WIPO Domain Name Decision: D2006-0485

The Complainants are Robert Tas, Active Athlete Media, Inc., New York, New York, United States of America, represented by Robyn Walters, United States of America.

The disputed domain name <activeathlete.com> (the “Domain Name”) is registered with Tucows, Inc. (the “Registrar”).

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2006. On April 19, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On April 19, 2006, 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 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 May 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2006.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 8, 2006. 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.

The Complaint states that the Complainant Robert Tas is the Chief Executive Officer and sole shareholder of the Complainant Active Athlete Media, Inc. According to the business entity database maintained by the Delaware Division of Corporations, the Complainant Active Athlete Media, Inc. is a Delaware corporation incorporated on January 30, 2006, and headquartered in New York City. The corporation has been registered in the State of New York as a foreign business corporation since February 28, 2006, according to the business entity database maintained by the New York Department of State, Division of Corporations. The Complaint and the website operated by the Complainant Active Athlete Media, Inc. at “www.activeathlete.net” indicate that the Complainant corporation provides online marketing and media services to companies that seek to advertise goods and services to “active athletes” – individuals who participate in competitive sports such as triathlon, running, and cycling.

The Complainant Tas registered the domain name <activeathlete.net> on March 26, 2005, according to the WHOIS database operated by Register.com, and the Complaint reports that Tas has also registered at least seven other domain names incorporating the words “activeathlete.”

At the time of filing this UDRP Complaint, the Complainants claimed common-law rights in ACTIVE ATHLETE as a service mark, subject to a pending application for registration by the United States Patent and Trademark Office (“USPTO”). According to the USPTO trademark database, the Complainant Tas applied on May 5, 2005, to register the service mark ACTIVE ATHLETE on the USPTO Principal Register as a standard character mark, showing February 5, 2005, as the date of first use and first use in commerce. The Panel notes that the USPTO database now shows that this service mark was registered to the Complainant Tas on June 6, 2006.

The Complainants have no information about the Respondent NYEC apart from the name and contact data provided by the Registrar. These include a post office box in Marbledale, Connecticut and the postal address, telephone, and email coordinates for Jeff Schaengold, who is listed as the administrative and technical contact.

The Domain Name was first registered on May 11, 1998. It does not resolve to a website. Moreover, the “Internet Archive Wayback Machine” at <archive.org> has no stored web pages to which the Domain Name previously resolved.

The Complainants report numerous unsuccessful attempts to communicate by telephone, email, and courier with the Respondent or the Respondent’s registered administrative and technical contact Jeff Schaengold. In December 2005, the Complainants made an offer to the Respondent through the domain name reseller and broker Afternic.com to purchase the Domain Name. The Respondent did not reply to any of these communications. The Complainants initiated this UDRP proceeding by filing the Complaint on April 17, 2006.

The registration of the Domain Name was scheduled to expire on May 10, 2006, after this proceeding commenced. Paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy provides as follows:

“In the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant.”

Accordingly, in the absence of instructions from the Respondent, the Registrar’s reseller EV1Servers accepted payment from the Complainants to renew the Domain Name registration. The Registrar has placed the Domain Name on hold and under registrar lock while this UDRP proceeding is pending.

Both the Center and the Complainants have notified the Respondent of this proceeding by email and courier. The Center’s email status records show that its emails to the Respondent’s designated administrative and technical contact were delivered and opened. The Respondent has not replied to any of the communications from the Center or the Complainants regarding this proceeding.

The two Complainants assert a “sufficient common interest” in the Domain Name and the ACTIVE ATHLETE service mark to seek transfer of the Domain Name. They argue that the Domain Name is identical or confusingly similar to this mark, and that the Respondent has no rights or legitimate interests in the Domain Name, as reflected by the fact that it apparently has not used the Domain Name in connection with a bona fide offering of goods or services or for other legitimate purposes since the Domain Name was registered in 1998. The Complainants infer that the registration and use of the Domain Name was in bad faith, either with the intent of ultimately selling the Domain Name for an amount in excess of the Respondent’s costs, or to mislead and divert consumers for commercial gain.

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Names, the Complainant must demonstrate each of the following:

(i) the Domain Names are 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 Names; and

As in other cases where a respondent fails to reply, the Panel must still satisfy itself that the Complainant has met its overall burden of proof under paragraph 4 of the Policy. Thus, the uncontested facts supported by documents and statements must provide a sufficient prima facie basis for finding identity or confusing similarity with the Complainant’s mark and then for inferring that, more probably than not, the Respondent has no right or legitimate interest in the Domain Name and has registered and used it in bad faith. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Neither the Policy nor the Rules expressly contemplates multiple complainants, and some UDRP panels have rejected complaints filed by multiple complainants on the ground that they have not sufficiently identified their respective ownership rights and requested remedies. See, e.g., Ken Done, Ken Done & Associates Pty Limited, and Ken Done Down Under Pty Limited v. Ted Gibson, eResolution Case No. AF-0638. In other cases, panels have accepted complaints by multiple complainants based on agency, licensing, or affiliate relationships. See, e.g., Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises, WIPO Case No. D2004-0220.

Here, the relationship between the Complainants is reasonably clear: The Complainant Robert Tas is the CEO and sole shareholder of the Complainant Active Athlete Media, Inc. The Complaint does not allege that Tas created the ACTIVE ATHLETE service mark or applied for its registration in his capacity as an officer or agent of the corporation. The service mark is currently registered to Tas personally. According to the Complaint, “Tas anticipates” that the service mark, like the various domain names he has registered incorporating the words “activeathlete,” “will be transferred from Tas to the Corporation at some point to be determined in the future.”

Thus, there does not appear to be any need for the Complainant Active Athlete Media, Inc. to appear as a party in this proceeding. On the other hand, there is no evident prejudice to the Respondent in naming the corporation as a Complainant.

The Panel accepts the Complaint as submitted, but any order directed to the Registrar will, in the interest of avoiding confusion, refer only to the Complainant Robert Tas, the party currently owning rights to the registered ACTIVE ATHLETE service mark.

For UDRP purposes, the Domain Name is identical to the registered mark ACTIVE ATHLETE. Spaces between words are necessarily ignored in the domain name system, and the top-level domain name “.com” is not relevant to a determination of identity or confusing similarity.

The Respondent has not come forward to assert any rights or legitimate interests in the Domain Name.

Paragraph 4(c) of the Policy furnishes a non-exclusive list of circumstances that demonstrate such rights or legitimate interests:

“(i) before any notice to you 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 (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 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 the Complainants observe, there is no evidence that the Respondent has used a name corresponding to the Domain Name in any business, nor that it has made a legitimate noncommercial use of the name. The Domain Name does not resolve to any website, and there is no indication that it has ever done so.

The Panel notes that Amazon.com advertises on its website an unaffiliated commercial website located at <learnanytime.com>, showing as its contact information “Nyec” with the same post office box, telephone number, and email address found in the registration contact data for the Domain Name. A visit to <learnanytime.com> does not reveal any use of the name “Active Athlete” or any offering of obviously relevant goods or services.

Once a complainant has made a prima facie case, a panel may infer from a respondent’s failure to contest a complainant’s allegations that the respondent has no rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. There is nothing in the record of this proceeding or in applicable rules or principles of law to contradict such an inference here. The Panel concludes, therefore, that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant cites two of the circumstances of bad faith listed in the Policy, paragraph 4(b):

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or * * *

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

These circumstances do not appear to fit the known facts concerning the Respondent’s registration and use of the Domain Name. The Respondent has not offered to sell the Domain Name to the Complainants, and the Respondent did not reply to the Complainants’ recent offer (through Afternic.com) to purchase the Domain Name. The Complainants’ mark is very recent, so it does not appear possible that the Respondent registered the Domain Name in 1998, with the intention of diverting Internet users seeking the Complainants’ website.

The circumstances listed in paragraph 4(b) of the Policy are expressly non-exhaustive; they are described “in particular but without limitation.” UDRP panels have found that “passive holding” (registering but not using a domain name) constituted bad faith based on inferences from other factual circumstances, such as similarity to a famous mark, concealment of the registrant’s identity, and a failure to respond to communications concerning trademark claims. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Here, however, unlike Telstra and a number of other UDRP panel decisions that address passive holding, it cannot be assumed that the Respondent was aware of an established mark to target for future exploitation. The Domain Name was registered in 1998, while the mark was first used in 2005 and the Complainant corporation was formed only in 2006.

The Panel notes that Jeff Schaengold, the registered administrative and technical contact for the Domain Name, has a history of bad-faith domain name registration. Jeff Schaengold was the registered administrative contact for a disputed domain name in an earlier UDRP proceeding, Top Driver, Inc. v. Benefits Benefits, WIPO Case No. D2002-0972. The address for the registrant in that proceeding was the same as for the Respondent in this proceeding, and it is the same address given for Mr. Schaengold as administrative and technical contact for the Domain Name. In Top Driver, the panel ordered the transfer of the domain name <topdriver.com> after finding that Mr. Schaengold effected a change of the registration in bad faith. The panel concluded in that proceeding that Mr. Schaengold, as the administrative contact, was not properly named as a respondent but was in fact the person responsible for illegitimately transferring the registration of his former employer’s domain name:

“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.”

The panel in Top Driver cited evidence of other instances of Mr. Schaengold’s bad-faith registration and use of domain names:

“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.”

In these earlier cases, however, it appears that Mr. Schaengold registered domain names corresponding to marks that existed at the time of registration. The Policy, paragraph 4(a)(iii), requires proof that “Domain Names have been registered and are being used in bad faith” (emphasis added). There is simply no evidence in the record of this proceeding that the Complainants or any predecessor in interest had rights or shortly would acquire rights in an ACTIVE ATHLETE mark when the Respondent registered the Domain Name in 1998. See Diknah, S.L. v. WebQuest.com Inc., WIPO Case No. D2005-0573, and Builder’s Best, Inc. v. Yoshiki Okad, WIPO Case No. D2004-0748 (in order to find bad faith, “there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark”).

Thus, there is no basis in this proceeding for inferring that the Respondent targeted the Complainants or a predecessor in interest for any bad-faith purpose such as selling them the Domain Name at an exorbitant price, depriving them of a domain name corresponding to their mark, disrupting their business, or diverting Internet traffic from their website by creating a likelihood of confusion. The Panel does not conclude, therefore, that the Domain Name was both registered and used in bad faith.