, L.L.C. v. Triple S. Auto Parts, Case No. D2000-0047 (WIPO March 24, 2000).
The Panel rejects Respondent’s various arguments concerning the stylized appearance of the KVI mark on its website and the alleged weakness of Complainant’s mark. The issue in the first factor is simply whether Complainant has trademark rights and whether the domain name (not counting the gTLD) is identical to that mark. There can be no dispute here on either of these elements .
2. Respondent has no Rights or Legitimate Interests With Respect to the Domain Name
According to Paragraph 4(c) of STOP, a Respondent may demonstrate its rights or legitimate interests with respect to a domain name by showing any of the following circumstances:
(i) it is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) before any notice to it of the dispute, its 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
(iii) it (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights.
Respondent has offered no evidence to show that it is or has ever been known by the Domain Name. Nor is it the owner or beneficiary of a trade or service mark that is identical to the Domain Name.
The Panel rejects Respondent’s claim that it is currently using the Domain Name in connection with the bona fide operation of a free international internet business directory. First, Respondent does not claim to have operated such a directory in the past, and thus cannot show such use "before any notice . . . of the dispute." STOP 4(c)(ii). In fact, the web site at <kvi.biz> appears not to have displayed any such directory until after Respondent received Complainant’s demand letter. Second, and in any event, Respondent has no right to provide a listing of other KVI companies at a kvi.biz website when Respondent itself has no rights in the KVI mark. See Chanel, Inc. v. Estco Technology Group, Case No. D2000-0413 (WIPO September 18, 2000) (finding no legitimate interest where Respondent registered various domain names corresponding to famous trademarks in order to create internet business directory of the trademark owners’ retail stores); Stanford Microdevices, Inc. v. Morace, Case No. D2001-0382 (WIPO May 13, 2001) (finding no legitimate interest where Respondent claimed to have registered domain name corresponding to Complainant’s trademark in order to create business directory of micro device companies in Stanford).
Respondent’s business plan is clearly distinguishable from that upheld in Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999), the case on which Respondent relies. In that case, the defendant e-mail provider registered thousands of domain name combinations, mostly corresponding to common surnames, in an effort to create an inventory of vanity domain names. Here, there is no evidence in the record that Respondent has an intent to provide some broader-based directory services for a variety of initials, and it has not explained why it singled out the "K.V.I." letters for its alleged directory services .
3. Respondent Has Used or Registered the Domain Name in Bad Faith.
Paragraph 4(b) of STOP states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) the Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name;
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location.
Unlike the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the STOP only requires the Complainant to demonstrate that the domain name was registered or used in bad faith. Since the domain name registrant in a STOP proceeding (which must be brought by the Complainant within 20 days of receiving notification of domain name registration) will not have had much chance to use its .BIZ domain name, the emphasis is on registration in bad faith. In addition, the Panel should take into account the fact that many Complainants under the STOP will be hard-pressed to obtain direct evidence of bad faith, in view of the short period of use of the domain name by the Respondent, and thus must be prepared to draw fair inferences presented by the evidence, circumstantial or otherwise.
In the current case, Complainant has presented evidence that Respondent offered to lease the Domain Name for an amount plainly in excess of its documented out-of-pocket costs. This fact, in light of Respondent’s lack of a legitimate interest, is itself sufficient to prove bad faith. Cf. Etam, plc v. Alberta Hot Rods, Case No. D2000-1654 (WIPO January 31, 2001) (no bad faith when a registrant offers to sell a domain name in which it has a legitimate interest).
It makes no difference that Respondent’s offer was in the form of a lease, as opposed to a sale. Like the UDRP, the STOP treats equally the sale and the rental of a domain name for the purpose of finding bad faith. STOP 4(b)(i) ("selling" or "renting"); Magnum Piering, Inc. v. Mudjackers, Case No. D2000-1525 (WIPO January 29, 2001) (offer to lease domain name for $2,500 per year constitutes "classic cybersquatting"); Casa Editorial El Tiempo S.A., v. Spider Webs Ltd., Case No. D2000-1757 (WIPO April 8, 2001) ("The fact that the respondent offers to lease rather than sell is to be considered immaterial.").
Likewise, Respondent’s argument distinguishing an "offer" from a "counter-offer" is unavailing. As the Panel explained in detail in Magnum Piering:
"Cybersquatters often wait until a trademark owner comes calling; they should not be able to avoid the Policy by being the second to speak. It is true that canny complainants might attempt to entice innocent registrants into making offers they would not otherwise have made. However, an offer to sell is of no moment if a registrant has a right or legitimate interest in the domain name at issue, and so this scenario is not threatening to legitimate registrants. Nor does an offer to sell automatically mandate a finding of bad faith; the Panel is still obligated to review the entire record to determine if bad faith exists."
In the present case, there is no evidence of good faith to counterbalance the presumption that Respondent’s offer to sell constituted bad faith registration or use of the Domain Name. Respondent has no rights or legitimate interests with respect to the Domain Name and is attempting to profit off a trademark that Complainant has been using for over 70 years and that is protected by an incontestable registration.
Finally, the Panel rejects Respondent’s argument that, because it had no notice of Complainant’s trademark before it registered the Domain Name, there can be no bad faith. First, when registering a .BIZ domain name containing a mark in which Respondent has no prior rights, a respondent has some responsibility to investigate whether any party has trademark rights in the alphanumeric string contained in the Domain Name. See MGM Mirage v. Young Joon Choi, Case No. DBIZ2001-00036 (WIPO February 14, 2002) (holding that a registrant should take "reasonable steps" to ensure that its domain name will not infringe upon the rights of another party, including a search of the United States Trademark Register if the registrant is from the United States). Second, once Respondent had actual notice of Complainant’s trademark rights, its offer to lease the Domain Name, in which it had no legitimate interest, itself constituted bad faith use, regardless of whether it acted in bad faith at the time of the registration. Cf. e-Duction, Inc. v. Zuccarini, Case No. D2000-1369 (WIPO February 5, 2001) (declining to order transfer despite showing of bad faith use when Complainant failed to also show bad faith registration).
The Panel finds that the Domain Name <kvi.biz> is identical to KVI, a mark in which Complainant has rights, that Respondent has no rights or legitimate interests with respect to the Domain Name, and that Respondent registered or is using the Domain Name in bad faith. Accordingly, the Panel orders that the registration of the Domain Name <kvi.biz> be transferred to Complainant.
David H. Bernstein
Dated: March 6, 2002
1. This web page, in a modified form, is currently listed at the <kvi.biz> web site. Now, all of the companies listed have the initials "K.V.I." in some form.
2. Respondent’s arguments to the contrary are patently frivolous. Similar arguments have been rejected by numerous prior panels in analogous UDRP proceedings. When parties advance such frivolous arguments, it harms their credibility before the Panel. R.T. Quaife Engineering, Ltd. v. Luton, Case No. D2000-1201 (WIPO November 14, 2000). Although the Panel takes into account that Respondent is appearing pro se, it believes that all respondents have a responsibility to inform themselves of basic precedents.
3. To the extent that Respondent alleges that it is making legitimate non-commercial use of the Domain Name (an assertion with which Complainant disagrees), the Panel notes that such a use would not give rise to a finding of a legitimate interest with respect to the Domain Name as it would under the Uniform Domain Name Dispute Resolution Policy. Unlike other gTLDs, the .BIZ gTLD is restricted to registrants using a domain name for a bona fide business or commercial purpose. Therefore, a non-commercial use of a .BIZ domain name is, by definition, illegitimate under the STOP.