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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Top Driver, Inc. v. Benefits Benefits
Case No. D2002-0972
1. The Parties
The Complainant is Top Driver, Inc., a Delaware corporation with its principal place of business at 140 Sylvan Avenue, Englewood Cliffs, NJ 07632, United States of America, represented by Paul, Hastings, Janofsky & Walker, LLP of United States of America.
According to Go Daddy Software, Inc.’s WHOIS database, the Respondent in this administrative proceeding is an entity named "Benefits Benefits," with an address at P.O. Box 2418, Marbledale, CT 06777, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <topdriver.com> (the "Domain Name"). The Domain Name is registered with Go Daddy Software, Inc. ("Go Daddy").
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint on October 19, 2002, by email, and October 21, 2002, in hardcopy. On October 22, 2002, the Center transmitted by email to Go Daddy a request for registrar verification in connection with the Domain Name. On October 22, 2002, Go Daddy transmitted by email to the Center its verification response confirming that Respondent Benefits Benefits is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel agrees with the Center that the Complaint satisfies the requirements, except with respect to the naming of more than one Respondent (an issue discussed in detail below); with respect to that issue, the Panel requests that the Center consider, in connection with its administration of future cases, whether it is appropriate to require Complainants to amend any Complaint that names more than one Respondent.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center attempted to notify the Respondent of the Complaint on October 25, 2002, by email (to two email addresses – one from the Registrar Verification and a second that was provided by Complainant), fax (though the telephone number did not connect to a working fax line), and Federal Express (to Respondent’s address listed in the Registrar Verification: P.O. Box 2418, Marbledale, Connecticut, 06777, USA).
In accordance with paragraph 5(a) of the Rules, the due date for a Response was November 14, 2002. On November 5, prior to the deadline for Respondent’s Response, the Complainant submitted supplemental materials to the Center by email; a hardcopy followed on November 8, 2002. The Complainant states that it sent a copy of these supplemental materials by U.S. Express Mail to Respondent’s post office box address, but these materials (along with the earlier served Complaint) were "unclaimed" by Respondent.
The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 15, 2002. On November 22, 2002, the Center appointed David H. Bernstein as the sole panelist in this matter (the "Panel"). The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as is required by the Center to ensure compliance with the Rules, paragraph 7.
On December 10, 2002, the Panel issued Procedural Order No. 1 to resolve two outstanding procedural issues: first, whether to accept Complainant’s supplemental materials, and second, whether Respondent was properly notified of the instant proceeding.
Regarding Complainant’s supplemental submission, Procedural Order No. 1 states:
Complainant’s supplemental submission, entitled "Affidavit of Adam E. Kraidin," contains documents that, Complainant has certified, were not available to Complainant at the time the Complaint was filed. Given that these documents could not have been submitted with the initial Complaint, the Panel will accept this submission. Cf. Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938 (November 3, 2000) (one basis for the acceptance of supplemental materials is if the information was not available at the time of the Complaint).
In the interest of fairness, though, and in recognition of the obligations imposed by Rule 10(b), the Panel deems it appropriate to allow Respondent an opportunity to respond to this submission. See Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237 (June 11, 2001). Accordingly, the Center shall send a copy of this Order, along with a copy of the Affidavit of Adam E. Kraidin, to the Respondent. As discussed in greater detail below, Respondent shall submit any response it may have to these materials on or before December 24, 2002.
Regarding adequacy of notice, Procedural Order No. 1 states:
Pursuant to Rule 2(a)(ii), the Center sent the notification of complaint by email to Respondent. The email notifications did not bounce back, and thus there is every indication that Respondent did receive actual notice of the Complaint by email. Because Respondent has not replied, though, the Panel cannot be assured that Respondent received actual notice. In light of this uncertainty, the Panel has carefully examined whether the additional notification by post of the Complaint, as required by Rule 2(a)(i), was effective. That notification was sent to Respondent’s post office box address by Federal Express, but was returned to the Center due to an "incorrect address." Federal Express has confirmed to the Center that it is able to deliver packages addressed to a United States post office box address as long as it also is provided with a valid telephone number of the consignee. Presumably, given that Federal Express cannot get access to post office boxes, it is able to effectuate delivery by calling the consignee to obtain a street address for delivery.
In this case, although the Federal Express package was ultimately returned to the Center, it appears that the Center has discharged its notice obligations. It provided notice by email, and provided notice by post via Federal Express. Though Federal Express is not the best method for sending material to a post office box, it can be effective if accompanied by a telephone number, and here, the Center did provide Federal Express with the Respondent’s telephone number (derived from the Registration Verification). Though the Panel cannot be certain that the telephone number was operational, it is Respondent’s obligation to ensure that its contact information is accurately listed in its WHOIS information.
Moreover, in this case, there is evidence in the record that Complainant provided actual service of both the Complaint and Supplemental Materials by Express Mail, a delivery method that does deliver directly to post office boxes. If Respondent failed to receive those service copies, it is Respondent’s fault by virtue of its failure to claim these packages at the post office. Certainly, the Complainant and the Center both used reasonable means to provide Respondent with notice at the addresses it provided in its registration materials.
In any event, given that the Panel has agreed to accept the supplemental submission in this case and to grant Respondent a right of reply, the Panel has an additional opportunity to ensure that Respondent receives actual notice of this proceeding. Accordingly, when it sends this Order and the supplemental submission to the Respondent, the Center should also include in the package a copy of the Complaint and original Notification of Complaint. That package should be sent both by email and by United States Express Mail (or the Swiss equivalent that delivers through United States Express Mail) or some other process that can ensure delivery to a United States post office box, regardless of the presence or absence of a telephone number for the addressee. In light of the procedural posture of this case, the Panel will accept any Response that Respondent cares to file, whether to the Complaint and/or to the Supplemental Submissions, provided that it is sent to the Center (and served on Complainant) by December 24, 2002. Respondent should ensure that it sends any such Response by email and hardcopy, and that it certifies the Response, as required by Rule 5.
Pursuant to Rule 10(c), the Panel hereby resets the deadline for issuing a decision in this matter until January 7, 2003.
In compliance with Procedural Order No. 1, the Center sent a copy of the Order, along with a copy of the Complaint, Notification of Complaint and Affidavit of Adam E. Kraidin, to Respondent by email and by Swiss Post, registered mail on December 11, 2002. As before, the email notification did not bounce back; in addition, the copy delivered by Swiss Post registered mail was not returned. To date, and despite these additional efforts to provide actual notice to Respondent, Respondent has not submitted any response.
4. Multiple Respondents
Before turning to the merits of this case, the Panel notes that Complainant has improperly named two separate parties as Respondents: Benefits Benefits, the official registrant of the Domain Name, and Jeff Schaengold, the individual listed as the technical and administrative contracts for the Domain Name. Neither the Policy nor the Rules provide for the naming of multiple Respondents. Rather, the Rules are quite explicit that the Respondent in a UDRP proceeding is the registrant of the domain name at issue. Rule 1 ("Respondent means the holder of a domain-name registration against which a complaint is initiated.") There is no provision for naming as additional respondents any third parties, such as administrative contacts or officers of the registrant. AFMA, Inc. v. Globemedia, WIPO Case No. D2001-0558 (August 23, 2001); Plaza Operating Partners, Ltd. v. Pop Data Techs., Inc. and Joseph Pillus, WIPO Case No. D2000-0166 (June 1, 2000).
Here, only Benefits Benefits, the Domain Name registrant, is a proper Respondent. Accordingly, the Panel dismisses Jeff Schaengold as Respondent. This ruling, however, has no practical effect as the only remedies available in a UDRP proceeding are the transfer or cancellation of the domain name registration, both of which are only available against the registrant. Policy 4(i); Rule 3(xiv) (specifying that the Complainant must agree "that its claims and remedies concerning the registration of the domain name . . . shall be solely against the domain name holder").
Although Jeff Schaengold is dismissed as a Respondent in this action, the Panel finds that Schaengold has at all relevant times acted as Benefits Benefits’ agent (if not alter ego) in relation to the Domain Name, such that Schaengold’s actions may be imputed to Benefits Benefits. As discussed in more detail below, it was Jeff Schaengold who registered the Domain Name on behalf of Benefits Benefits. Moreover, the Registrar Verification confirms that Jeff Schaengold and Benefits Benefits share the same email address, postal-mail address and phone number. At the very least, the evidence before the Panel demonstrates that Jeff Schaengold has been acting as Benefits Benefits’ agent; more likely, Benefits Benefits is not a legally cognizable entity, but rather is Jeff Schaengold’s alter ego. Either way, the Panel attributes Schaengold’s activities to Respondent Benefits Benefits for the purposes of this proceeding.
5. Factual Background
Because Respondent has failed to file a response in this case, the Panel accepts as true all statements of fact made by the Complainant in its submissions. Talk City Inc. v. Robertson, WIPO Case No. D2000-0009 (February 24, 2000); EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (April 9, 2000).
The Complainant, a Delaware corporation, was founded in 1994 by Daniel L. Davidson ("Davidson"). The Complainant sells pre-recorded video and audio tapes, test booklets, test preparation materials and workbooks nationwide on the topic of driver education and driver safety; grades and scores driver education and safety tests through mail-in submissions and on-line in real time via its website; and operates ninety-one driving schools in nine states.
In 1998, Davidson assigned Complainant the U.S. trademark registration and goodwill of the mark "TOP DRIVER" for pre-recorded videotapes and audiotapes featuring instruction in the fields of driver training and driver safety. In addition to using the TOP DRIVER mark on videotapes and audiotapes, Complainant offers its other products and services under the TOP DRIVER name, which is featured on Complainant’s products and in its advertising.
Although Complainant changed its name to DriveOne, Inc. on January 31, 2002, and announced a re-branding initiative in April 2002, Complainant continued to use the TOP DRIVER name in connection with its goods and services. In September 2002, Complainant decided to switch back to TOP DRIVER as its primary designator.
On or about October 29, 1995, Davidson registered the Domain Name in the name of a company called Group Seven, of which Davidson was the sole shareholder. On or about February 22, 1996, Davidson changed the registrant of the Domain Name to Complainant. From 1996 through April 2002, Complainant used the Domain Name as the address for the home page of its website. Beginning in April 2002, the Complainant used the Domain Name to redirect Internet traffic to its new site, located at "www.driveone.com".
Jeff Schaengold began working for Complainant on February 5, 2001, as its Executive Vice President – Technology. Schaengold’s responsibilities included maintaining the Company’s website and its content.
On or about February 25, 2001, Schaengold modified the Domain Name registration by substituting himself as the administrative, technical and billing contacts. Schaengold gave only a personal e-mail address as his contact information. In addition, at some point during his employment, Schaengold switched the hosting server for the Company’s website to a different server that he personally controlled.
In or about October 2001, when the Domain Name registration came up for its annual renewal, Schaengold switched the Domain Name’s registrar from VeriSign to Go Daddy, and switched the listed registrant from Top Driver, Inc. to "Benefits Benefits." Nothing is known about "Benefits Benefits" other than the fact that it has the same contact information as Schaengold.
On July 10, 2002, without knowledge of the foregoing, Complainant terminated Schaengold’s employment. Since that day, the Domain Name has been disabled and no longer resolves to Complainant’s website.
6. Parties’ Contentions
Complainant contends that the Domain Name is identical or confusingly similar to Complainant’s TOP DRIVER mark because the Domain Name merely removes the space between "Top" and "Driver" and adds ".com" to the end of the trademark.
Complainant contends that Respondent lacks any rights or legitimate interests in the Domain Name. As an initial matter, Complainant alleges that "Benefits Benefits" is merely a sham entity that cannot be distinguished from Schaengold. Complainant states that Schaengold has no association with the name "Top Driver" other than his short tenure as an employee of the Complainant. According to Complainant, Schaengold substituted himself as the registrant and switched the registrar for the Domain Name without Complainant’s knowledge or permission, an act which constitutes a breach of fiduciary duty and misappropriation of company property.
Complainant alleges that Respondent registered and used the Domain Name in bad faith because Schaengold "stole" the Domain Name from Complainant and is now preventing the Complainant from using it. According to Complainant, the website formerly accessible at "www.topdriver.com" is dead. Complainant contends that Schaengold is not using the Domain Name in connection with any legitimate business purpose, but rather is holding onto the Domain Name for leverage in order to exact a favorable severance package from Complainant. Finally, Complainant alleges that Schaengold has been accused of hijacking domain names in the past.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) 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;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There can be no question but that the Domain Name is identical to Complainant’s TOP DRIVER mark for the purposes of the Policy. The Domain Name incorporates in its entirety the TOP DRIVER 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, WIPO Case No. D2000-0047 (March 24, 2000). The Panel agrees with Complainant that the addition of a gTLD such as ".com" and/or the elimination of spaces are without legal significance in determining identity or similarity. See, e.g., J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035 (March 23, 2000).
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Paragraph 4(c) of the Policy sets forth three nonexclusive circumstances which, if found by the Panel to be proved based on its evaluation of all evidence presented, demonstrate a Respondent’s rights or legitimate interests to the domain name in question:
(i) before any notice to Respondent of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) Respondent 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.
Complainant alleges (a) that Respondent’s only association with the name "Top Driver" was Schaengold’s short tenure as an employee of Complainant, (b) that during this tenure Schaengold substituted Benefits Benefits as the registrant and switched the registrar for the Domain Name without the Complainant’s permission or knowledge, (c) that Respondent is not using the Domain Name in connection with any legitimate business purpose, and (d) that the Domain Name does not resolve to an active website.
Complainant has made a prima facie showing that Respondent has no right or legitimate interest in the Domain Name. Respondent, having submitted no Response, has failed to rebut this showing. Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for a Complainant to show bad faith registration and use of a domain name:
(i) circumstances indicating that Respondent has 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website 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 Respondent’s website or location or of a product or serve on Respondent’s website or location.
Complainant has established that Respondent registered the Domain Name in order to prevent the Complainant from reflecting its trademark in the corresponding domain name, and that Respondent has engaged in a pattern of such conduct, thus meeting the criteria for paragraph 4(b)(ii).
The uncontested evidence demonstrates that Respondent’s intent was to prevent Complainant from reflecting its trademark in the corresponding domain name. Although aware of Complainant’s ownership and use of both the trademark TOP DRIVER and the corresponding domain name, Schaengold surreptitiously and without permission altered the registrant, contact information, registrar and hosting server associated with the Domain Name. The result is that the Complainant no longer has control over the domain name associated with its trademark, and Complainant’s website formerly located at "www.topdriver.com" is no longer accessible. Significantly, there is no evidence before the Panel that Respondent has any association with the TOP DRIVER mark other than Schaengold’s short tenure as Complainant’s employee, or that Respondent has made or intend to make any good faith use of the domain name.
The evidence also suggests that Schaengold has engaged in a pattern of such conduct. In October 1998, Jefferson Smurfit Corporation and Stone Container Corporation filed an action in federal court alleging that Schaengold registered the domain names <smurfitstone.com> and <smurfit-stone.com> through a Hong Kong Internet service provider on Monday, May 11, 1998, just hours after the plaintiffs announced a planned merger and while it was still Sunday, May 10 in the United States. See Jefferson Smurfit Corp. v. iCommerce.com Corp., Case No. 98-1213-CIV-ORL-18A (M.D. Fla. October 30, 1998). In their complaint, plaintiffs alleged that Schaengold had registered over fifty other domain names, including many consisting of well-known trademarks with which Schaengold had no authorized affiliation.
The Panel finds that the above evidence is sufficient to establish bad faith under paragraph 4(b)(ii) of the Policy.
In addition to satisfying paragraph 4(b)(ii), the Panel notes that Complainant likely meets the criteria set forth in paragraph 4(b)(i) of the Policy as well. Although Complainant’s allegations in this regard are thin, the evidence before the Panel does support the conclusion that Respondent acquired the Domain Name primarily for the purpose of transferring the Domain Name registration for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name. First, the evidence demonstrates that, at the time Schaengold surreptitiously switched the registrant of the Domain Name to Benefits Benefits, he had knowledge both of Complainant’s mark and of Complainant’s rights in and use of the Domain Name. Specifically, Schaengold was well aware that (a) Complainant utilized the mark TOP DRIVER, (b) Complainant had registered the domain name <topdriver.com>, and (c) Complainant used this domain name as the address for the homepage of its website. Second, the record is utterly devoid of evidence of any actual or contemplated good faith use of the Domain Name by Respondent. Based on these two factors, it is logical to conclude that Respondent acquired the Domain Name primarily as leverage in order to extract a favorable severance package, a "consulting fee," or some other form of increased compensation from Complainant.
For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name < topdriver.com> be transferred to the Complainant.
David H. Bernstein
Date: January 7, 2003