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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Do The Hustle, LLC v. Donald Wilson
Case No. D2000-0627
1. The Parties
1.1 The Complainant is Do The Hustle, LLC, a Limited Liability Company having its principal place of business at 352 Seventh Avenue, 17th Floor, New York, New York, United States of America.
1.2 The Respondent is Donald Wilson, an individual giving an address at 435 Radcliffe Street, Apartment 6, Bristol, Pennsylvania, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <polyesthers.com>, which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 22, 2000, and the signed original together with four copies was received on June 19, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated June 21, 2000.
3.2 On June 21, 2000, a Request for Registrar Verification was transmitted to the registrar, 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 June 25, 2000, NSI confirmed by reply e-mail that the domain name <polyesthers.com> is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 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 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.
3.5 No formal deficiencies having been recorded, on June 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of July 16, 2000, 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 NSI’s confirmation. 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." In any event the Respondent sent the WIPO Center an email dated July 31, 2000, indicating he had received the communications.
3.6 On July 18, 2000, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.7 On July 28, 2000, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.
4. Factual Background
4.1 Complainant registered the service mark "POLLY ESTHER'S" in connection with bars and restaurants and the trademark "POLLY ESTHERS" in connection with T-shirts and baseball caps with the United States Patent Office ("USPTO"). The first use of the service mark was shown as October, 1991. The first registration date was November 17, 1992.
4.2 Complainant has used the mark in connection with 1970's theme bars and dance clubs in various cities in the United States and Canada.
4.3 Complainant has registered the domain name <pollyesthers.com> that resolves to a web site, which promotes and markets Complainant's services and merchandise.
4.4 On November 8, 1999, Respondent registered the domain name <polyesthers.com>.
4.5 To date, Respondent has not used the domain name to develop a web site. The domain name currently resolves to a web site that is "under construction." 1
4.6 Complainant has sent Respondent a letter requesting transfer of the domain name at issue. Respondent did not respond to the request.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain name a mark which is confusingly similar to the service mark and 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 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 <polyesthers.com> is confusingly similar to the service mark and trademark in which the Complainant has rights, as it differs by only one letter and is phonetically identical. V Secret Catalogue, Inc. v. ARTCO, Inc. ICANN Case No. FA 0006000094342; Gateway, Inc. v. Pixelera.com, Inc.
6.5 Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-007; Bronson Plc v. Unimetal Sanayai 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. 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; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. 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 domain name contains the same spelling of a woman's name, in this case "esther, " as is contained in the mark, that one who is attempting to find the Complainant by use of its "punning" name is likely to be confused, (2) Respondent did not respond to emails from Complainant and did not claim Complainant's "cease and desist" letter which was sent via certified mail, return receipt requested to the address given in the Whois details; and (3) 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.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is confusingly similar to the service mark and 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 <polyesthers.com> be transferred to the Complainant.
M. Scott Donahey
Dated: August 18, 2000
1. The panel visited the web site noted. Such references to publicly available information have been sanctioned by prior panel decisions. See Chernow Communications, Inc. v. Jonathan D. Kimball, ICANN Case No. D2000-0119; America Networks Inc. v. Tariq Masood and Solo Signs, ICANN Case No. D1000-0131.