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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
InnoTown AS v. Mr. Jason Forest
Case No. D2003-0718
1. The Parties
The Complainant is InnoTown AS, Ålesund, Norway, represented by Grette DA, Norway.
The Respondent is Mr. Jason Forest, San Diego, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <innotown.com> is registered with Dotster, Inc. (hereinafter the "Domain Name").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 12, 2003. On September 12, 2003, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the Domain Name. On September 12, 2003, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the current registrant and providing the contact details for the administrative, billing, and technical contact. 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2003.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 14, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
On or about July 2, 1999, the Complainant's founders registered the Domain Name with Network Solutions Inc. for a three year period.
The Complainant company was subsequently founded in Norway on August 16, 1999, and incorporated there on August 31, 1999.
The Complainant organizes and hosts an annual innovation and design festival in Ålesund, Norway, named InnoTown. Since 2000, the festival has been held on an annual basis, with the next festival being due in May 2004. The InnoTown festival attracts participants and speakers both from the creative professions and from industry and the public sector. It also attracts significant commercial sponsorship. Participants, speakers and sponsors are attracted on a worldwide basis. The Complainants have developed the InnoTown name such that it is linked with an image of high quality design and workmanship. In style and approach the festival is unique in Europe.
On February 2, 2001, the Complainant registered the Norwegian country code top level domain name <innotown.no>.
From registration in 1999 to 2002, the Complainant used the Domain Name to host its web site promoting the InnoTown festival. The Domain Name featured on brochures, business cards, third party articles and on Internet search engines.
The Complainant commissioned its Internet Service Provider to renew the Domain Name more than six months before it was due to expire. In July 2002, when the Domain Name was due for renewal, it was inadvertently allowed to be canceled.
The Respondent registered the Domain Name on August 9, 2002.
On August 20, 2002, the Complainant registered the generic top level domain name <innotown.org>.
On August 29, 2002, the Complainant filed a trademark application with the appropriate Norwegian registrar for the mark "INNOTOWN". The mark was duly registered on March 6, 2003, in class 41 for the following services: "Education; teaching; entertainment; athletic and cultural activities; hosting and directing practical seminars; hosting and directing conferences".
The Respondent uses the Domain Name to host a web site featuring pornographic material. The home page title is "Mature Sex from INNOTOWN". The page carries an advertisement for a pornographic web site named "olderladies.com". The advertisement contains explicit images. Advertisements/hyperlinks are also carried for other web sites described as "mature sex Galleries" with names such as "Max Hardcore".
5. Parties’ Contentions
The Complainant asserts that the relevant part of the Domain Name ("innotown") is identical to the Complainant's trade name and registered trademark. The Complainant has had a right of use in the "INNOTOWN" mark since 1999.
The Complainant submits that the "INNOTOWN" mark is unique as a fantasy word which accurately describes the Complainant's business - an innovation festival held in the distinctive town of Ålesund. It is not similar to any word in English or any other language. The mark is therefore strong and entitled to a high degree of legal protection.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. There is no information anywhere on the web site providing a legitimate explanation of the Respondent's choice of name. There is no logical connection between the name and the services promoted and no explanation on the web site of any such connection having been made by the Respondent. There is no indication of the Respondent having made any use of the name InnoTown prior to his registration of the Domain Name and no information indicating that he has been commonly known by such name in the past. Based on these contentions, the Complainant also submits that the Respondent's current use of the Domain Name cannot be labeled as a bona fide offering of goods or services.
The Complainant contends that the Respondent's use of the Domain Name constitutes use in bad faith. The Complainant asserts that the Respondent registered the Domain Name to divert web traffic intended for the Complainant's web site (resulting from the Complainant's past promotional activities) to the Respondent's site and the pornographic sites promoted there. The Complainant submits that the Respondent is being paid for each person forwarded from the Respondent’s web site to one of the pornographic web sites promoted on the Respondent’s site.
The Complainant asserts that the contact details provided by the Respondent in the WHOIS details are likely to be false. The Complainant states that it has on numerous occasions attempted to contact the Respondent, by e-mail (some of which have been returned and others not), postal mail and by telephone, via the contact information found in the registrar's WHOIS database. All these attempts have been unsuccessful.
The Complainant also provided a copy of a letter which was returned from the Respondent's postal address by way of supporting evidence. The letter was marked "Return to Sender" and "DOSE [sic] NOT LIVE HERE".
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
Paragraph 4(b) of the Policy provides four illustrative circumstances without limitation, which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances without limitation, each of which, if proved, shall demonstrate the Respondent's rights or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) above.
As the Respondent has not submitted a Response, the Panel will decide the case on the basis of the evidence submitted by the Complainant in accordance with paragraph 5(e) of the Rules, there being no exceptional circumstances.
A. Identical or Confusingly Similar
The Complainant presently has a trademark for the word "innotown" by virtue of the Norwegian registration filed on August 29, 2002, and granted on March 6, 2003. It is clear that this mark is identical to the Domain Name, disregarding the top level domain ".com" as being wholly generic. However, as at August 9, 2002, the date of registration of the Domain Name by the Respondent, the Complainant had not filed for this mark.
Consequently, it is necessary to look at the rights which the Complainant had prior to the registration of the Domain Name. Initially, in 1999, the Complainant had rights in a trade name. This would not be sufficient of itself to claim a remedy under the Policy, which requires that the Complainant have rights in a trademark or service mark. However, as the Complainant could possibly have rights in a common law trademark based upon actual use of the name it is necessary to consider the Complainant's use from 1999 to 2002.
From 1999, the Complainant asserts that it built up goodwill in the name "innotown" through the marketing and promotion of the InnoTown Festival. The first such festival took place in 2000, and by the date of the Respondent's registration of the Domain Name at least the 2000, 2001 and possibly also the 2002 InnoTown Festival will have taken place - some three years of trading and international promotion. The Complainant also contends that it used the Domain Name itself, somewhat ironically, to build up goodwill by hosting a web site which promoted the festival to its international audience of prospective speakers, delegates and sponsors. The international goodwill and reputation so generated appears to be sufficient to constitute a common law trademark in the "innotown" name, in the view of the Panel.
In the circumstances, and in the absence of any contradiction by the Respondent, the Panel holds that the Complainant presently has rights in a trademark which is identical to the Domain Name. On balance, the Panel also holds that at the time of registration of the Domain Name by the Respondent, the Complainant had rights in a common law trademark which is identical to the Domain Name.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name based on the Complainant’s prior use of the "INNOTOWN" mark and was never authorized to use Complainant’s mark. Thereafter, in the absence of any contact from the Respondent, the Complainant can only point to the lack of any logical connection between the name "innotown" and the content of the web site presently hosting the Domain Name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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."
As far as sub-paragraph (i) is concerned, a number of panels under the Policy
have held that redirection of a domain name to a pornographic web site does
not constitute a bona fide offering of goods or services. See, for example,
Women in Military Service for America Memorial Foundation, Inc. v. Russian
Web Marketing, WIPO Case No. D2001-0610
and the cases therein cited. Such cases may collectively be described as those
"where the Respondent's purported use seems rather dubious" (Schauman Wood
Oy v. Schaumanwood.com Meta Search, WIPO
Case No. D2001-1145). Indeed, this form of "registration upon cancellation"
followed by the posting of apparently unrelated and explicit content seems from
the cases to constitute the common features of a widely experienced dubious
practice on the part of a group of respondents.
Here, the Respondent's use seems similarly dubious. There is no immediate or apparent connection between the name selected by the Respondent and its web site offering links to various pornographic web sites and explicit content. In the circumstances, and in the absence of any credible alternative which might have been provided by the Respondent, the Panel takes the view that the Domain Name was registered to secure its residual traffic for the purpose of bringing such traffic into the Respondent's explicit site. This is not use in connection with a bona fide offering of goods and services. Equally, it is exactly the kind of misleading diversion which would prevent the Respondent from relying upon paragraph 4(c)(iii) of the Policy.
Furthermore, there is no indication that the Respondent has been commonly known by the Domain Name in terms of paragraph 4(c)(ii). By contrast, his registration and use of the Domain Name appears to be entirely opportunistic. The name "innotown" is a fanciful, "made up" or coined term and it is highly improbable in the Panel's view that the Respondent might have adopted this name for his site entirely without reference to its previous use by the Complainant.
It has been said by previous panels that the burden upon the Complainant of proving that there are no rights or legitimate interests on the part of the Respondent is necessarily light, requiring as it does the proof of a negative; furthermore in many cases there is little or no information about the activities of the Respondent other than perhaps the WHOIS record and the content of a web site associated with the disputed domain name. The Panel considers that in all of the present circumstances the Complainant has discharged this burden of proof and that, on balance, the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Once again, in the absence of any Response from the Respondent, the Panel is left with the submissions of the Complainant on this point.
The Complainant asserts that the Respondent has registered and used the Domain Name to divert web traffic intended for the Complainant's web site (resulting from the Complainant's past promotional activities) to the Respondent's site and that the Respondent is making money from this. That is effectively a submission within the terms of paragraph 4(b)(iv) of the Policy, being a non-exhaustive factor evidencing registration and use of a domain name in bad faith.
The Complainant also notes the existence of false contact details on the Domain Name's WHOIS entry and provides credible evidence of this by way of the returned envelope from the Respondent's stated address. Both of the Center's postal communications with the Respondent were also returned (there were two such communications because the Respondent had provided a different zip code for his address under the legal registrant and administrative contact details).
Once again, the Panel notes that the word "innotown" is a "made up" term and that there is no plausible reason disclosed by the evidence before it as to why this was adopted by the Respondent, other than to attract Internet traffic generated by the Complainant's goodwill, for subsequent redirection to explicit pornographic material. The date of registration suggests that the Respondent acquired a recently lapsed domain name which had substantial traffic associated with it in order to divert people to pornographic material. The Respondent's intent appears to be to leverage the goodwill previously associated with the Domain Name and belonging to the Complainant for his own commercial purposes. Failure of the Respondent to provide accurate contact details or to respond in any way to the Complainant's communications or to this Complaint further fortifies that conclusion.
Of course, it is not unknown for two independent parties to hit upon a "made
up" name for their business at the same time without knowledge of the other
but, in the Panel's view, this is a far less probable explanation in the present
circumstances than that contended for by the Complainant, by a significant margin.
In particular, it is important that there is no such corresponding submission
from the Respondent (see, by contrast, Kay Smyth and Galway Walking Club
v. Yuen Wei, WIPO Case No. D2003-0100).
In these circumstances, the Panel determines that the Respondent has registered and is using the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <innotown.com>, be transferred to the Complainant.
Andrew D. S. Lothian
Dated: October 27, 2003