Foxx Wolf v. DomainForSale Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Foxx Wolf v. DomainForSale Inc

Case No. D2002-0120

1. The Parties

The Complainant is Foxx Wolf,

United Kingdom.

Complainant is not represented by Counsel.

The Respondent is DomainForSale Inc,

United States of America.

The Respondent is represented by Zak Muscovitch, Barrister & Solicitor,

Neinstein & Associates, 1200 Bay Street, Suite 700, Toronto, Ontario,

Canada M5R 2A5.

2. The Domain Name and Registrar

The domain name with which this dispute is concerned is: <dogsounds.com>.

The Registrar with which the domain name is currently registered is eNom Inc,

16771 NE 80th Street, Suite #100, Redmond, WA 98052, United

States of America.

3. Procedural History

3.1The Complaint was filed on February 5, 2002, electronically and

on February 12, 2002, in hard copy to the World Intellectual Property

Organization Arbitration and Mediation Center (the "WIPO Center").

As filed the Complaint named Respondent as John Wichmann, DomainForSale Inc.

3.2On February 12, 2002, the Registrar verified:

(i)that the domain name is registered with it;

(ii)that the current registrant of the domain name is DomainForSale Inc.

(iii)that the Policy applies to the registration of the domain name;

(iv)that the domain name is currently in "lock" status;

(v)that the language of the registration agreement is English;

(vi)Respondent is the Administrative, Technical and Billing Contact for the

domain name.

3.3On February 12, 2002, all formal requirements for the establishment

of the Complaint having been checked by the WIPO Center, the Complaint was found

to be in compliance with the applicable ICANN Policy, ICANN Rules ("the

Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"),

and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.

The Panel has checked the file and confirms the WIPO Center's finding of proper

compliance with the Rules and establishment of the Complaint.

3.4On February 12, 2002, the WIPO Center sent Notification of Complaint

and Commencement of Administrative Proceeding as follows:

(i)by courier and by e-mail to Respondent and to Respondent's Representative.

(ii)by e-mail to the postmaster at the domain name;

3.5The e-mail delivery to Respondent and the e-mail and courier deliveries

to Respondent's Representative appear to have been effected. The Panel is satisfied

the responsibility on the Center imposed by Rule 2(a) of the Rules has been

met and that Respondent received due notice of the Complaint.

3.6The Administrative Proceeding commenced on February 12, 2002,

and the Response was due on March 4, 2002.

3.7A Response was filed on March 4, 2002.

3.8Panelist Desmond J. Ryan, having filed a Statement of Acceptance and Declaration

of Impartiality and Independence, the Panel was appointed on March 13, 2002.

4. Further Submissions

4.1For the reasons set out in the Procedural Order annexed to this decision,

the Panel on March 24, 2002, sought from Complainant further information

relating to his trade mark rights and the circumstances surrounding Respondent's

offer of January 22, 2002. In response to a request by Respondent

the Panel further ordered on March 27, 2002 (the Second Procedural

Order), that the parties respectively amend the Complaint and the Response to

delete the reference to John Wichmann as a Respondent and sought from Respondent

an explanation of the relationship between it and Mr. Wichmann.

4.2Complainant's further information and Respondent's reply were timely filed

and the Panel now proceeds to its decision in accordance with the Policy and

the Rules and applicable principles of law on the basis of the public record,

the Complaint and the Response and the further information and reply.

5. Factual Background

5.1Complainant is an entertainer who claims to be known as "dogsounds"

and to have used the names "dogsounds" and <dogsounds.com> as

a service mark since 1998. He has been registered as an artist under that

name on <mp3.com> since June 1999, and that name is also registered as

a band name with the Band Register. In February 2000, a private limited company

was incorporated, presumably by Complainant, under the name Dogsounds Ltd. (Complaint

Annex D). Complainant's music is posted at "mp3.com" web-site.

In the period April 2001, to December 2001, the site logged over 90,000

plays of "dogsounds" music (Complaint Annex G). The site "hitbox.com",

apparently a hit monitor site, evidences approximately 40,000 unique hits to

the "dogdounds.com" site over the years 2000, 2001 (Complaint Annex

G). The "dogsounds" name is also promoted and used in conjunction

with other artwork, in relation to merchandise offered on-line through the "cafepress.com"

web-site (Complaint Annex G).

5.2Complainant registered the domain name with Registrar uk2.net in December 1999,

and was the owner of the domain name until it became due for renewal in December

2001. Complainant renewed the domain name on or about December 14, 2001,

and the Registrar showed the domain name to be registered and paid up until

December 15, 2002 (Complaint Annex C).

5.3It appears that for reasons which are unexplained, the renewal of the registration

failed to take effect, and the domain name lapsed and was registered by John Wichmann

on January 18, 2002. Complainant appears to have become aware of this

at some time prior to 5.10 pm on Sunday January 20, 2002.

5.4Between January 20, 2002, and January 29, 2002, the

following chain of e-mail correspondence took place between Complainant and

John Wichmann.

-At 5.10 pm GMT on Sunday January 20, 2002, Complainant sent an e-mail

to John Wichmann advising him of his claim to ownership of the domain name

and requesting his cooperation in the re-transfer of the domain name. In that

e-mail Respondent stated that he noted that Mr. Wichmnann was listed as the

owner of the domain name and also asked him to "remove the divert from

<www.dogdomains.com> immediately", (Complaint further e-mail

1).

-At 3.15 pm US, EST (8.15 pm GMT) Mr. Wichmann replied:

"As you probably know it is important to renew your registration in

a timely fashion, otherwise it will expire. No doubt this is the case here.

Sorry!"

-At 10.43 pm GMT on January 22, 2002, Complainant replied informing

Mr. Wichmann that he had renewed in time and asking if the domain name

was for sale and at what price (Complaint further e-mail 3).

-Mr. Wichmann replied at 7.02 pm EST (12.20 am GMT) that he would sell the

domain name for U.S. $2,500 with payment to be made to him. (Complaint further

e-mail 4).

-Mr. Wichmann sent a further e-mail to Complainant on January 29, 2002,

stating that: "My offer of $2,500 still stands", (Complaint

e-mail 2).

5.5On Monday January 21, 2002, Complainant received an e-mail from

an associate advising him that his domain name now pointed to an anti-abortion

web-site and asking "Have you drastically altered your mission in life",

(Complaint further e-mail 5).

5.6On January 30, 2002, Registrar's "who-is" showed the registrant

of the domain name to be Respondent and that the register had been up-dated

at 2.31 pm EST on January 28, (Complaint Annex A).

5.7On March 4, 2002, Respondent registered the domain names <dogsounds.net>

and <dogsounds.org>.

5.8Respondent operates a portal site offering inter alia, domain name

registration and hosting services, and the buying and selling of domain names,

including names relating to dogs.

5.9The domain name currently points to an anti-abortion site at "www.abortionismurder.org."

At that site there are anti-abortion messages with graphic illustrations of

aborted foetuses, (Complaint Annex E).

5.10Each of the domain names <dogsounds.net> and <dogsounds.org>

currently points to the same "abortionismurder" web-site.

5.11John Wichmann is the principal of Respondent (Supplementary Response paragraph 2.).

6. Applicable Dispute

6.1This dispute is one to which the Policy applies. By registering the domain

name, Respondent accepts the dispute resolution policy adopted by the Registrar.

The Registrar's current policy set out in its domain name registration agreement

is the Policy.

6.2To succeed in its Complaint, Complainant must show that each of the conditions

of paragraph 4(a) of the Policy are satisfied, namely 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 the domain name;

and

(iii)the domain name has been registered and is being used in bad faith.

7. The Parties' Contentions

A. Complainant

7.1Complainant's contentions may be summarised as follows:

(i)By virtue of his use of the name since 1998, he has established trademark

rights in the word "dogsounds" and the domain name is identical or

confusingly similar to his trademark. <mp3.com> is the world's largest

portal for independent musicians and the substantial number of plays recorded

for "dogsounds" music through that site and through Complainant's

own web-site, indicates that a large number of people are aware of "dogsounds"

as an entity. The fact that the name can be broken into the two separate words

"dog" and "sounds" does not affect the distinctiveness of

the word as a common law trade mark.

(ii)Respondent has no legitimate right or interest in the domain name. Respondent

does not have any previous use of the name. Respondent is a trader in domain

names and has bought the domain name solely to sell it back to Complainant at

a profit.

(iii)Respondent has registered and is using the domain name in bad faith. Respondent

registered the domain name in order to sell it back to Complainant at a profit

and is now pointing the domain name to content which is highly undesirable to

Complainant's customers and damaging to the image of his trademark. People looking

for products by, or information about, Complainant or following links on archives,

bookmarks, directories and search engines, will now be directed to the anti-abortion

site and will be caused to think that Complainant is affiliated with the site

and content. Such use will cause confusion and possibly loss of existing customer

and fan base.

B. Respondent

7.2Respondent's contentions may be summarised as follows:

(i)The registrant of the domain name is DomainForSale Inc and not "John Wichmann,

DomainForSale Inc". The proper party is DomainForSale Inc, and John Wichmann's

name should be deleted. This objection has been met by amendment in response

to the Procedural Order.

(ii)The Complainant's proper name is not Foxx Wolf, but Mike Halleron, and

he is only one of two persons which make up the musical group Dogsounds. Accordingly,

Complainant does not have standing to bring the Complaint alone.

(iii)The Complainant has no registered trademark or common law trademark rights.

To establish rights in a common law trademark, Complainant must demonstrate

widespread use as well as a distinctive mark. Respondent asserts that acquisition

of a common law trademark status requires "the prodigious use of a mark

over years, ultimately resulting in a major reputation" Respondent

cites in support inter alia the decision in British Heat Foundation

v. Hal Meyer eRes. 0957, "Complainant must prove that it has a right

in the unregistered mark such as would enable it to bring a legal action against

a third party using the mark without its consent". The domain name

consists of the two generic descriptive words "dog" and "sounds",

joined together, and such conjunction is inevitable in a domain name since domain

names may not include spaces.

(iv)Respondent is in the legitimate business of registering generic domain

names for sale to purchasers, and has registered numerous domain names relating

to the subject of dogs, (Response Exhibit A).

(v)There are many existing web-sites which relate to dog sounds.

(vi)Common words and descriptive terms are legitimately subject to registration

as domain names on a "first come first served" basis and the

domain name should not be transferred "even if the domain name was registered

as one of a list of generic names in the hope of being able to sell it"

– VZ Vermogens Zentrum AG.v. Anything.com, WIPO

Case D2000-0527. Due regard must also be had to the field in which trademark

rights are established, and establishment of a trademark right in relation to

particular goods or services does not have the effect of granting a global monopoly.

(vii)Prior to notice of the dispute, Respondent had no knowledge of Complainant,

nor of any claim Complainant may have to trademark rights. For bad faith to

be shown, Respondent must have been aware of the Complainant prior to registration.

(viii)Respondent did not attempt to sell the domain name to Complainant, but

merely responded to Complainant's solicitation and quoted a price of $2,500.

Such action is not demonstrative of bad faith.

(ix)Complainant appears to base his claim to the domain name on the fact that

he had once registered it and the registration had inadvertently lapsed. Those

facts provide no basis for denial of Respondent's legitimate rights or interest,

and no evidence of registration and use in bad faith. Respondent cites in support

Pacific Place Holdings Limited v. Richard Greenwood, WIPO

Case D2000-0089 and Corbis Corporation v. Zest, FAO 1070000 98441,

"In ordinary cases, the existence of a prior registration that has lapsed

is entirely irrelevant to the questions of legitimate interest and bad faith.

This is so, even if the subject registrant was aware that the domain name

had previously been registered to another party, and even if the subsequent

registration occurred very soon after the domain name was returned to the pool

of available names".

8. Discussion and Findings

Identical or Confusingly Similar Trademark

8.1The Panel finds that the word "dogsounds" is a trademark in which

Complainant has rights. Respondent's objection that Complainant is operating

under an assumed name and that his rights, if any, are shared with another party

are not sustainable objections. The Policy requires merely that the trademark

be one in which Complainant has rights. Such rights need not belong solely to

Complainant. Rights in a trademark can arise in a number of ways. For example,

through sole ownership, joint ownership, licence, security interest or other

legal or equitable claim to right. Equally, a right holder may hold that right

in its own name or in some other capacity such as a business name. It is common

for performing artists to adopt pseudonyms. (In subsequent correspondence Complainant

asserts that he changed his name by deed poll, but nothing turns on that in

this case).

Complainant has demonstrated that, whilst not world famous, he has a substantial

following under the "Dogsounds" mark. In relation to the goods and

services which Complainant offers under that mark, the mark is not descriptive

or generic, and is therefore one in which common law rights may readily be established.

It is not true, at least in English law, that, as Respondent contends, the establishment

of such rights requires "prodigious use of a mark over years, ultimately

resulting in a major reputation".

The Panel is therefore satisfied on the evidence adduced by Complainant that

he has established rights in the trademark "Dogsounds". The domain

name, save for the addition of the domain denominator is identical to Complainant's

trademark.

Legitimate Right or Interests

8.2Respondent bases its claim to legitimate right or interest on the fact that

it is a domain name service provider which registers generic domain names for

sale to interested parties. Respondent does not, nor could it on the evidence,

base its claims to such right or interest on any of the circumstances enumerated

in paragraph 4(c) of the Policy. Those circumstances are, however, by way of

example only and it has been recognised by many previous Panel decisions that

domain name warehousing of generic names constitutes a legitimate business activity,

provided there are no countervailing circumstances indicative of bad faith in

such activity. For reasons set out below, the Panel finds that there are such

countervailing circumstances in the present case. Respondent has not otherwise

demonstrated a legitimate right or interest in the domain name and has not therefore

rebutted Complainant's prima facie showing.

Bad Faith Use and Registration

8.3The Panel accepts Respondent's submission and the finding of the learned

Panel in Corbis Corporation v. Zest supra, that in ordinary circumstances

the existence of a prior registration that has lapsed is entirely irrelevant

to the question of legitimate interest and bad faith. It accepts also that in

such cases and absence other circumstances, registration should be available

on a "first come, first served" basis, but this is not an ordinary

case.

Respondent correctly draws a distinction between itself and its principal John Wichmann.

Complainant asserts, and Respondent does not deny, that at the date of Complainant's

first demand for return of the domain name – January 20, 2002 – the

domain name was registered to John Wichmann. Complainant also asserts, and Respondent

does not deny, that at that time the domain name pointed to the "dogdomains"

web-site. The evidence further shows that by the following day, the domain name

had been redirected to the "abortionismurder" web-site. The record

further shows that at some time between that date and January 30, 2002,

the registration of the domain name was transferred from John Wichmann to Respondent.

The most likely date for this is on, or shortly before, January 28, 2002,

the date on which the Register was updated. It follows therefore that the registration

of the domain name to the Respondent occurred after Respondent, through its

principal, John Wichmann, had notice of Complainant's claim to the domain name.

It is also apparent that after that notice was given, the domain name was redirected

to the "abortionismurder" web-site. Respondent's assertion that it

was not aware of Complainant at the time of registration by it cannot be accepted.

Respondent claims that it directed the domain name to the anti-abortion web-site

because Respondent is "a bona fide pro-life political activist".

Respondent is the owner of many domain names. There is no evidence, nor can

the Panel discover that any of those domain names have been directed to an anti-abortion

site. On the other hand, the evidence shows that subsequent to Complainant's

e-mail of January 20, 2002, the domain name was pointed to the <abortionismurder>

site, and also that following Respondent's registration of the domain name in

the ".org" and ".net" domains, those domain names were also

pointed to the same site. The Panel concludes on the balance of probability,

that Respondent did not direct the domain name and the subsequent ".net"

and ".org" domain names to the anti-abortion site out of genuine belief

in, and support for, the operations of the anti-abortion site, but rather as

a means of exerting pressure on Complainant to re-purchase the domain name.

8.4Complainant produces evidence of actual confusion created by Respondent's

use of the domain name, (Complaint further e-mail 5), and the Panel accepts

Complainant's contention that the direction of its previously owned domain name

to that site would inevitably cause confusion to persons who knew of the domain

name, or accessed it through links or bookmarks or the like. Such confusion

and the association thereby created between Complainant and the anti-abortion

site is clearly damaging to Complainant and his business.

8.5Just as the provisions of paragraph 4(c) of the Policy are not exhaustive

of the circumstances which may constitute evidence of legitimate right or interest,

so too are the circumstances enumerated in paragraph 4(b) of the Policy not

exhaustive of the categories of bad faith. The Panel finds that in taking a

transfer of the domain name, after notice of Complainant's claim to right and

directing the domain name, and its subsequent registration of the domain name

in the ".net" and ".org" domains to a highly contentious,

and to many disturbing, web-site, constitutes use and registration of a domain

name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. The

Panel further concludes, though this is not necessary for its decision, that

such actions were taken by Respondent, with the intention of exerting pressure

on Complainant in negotiations for the sale to him of the domain name. The Panel

therefore finds that the domain name was registered and is being used in bad

faith.

9.Decision and Order

9.1The Panel decides and orders that:

(i)The domain name is confusingly similar to a trademark in which Complainant

has rights;

(ii)Respondent has no rights or legitimate interests in the domain name;

(iii)The domain name was registered and is being used in bad faith; and

(iv)The domain name shall be transferred to Complainant.

D.J. Ryan

Sole Panelist

Dated: April 22, 2002

ADMINISTRATIVE PANEL PROCEDURAL ORDER NO. 1

1.The Panel has considered the file in this case. Rule 10 of the Rules for

the Uniform Domain Name Dispute Resolution Policy sets out the general powers

of the Panel. Rule 10(b), requires the Panel to ensure that the parties are

treated with equality and that each party is given a fair opportunity to present

its case. Rule 10(c) requires that the Panel ensure that the proceeding takes

place with due expedition, but provides that it may either at the request of

a party, or on its own motion, extend the time fixed by the Rules. Rule 12 provides

that in addition to the Complaint and the Response, the Panel may request, in

its sole discretion, further statements or documents from either parties. Prior

Panel decisions indicate that such further statements or documents should be

admitted only in exceptional cases (see for example Rapido TV v. Jan Duffy-King

– WIPO Case D2000-0449).

2.The Panel considers this to be an exceptional case. Complaint appears to

have been deprived of his domain name in most unusual circumstances, and the

use now being made by the domain name by Respondent is clearly highly damaging

to Complainant. Complainant is not represented in these proceedings, and has

based his claim to trademark rights on mere assertion as to his use and reputation

in the domain name as the name of his band. Respondent contests this assertion

as being insufficient to establish that Complainant has trademark rights.

3.Complainant being unrepresented, may not have anticipated such a response.

In the circumstances therefore the Panel proposes to extend to Complainant,

the opportunity to provide further evidence that he has established rights in

the trademark.

4.In addition to the above, neither Complainant or Respondent have provided

information as to the circumstances leading to the offer made by Respondent

to sell the domain name to Complainant for U.S. $2,500.

5.The Panel therefore suspends the proceeding and grants the Complainant a

period of seven (7) days, commencing on Monday April, 1, 2002, to

file further evidence and submissions as to:

(i)the extent to which Complainant has used, and established a reputation in,

the name "dogsounds" as a trademark.

(ii)the circumstances leading up to the offer by Respondent of the January 22, 2002.

6.All material, if any, filed by Complainant pursuant to the leave hereby granted

shall be forwarded to WIPO Center and copied to Respondent.

7.Respondent shall have a period of seven (7) days, commencing on the date

of receipt of copies of the further material, if any, filed by Complainant.

All such material, if any, shall be filed with WIPO Center and copies shall

be served upon Complainant.

D. J. Ryan

Sole Panelist

Dated: March 26, 2002