WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The State of Tennessee, USA v. (DOMAIN NAME 4 SALE) DOMAIN-NAME-4-SALE eMAIL baricci@attglobal.net

Case No. D2008-0640

1. The Parties

1.1 The Complainant is The State of Tennessee, USA, acting through its Department of Finance and Administration, in Nashville, the United States of America (“USA”), represented by Martin J. Vanek, Assistant General Counsel to the Complainant.

1.2 The Respondent is (DOMAIN-NAME-4-SALE) DOMAIN-NAME-FOR-SALE eMAIL-baricci@attglobal.net, of Taipei, Taiwan, Province of China (“Taiwan”).

2. The Domain Name and Registrar

2.1 The disputed domain name <coverkids.com> (the “Domain Name”) is registered with eNom (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2008. On April 24, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 24, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 28, 2008. The Center verified that the Complaint together with the amendment to 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”).

3.2 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 May 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2008.

3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 28, 2008. 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

4.1 The Complainant is The State of Tennessee, USA.

4.2 The Complainant has created a health insurance program known as “Cover Tennessee” which provides health insurance coverage for its citizens who do not receive health insurance from their employers and do not qualify for other low income individual healthcare coverage. As part of the Cover Tennessee Program, the Complainant provides children 18 years old and younger with health coverage and pregnant women with maternity coverage under the healthcare program known as “Coverkids”. Since its inception in 2006, Coverkids has provided healthcare coverage to over 21,000 children and pregnant women.

4.3 On August 24, 2006, the Complainant obtained a registered Tennessee State trademark for the name COVERKIDS. The trademark covers insurance and community services and is used on materials promoting the Complainant’s “Coverkids” program in Tennessee.

4.4 The status and nature of the Respondent is unknown. Although it uses the name “DOMAIN-NAME-4-SALE” it is highly unlikely that this is actually the name of any business. Two addresses are given for the Respondent, i.e. “11f, no2, sec 4, chung hsiao e rd, Taipei, Taiwan” and “no3, allwy 9 lane 216 tung shih street, his chih city, Taiwan”, and it has a telephone number with a Taiwan code prefix.

4.5 The Disputed Domain was registered on July 2, 2003.

4.6 By late March 2008 the web page operating from the Domain Name made it clear that the Domain Name was for sale by the Respondent for a minimum bid of US$5,000. In April 2008, the Complainant contacted the Respondent enquiring about the purchase of the Domain Name. This elicited an email on April 10, 2008 from one “Barry” in which he stated that he was “not so interested in selling the name, but am open to suggestion or offer”. The following day the Complainant made an offer for the Domain Name of US$500. The Complainant did not receive any response to this offer.

4.7 Shortly afterwards, the “www.coverkids.com” website was changed to a solicitation to lease the domain name instead of selling it. As at the date of this decision, the Domain Name directs the internet user to a web site headed ‘Domains for Lease - Changing the World … one domain at a time’. The website offers to sell or lease the visitor to the site ‘many high profile Domain Names you can use to direct more traffic to your own Website, including this one.’ At the link headed ‘About Us’, the website owner describes themselves as ‘lokisword.com’, and from other content on the site it would appear to be a business operating out of Hong Kong, SAR of China.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

5.1 The Complainant states that “Coverkids.com is identical to the Complainant’s trademark Coverkids”.

Rights or Legitimate Interests

5.2 The Complainant’s assertions in this respect are concise and to the point and are therefore repeated verbatim below:

“The Respondent has no rights or legitimate interest in Coverkids.com. There is no evidence Respondent has used or prepared to use the Coverkids.com domain name for any bona fide offering of goods or services. The evidence shows that the Respondent’s only use of the domain name is to facilitate its sale or lease.

The word ‘Coverkids’ is not used as part of Respondent’s business name. The Respondent’s business name given to the Registrar is Domain-Name-4-Sale. The business name listed in the administrative, technical and billing contacts given to the registrar is JN International.

There is no evidence that the Respondent is making a legitimate non-commercial use or fair use of Coverkids.com.”

Registered and Used in Bad Faith

5.3 The Complainant provides evidence to show that the Respondent holds approximately fifty domain names, including the Domain Name, all of which are for sale or lease by the Respondent. The Complainant believes that it is clear from the Respondent’s actions that the Domain Name was acquired by the Respondent primarily for the purpose of selling, leasing or otherwise transferring the Domain Name registration to a person having a legitimate interest in owning and using it.

B. Respondent

5.4 The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. In the light of this material, the Panel finds as set out below.

6.2 The Panel does not find that there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.

6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.4 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

Identical or Confusingly Similar

6.5 The Complainant relies on its Tennessee State trademark for the name COVERKIDS, however the trademark in question post dates the registration of the Disputed Domain. As paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions records, the consensus view on this issue is as follows:

“Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However, it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trade mark in mind”.

6.6 Therefore, the Panel holds that the Complainant has established its case with regard to paragraph 4(a)(i) of the Policy.

Legitimate Interests and Bad Faith

6.7 It is convenient to consider the questions of bad faith and legitimate interests together.

6.8 The Respondent appears to have registered the Domain Name solely in order to sell it or lease it on to a third party who has an interest in using the domain. This has led to a situation where it appears that the Complainant must pay a considerable premium if it wishes to adopt the Domain Name. Further, when the Respondent became aware of the Complainant’s interest, it appears to have made the position of the Complainant even more onerous by offering a lease rather than an outright sale.

6.9 Nevertheless, none of this assists the Complainant in this particular case. For the Complaint to succeed, the Panel must be satisfied that the Disputed Domain was both registered and is being used in bad faith by the Respondent (paragraph 4(a)(iii) of the Policy).

6.10 The Respondent registered the Disputed Domain on July 2, 2003. There is no evidence before the Panel that the Respondent was aware of the Complainant relevant activities at the time the registration took place. The Complainant’s activities under this name do not appear to have commenced until 2006. This would not necessarily have been fatal to the Complainant’s case had it been able to show that at the time of registration of the Domain Name, it was well known that the State of Tennessee intended to adopt the “Coverkids” name, or that the Respondent has (or perhaps should reasonably have been) aware of such intention on the part of the Complainant. If that were so, and the Complainant was able to persuade the Panel that the Domain Name was most likely registered by the Respondent with the State’s intended use in mind, then it might still have been possible to come to a finding of bad faith registration. See e.g. ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669. However, this was not contended by the Complainant and there is simply no evidence before the Panel to support any such conclusion. In the circumstances, the Complainant’s case inevitably fails.

6.11 In the circumstances, the Complainant has failed to prove paragraph 4(a)(iii) of the Policy. Given this finding, there is no need for the Panel to reach a decision on the question of legitimate rights and interests.

6.12 The Panel entirely accepts that the Complainant is right when it contends that the Respondent is engaged in the business of trading in various domain names. However, domain name trading is not per se a bad faith activity under the terms Policy. What is required is that the registrant both registered and used the domain name with the intent of taking advantage of the trade mark rights of others. On this occasion the Complainant has not shown, at least so far as initial registration is concerned, that this is the case.

6.13 The fact that the Policy requires both bad faith registration and use, and the consequential possibility that a domain name not originally registered in bad faith might subsequently be used in bad faith, led the drafters of other domain name ADR policies to require either bad faith registration or bad faith use¹. However, this is not how the Policy operates. Given the requirements of the Policy as it currently stands, the Panel has no alternative but to find against the Complainant in this case.

7. Decision

7.1 For all the foregoing reasons, the Complaint is denied.

Matthew S. Harris
Sole Panelist

Dated: June 11, 2008

¹ See, for example, the procedures that apply in the case of .eu, .au and .nl domain names.