SlashCity v. Domain For Sale
Claim Number: FA0108000098823
Complainant is SlashCity, Jacksonville, FL (“Complainant”) represented by Christine Williams. Respondent is Domain For Sale, Obninsk, Kaluga, RUSSIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <slashcity.net>, registered with BulkRegister.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 9, 2001; the Forum received a hard copy of the Complaint on August 10, 2001.
On August 15, 2001, BulkRegister confirmed by e-mail to the Forum that the domain name <slashcity.net> is registered with BulkRegister and that Respondent is the current registrant of the name. BulkRegister has verified that Respondent is bound by the BulkRegister registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 5, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On September 24, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant alleges ownership of the common law mark “SlashCity” and has registered <slashcity.com> and <slashcity.org> which are in good standing and ownership. She alleges past registered rights in <slashcity.net>, the domain name at issue, which was inadvertently made available for registration by Respondent due to an error on the part of Complainant’s registrar. Complainant further alleges that Respondent has no legitimate interests in respect of the domain name at issue (utilizing it merely for pornographic purposes), is not commonly known by the domain name and registered and maintains the domain name in bad faith.
Respondent submitted no response in this matter.
SlashCity is the name under which fiction-hosting services have been offered since 1998. The term SlashCity has become synonymous with a hosted community of amateur, female fiction writers and fans of an adult, homoerotic written genre (the term 'slash' refers to the homoerotic nature of the fiction, and is widely known as such amongst media fans of this online fiction).
<Slashcity.com> and <slashcity.org> are currently domains under which hosting is offered by the Complainant (<slashcity.com> since February, 1999; <slashcity.org> since April, 2000). Until the accidental lapse of the domain name <slashcity.net> (originally registered in July 2000 by the Complainant), websites for women were also hosted under this domain. All top level index pages for <slashcity.com>, <slashcity.org>, (and formerly <slashcity.net>) resolve to the same author index page, creating a community of hosted websites. The SlashCity-owned server currently hosts 138 domains and SlashCity subdomains for this purpose, including the <slashcity.com> and <slashcity.org> domains, which serve as indexes for the other domains and the center of the online authors' community.
Within hours of realizing the domain name expired, the Complainant tried to re-register the domain name, but was beaten to it by Domain For Sale. Upon realizing this, the Complainant emailed the administrative contact immediately, and an offer was made at that time to buy the domain name back at the registration cost plus $50 for administrative hassles. Later that same day, the Complainant found that the domain name was up for sale at a minimum bid of $550. Complainant submitted the bid of $550 but then was contacted several days later by the Respondent and told that the price was now $2100 if bought before August 9th.
The Respondent is not known by the “slashcity” term in any form. The Respondent is known as Domain for Sale.
The Respondent currently links the <slashcity.net> domain name to pornographic images.
Paragraph 15(a) of the Rules instructs this Panel to “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.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Complainant has been using the SlashCity term since 1998. While the Complainant has not applied for a trademark registration with any governmental agency, Complainant alleges common law rights in the mark. Prior UDRP actions have addressed the issue of a Complainant claiming common law rights in the term. It is well settled that in UDRP proceedings, common law rights in a mark establish a Complainant’s rights in a mark. Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”). Based on Complainant’s use of the SlashCity mark since 1998, the Panel concludes that the Complainant has rights in the SlashCity mark. Also, given the Complainant’s former ownership of the <slashcity.net> domain name, the Panel concludes that Complainant has rights in the <slashcity.net> mark.
The domain name <slashcity.net> incorporates the Complainant’s slashcity and slashcity.net marks in their entirety. Therefore, the domain name is identical to Complainant’s marks. See Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <clairol.tv> is identical to Complainant’s CLAIROL marks).
Based on the above, the Panel determines that the elements set forth in Policy ¶ 4(a)(i) have been established.
Rights or Legitimate Interests
The Respondent has not come forth to establish any of the methods of proving rights and legitimate interests in a domain name, as laid out in Policy ¶ 4(c). As set forth in the Complainant’s submissions, the Complainant has effectively established that: (1) the Respondent has not used the domain name in connection with a bona fide purpose, (2) the Respondent is not commonly known by the <slashcity.net> mark, and (3) the Respondent has not used the domain name in connection with a non-commercial or legitimate purpose.
First, the Respondent has used the <slashcity.net> domain name to display pornographic images. Within the world of pornography, the term “slashcity” has no meaning or marketing value. The only value to the new domain holder is the specific existing SlashCity visitor base, who will go to the same page names that they have been visiting for one year and thus automatically provide profitable Internet traffic to the website. It is not a bona fide offering of goods or services for the Respondent to link domain name to a website that offers pornographic material. MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see Hewlett-Packard Company v. Kim, FA 98012 (Nat. Arb. Forum Sept. 5, 2001) (finding no rights or legitimate interests where Respondent linked the <hpnow.com> domain name to a website that offers pornographic material). Further, linking a website that infringes upon another’s mark to a pornographic website is not a legitimate, non-commercial, or fair use of the domain name. See id.
Lastly, Complainant has proven that Respondent is commonly known by the “Domain For Sale” business name and not any name associated with slashcity.
Therefore, the Panel concludes that the elements set forth in Policy ¶ 4(a)(ii) have been established.
Registration and Use in Bad Faith
The website that was displayed while the <slashcity.net> domain was under the Complainant’s control was adult (though not pornographic) in nature. However, visitors returning to the website now may be led to believe that the Complainant has changed its format from adult fiction to outright pornography and that the Complainant is selling its domains for pornographic use. Using a domain name that infringes upon another party’s established mark for pornographic images is overt evidence of bad faith. See id.
The Panel further concludes that the Respondent was likely aware of Complainant's legitimate interest in the domain name, and thus decided to use the domain name as a tool to make a profit. Two reasonable attempts were made to compensate the Respondent; however, Respondent rejected these offers, raised the asking price for the domain name, and threatened to put the domain name up for auction. Policy ¶ 4(b)(i) states that registering a domain name for the purpose of selling it for profit, above and beyond out of pocket costs, is evidence of bad faith. The Respondent’s conduct in this case is evidence of bad faith under Policy ¶ 4(b)(i). See Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith). Respondent’s calculated effort to sell the domain name demonstrates that Respondent registered and is using the domain name in bad faith.
Given the above, the Panel finds that the elements required by Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name slashcity.net be transferred from Respondent to Complainant.
James A. Carmody, Panelist
Dated: October 1, 2001
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