WIPO Arbitration and Mediation Center

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.

The Respondent is Tropic Web, a company giving an address of 3850 Classic Court, West Palm Beach, Florida, United States of America.

The domain names at issue are <pollyester.com> and <pollyesters.com>, which domain names are registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.

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. The WIPO Center sent an Acknowledgment of Receipt 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 names at in issue are registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrars Whois database for the registrant of the disputed domain names, 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 names.

3.3 On June 25, 2000, NSI confirmed by reply e-mail that the domain names <pollyesters.com> and <pollyester.com> are registered with NSI, are currently in active status, and that the Respondent is the current registrant of the names. 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 NSIs 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."

3.6 On July 17, 2000, the WIPO Center received an electronic copy of the Response and on July 20, 200 received the Response in hard copy.

3.7 On July 17, 2000, the WIPO Center transmitted an Acknowledgment of Receipt (Response).

3.8 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.

Complainant

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, including in Boca Raton, Florida.

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 28, 1999, Respondent registered the domain names <pollyesters.com> and <pollyester.com>. The Administrative and Billing Contacts identified in the Whois records is Chris Newman.

4.5 To date, Respondent has not used the domain names to develop web sites.

4.6 Respondent has registered at least 27 other domain names, but has developed a web site at only one.

4.7 Complainant has sent Respondent an email, a certified letter, and left a telephone message requesting transfer of the domain name at issue. Respondent did not respond to any of these requests.

Respondent

4.8 A Response was filed on behalf of Respondent by Christine Newman. Respondent listed the preferred method of communications directed to Respondent be directed to Chris Newman by email and hardcopy.

4.9 Respondent contends that the trademark is weak since a phonetically identical word, "polyester," is generic, and the words "Polly" and "Esther" are common first names.

4.10 Respondent admits that the names at issue are phonetically identical and confusingly similar.

4.11 Other variations of "pollyesther(s)" have been registered in various domains.

4.12 The name "Polly Ester" has been in common use in the Newman family for over 25 years. It is a pet name for Christine Newman, bestowed on her by her father, owing to Christine's fondness for polyester bell-bottom pants. Although Christine's father has passed away, a Virginia Newman Rickman and Joseph Roy Newman, Jr. could (but did not) testify to this.

4.13 Respondent is a start up web development company. It has developed 6 web sites and plans to develop more.

4.14 Respondent has registered over fifty domain names, virtually all of which appear to be descriptive or generic in nature. None is obviously identical to a recognized trademark.

4.15 Respondent has never offered to sell the domain names at issue or any of the domain names registered to any third party.

4.16 Respondent intends to use the domain names at issue as a search engine.

5.1 Complainant contends that Respondent has registered domain names which are confusingly similar to the service mark and trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.

5.2 Respondent admits that the domain names at issue are phonetically identical and confusingly similar to Complainant's marks, but that Respondent has rights or legitimate interests in respect of the domain names at issue, and that Respondent did not register and has not used the domain names at issue in bad faith.

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 admitted that the domain names at issue are phonetically identical and confusingly similar to the service mark and trademark in which the Complainant has rights.

6.5 Paragraph 4(a) of the Policy sets out the three elements, which must be established in order to establish abusive registration of a domain name. The paragraph concludes with the sentence: "In the administrative proceeding, the complainant must prove that each of these three elements are present." This sentence seems to say that the complainant has the burden of proof as to each of the three elements, including to demonstrate that the respondent "has no rights or legitimate interests in respect of the domain name." Policy, 4(a)(ii).

6.6 This, of course, would require complainant to prove a negative, a difficult, if not impossible, task.

6.7 In stark contrast to the last sentence of Paragraph 4(a) is Paragraph 4(c) of the Policy, which is captioned, "How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint." Paragraph 4(c) goes on to provide in pertinent part:

"When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) . . . ."

This Paragraph strongly suggests that it is the Respondent who bears the burden of proof as to paragraph 4(a)(ii).

6.8 Faced with this seeming contradiction, Panels have taken different approaches. Some have held, either effectively or directly, that respondents need do nothing if the complainant does not furnish affirmative proof that the respondent has no rights or legitimate interest in respect of the domain name at issue. VereSign, Inc. v. VeneSign, C.A.ICANN Case No. D2000-0303; Gassen Diamonds B.V. v. Van Etten Bernardus Joacbus, ICANN Case No. AF-0149a; AF-0149b; Beijing Pernot Ricard Winery Co. Ltd. v. Capital Enterprises Group, Inc., ICANN Case No. AF-0177 ("Although [Paragraph 4(c)] is couched in terms of the respondent 'demonstrating' its rights or legitimate interest, it is for the complainant to establish their absence."); Vanguard Medica Limited v. Theo McCormick, ICANN Case No. D2000-0067 ("But Complainant does not succeed in carrying the burden of proving that Respondent has no legitimate interests in respect of the domain name as required by Paragraph 4(a)(ii). In response to Complainant's allegations that Respondent has no legitimate interests in respect of the domain name, Respondent asserts that the term 'Miguard' is the name of his pet dog. . . . The nature of this proceeding does not allow Complainant to cross-examine Respondent or to otherwise test his assertions.") Penguin Books Limited v. The Katz Family and Anthony Katz, ICANN Case No. D2000-0204 ("The Respondent has produced evidence, which this Administrative Panel must accept in the absence of any rebuttal evidence from the Complainant, that Mr. Katz has for many years been known by the nickname 'Penguin.'").

6.9 Other Panels have taken different tacks. Some have held that the burden on the complainant is a "relatively light" one as regards proof of 4(a)(ii). Educational Testing Service v. Netkorea Co., ICANN Case No. D2000-0087 ("It is relatively difficult for any complainant to prove beyond a shadow of a doubt that a respondent has no rights or legitimate interests in a domain name. By and large, such information is known to and within the control of the respondent. Accordingly, the burden on a complainant in respect of this element must, by necessity, be relatively light.") Europay International S.A. v. Eurocard.com, Inc., EuroCard.org, and Chad Folkening, ICANN Case No. D2000-0173.

6.10 Still others have held that the panel should assess the failure of the respondent to demonstrate that he comes within Paragraph 4(c), when the Panel in assesses whether the complainant has met its burden of proof under Paragraph 4(a)(ii). Wal-Mart Stores, Inc. v. Walmarket Canada, ICANN Case No. D2000-0150.

6.11 The majority of Panel decisions on this point have taken the position that while the complainant has the burden of proof on this issue, once the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. Document Technologies, Inc. v. International Electronic Communications, Inc., ICANN Case No. D2000-0270; Inter-Continental Hotel Corporation v. Khaled Ali Soussi, ICANN Case No. D2000-0252. This is an approach this Panelist has taken in other cases.

6.12 The Panel feels a need to clarify what is meant by "concrete evidence" under this approach. "Concrete evidence" constitutes more than mere personal assertions. Just as a Panel should require a complainant to establish by means other than mere bald assertions that it is the owner of registered marks, so should the panel require that a respondent come forward with concrete evidence that the assertions made in the response are true.

6.13 Paragraph 4(c) states that ". . . any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented . . . ." Emphasis added. Uniform Rules, Rule 5(b)(ix) instructs the respondent to "[a]nnex any documentary or other evidence upon which the respondent relies . . . ." Emphasis added.

6.14 In short, it is not sufficient for a respondent to say, "Everyone knows me by x name," or "I have witnesses who would say . . . ." Evidence in the form of documents or third party declarations should be furnished in support of such assertions. A panel is not required to blindly accept assertions offered by a respondent, any more than it is required to accept unsupported assertions offered by a complainant. It is especially important under this procedure to test respondent's assertions for evidentiary support and credibility, since normally the complainant has no opportunity to counter the respondent's assertions, while the respondent does have the opportunity to counter those of the complainant.

6.15 Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion. This information is uniquely within the knowledge and control of the respondent. Failure of a respondent to come forward with such evidence is tantamount to admitting the truth of complainant's assertions in this regard. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, ICANN Case No. D2000-0007; Ronson Plc v. Unimetal Sanayai ve Tic.A.S., ICANN Case No. D2000-0011.

6.16 Respondent's assertions concerning the nickname "Polly Ester" were unsubstantiated. Despite a reference to witnesses who could testify as to the history of the use of the nickname, no declarations from such witnesses were presented.

6.17 Respondent also asserted that various names were "operational" as web sites, but respondent offered no printouts of web pages verifying this assertion. Because this Panel believes, and prior Panel decisions establish, that consulting publicly available evidence is the equivalent of a court taking judicial notice, the Panel visited the web sites listed and determined that they were as described by Respondent. Chernow Communications, Inc. v. Jonathan D. Kimball, ICANN Case No. D2000-0119; American Networks Inc. v. Tariq Masood and Solo Signs, ICANN Case No. D2000-0131. However, as not all Panelists agree that the Panel has the authority to independently consult publicly available information (see, e.g. Chernow Communications, supra, Dissent), respondents are advised to support such assertions with print outs of the web pages.

6.18 Respondent has asserted that it intends to develop a search engine utilizing the domain names at issue. However, Paragraph 4(c)(i) requires Respondent to show 1) "demonstrable" evidence of such preparations to use the domain name, and 2) that such preparations were undertaken "before any notice to [Respondent] of the dispute." The mere assertion of intent to use the name satisfies neither requirement.

6.19 In sum, Respondent has failed to produce concrete evidence that it has a legitimate interest in or right to the domain name at issue as required by 4(c) of the Policy.

6.20 Finally, Complainant must show that Respondent has registered and is using the domain names at issue in bad faith.

6.21 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.

6.22 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.

6.23 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.

6.24 Telstra established that whether "inaction" could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.

6.25 In this case, the Panel finds that where (1) the trademark and service marks asserted by the complainant are weak and where they are homophones of a generic term, (2) the domain names registered by the respondent are generic or descriptive terms, rather than obvious trademarks or service marks, (3) Respondent is already making use of some of the domain names it registered, (4) Complainant did not allege and Respondent denied that Respondent had ever offered for sale the domain name at issue for to respondent or anyone else, or that Respondent had ever offered for sale any of the domain names it had registered, the Complainant has failed to prove that Respondent's inaction constitutes bad faith registration and use of the domain names at issue.

For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are 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 names at issue, but that Complainant has failed to prove that the domain names have been registered and are being used in bad faith. Accordingly, the Panel finds in favor of the Respondent.

M. Scott Donahey
Panelist

Dated: August 21, 2000