The Complainant is Superstation, Inc., Atlanta, GA, USA ("Complainant") represented by David J. Stewart, of Alston & Bird, LLP. The Respondent is Dinner&aMovie, Irvine, CA, USA ("Respondent") represented by Richard Nessary, of Wilson Sonsini Goodrich & Rosati.

The domain name at issue are <dinnerandamovie.com>, <dinnerandamovie.net>, and <dinnerandamovie.org>, registered with Network Solutions, Inc.

Each of 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.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on June 8, 2001; the Forum received a hard copy of the Complaint on June 11, 2001.

On June 13, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <dinnerandamovie.com>, <dinnerandamovie.net>, and <dinnerandamovie.org> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 June 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 3, 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 postmaster@dinnerandamovie.com, postmaster@dinnerandamovie.net, and postmaster@dinnerandamovie.org by e-mail.

A timely response was received and determined to be complete on July 3, 2001.

Complainant submitted an additional submission on July 9, 2001.

On July 16, 2001, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Paul Dorf, Retired, James Carmody, and G. Gervaise Davis III, as the Panelists, with an original due date for the decision of July 30, 2001.

Because of several external events, the Panel twice entered an Order extending the time for decision to August 10, 2001 and ultimately to August 20, 2001. The decision was rendered by the Panelists on the date set forth below.

The Complainant requests that the domain name be transferred from Respondent to Complainant.

A. Complainant

B. Respondent

C. Additional Submissions

Complainant

On July 6, 2001, Complainant Superstation, Inc., submitted a Reply to Respondent’s Response to the Center pursuant to Rule 7 of the NAF Supplemental Rules, along with appropriate payment for said submission. In it, Complainant sets forth a number of "Undisputed Seminal Facts" regarding the acquisition, use, and offer to sell of the disputed domain names. Complainant says "Respondent’s central contention is that its extortionate offer to sell the Domain Names to SSI does not constitute bad faith because the original registrant of the domain names registered the names in good faith. In other words, Respondent contends that it is entitled to ‘piggyback’ off the original registrant’s alleged good faith, even though Respondent admits that it had no legitimate business reason for acquiring the Domain Names."

Complainant contends that the undisputed facts of record are evidence that the Respondent did in fact "register" the domain names in bad faith and says that transfer of a domain name registered with NSI involves deletion of the prior registration and creation of a new registration in the name of the transferee., according to Network Solutions, Inc. v. Umbro International, Inc., 259 VA. 759, 767-68, 529 S.E.2d 80, 84-85.

On July 12, 2001, Respondent eMachines, Inc., submitted a document entitled "Respondent’s Request to Strike Complainant’s Reply Brief and Second Declaration of David J. Stewart, or Alternatively, for Consideration of a Sur-Reply." In it, Respondent contests that the "Seminal Undisputed Facts" set out in Complainant’s Reply brief are untrue and actually relate to a telephone conversation that took place between the parties’ legal counsel on June 25, 2001. Respondent alleges that many key words and ideas are mischaracterized and that it distorts the facts of the conversation.

In the supplemental brief, Respondent says "Second, as a matter of law, even if everything in Complainant’s Reply were accepted as true, Complainant has failed to prove that eMachines or its predecessors in interest have no legitimate interest in the challenged domain names, and that they registered and used the names in bad faith."

The Panel finds that the domain names <dinnerandamovie.com>, <dinnerandamovie.net>, and <dinnerandamovie.org> are all substantially identical to Complainant’s original common law and now various registered marks "Dinner & A Movie," in that that the substitution of the word "and" for the ampersand ("&"), which is a character not available for use in domain names, does not differentiate the names from the trademarks, anymore than merely adding the suffixes .com, .net and .org does. UDRP ¶4(a)(1). The Panel finds that Complainant has also established first priority of use in this context, over Respondent.

The Panel finds that Respondent has a legitimate interest in the domain names, although this is a close factual and legal question, which in a federal court proceeding for infringement, dilution, or cybersquatting under the ACPA might well be decided differently were all the details of the evidence, not before us in a summary proceeding like this one, available for the trier of fact to weigh. UDRP ¶4(a)(2). See Discussion below.

The Panel finds that, for the reasons expressed below in the Discussion, Complainant has not proven that either the original registrant or the present registrant (the Respondent) registered and is or was using the domain name in bad faith. The Panel notes that to prevail on this Finding, Complainant must prove both bad faith registration and bad faith use. For this reason, even if the efforts of Respondent as the current owner to sell the domain names to Complainant at an unusually high price (which raises serious questions in the minds of the Panel as to Respondent’s good faith) were taken as a given, the Panel finds that Complainant has still not satisfied the first branch of this final requirement —bad faith registration — under Complainant’s version of the facts. UDRP ¶4(a)(3).

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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." While the Panel may resort to trademark principles in reaching its decision, the UDRP is quite specific that unless the requisite three elements are proven by the Complainant, the Panel may not order transfer or cancellation of the domain name(s).

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.

Numerous domain name and trademark cases over the years have made clear that where a mark looks or sounds like another, regardless of how it is spelled, the marks will be considered identical or substantially identical. See, for example, Dreamwerks Production Group, Inc. V. Skg Studio, dba DreamWorks SKG, 142 F.3d 1127; 1998 U.S. App. LEXIS 7685; 46 U.S.P.Q.2D (BNA) 1561 (9^th Cir. 1998). See also, Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO, Sept. 2, 2000) deciding that substitution of "and" for "&" is still an identical mark.

The Panel agrees with Complainant that the substitution by Respondent of the word "and" for the ampersand in its mark, does not sufficiently differentiate the marks, especially since the obvious reason for the difference here is not an intent to make them different, but the mere fact that the Internet domain name naming conventions do not permit the use of most standard punctuation marks in names. Similarly, both the USPTO and most other trademark offices do not consider the additional .com, .net or .org as making a difference in conflicting marks. Accordingly, we conclude that Complainant has met its burden of proof as to UDRP ¶4(a)(i).

The usual ICANN UDRP case involves the original registrant and a trademark owner who disputes the legitimacy of that party’s registration and use and its right to use the name. This case is unusual in that the original registrant, idealab! and its affiliate DMI, were the first registrants in a chain of business owners and their successors in interest, all of whom except Respondent, actually used the domains for some period for a legitimate business purpose. It appears that each had a valid business reason, unconnected with the sale of the domain names to a trademark owner, for eventually selling or acquiring the assets that included the domain names. The final owner now has many assets, including some that it finds no use for, and may wish to sell them. The Panel does not agree with Complainant that merely deciding to sell a domain name one owns, and offering it for sale, without more, constitutes a per se lack of a legitimate interest in it, nor is it automatically a sign of bad faith, although it might be in some factual situations.

The facts the Panel has here raise the intriguing issue of whether the good faith registration and use of a domain by a series of predecessors "tacks" and is retroactively protective of the interest of the final owner in the UDRP proceeding. Complainant urges that each time a domain name is transferred, the whole issue of good faith registration and use must be tested anew as against the reason the Respondent acquired and uses the domain name. This Panel does not believe that a rigid application of such a policy would be desirable in many cases, since in the real world companies and assets are sold for many reasons — many of which legitimately have nothing to do with an intention to acquire a domain name for sale to a likely trademark owner.

As the Panel, unlike a trial court, has no means of investigating or reviewing the potentially substantial and disputed testimony and documents concerning the nuances of why the transfers occurred, this Panel is reluctant to enter into such an examination based solely on a few pages of briefs and exhibits. The Panel believes, rather that this is the sort of inquiry the trial courts are best suited for, and that the framers of the ICANN UDRP did not contemplate such disputed factual issues would be decided in a summary proceeding like this, where there are no witnesses to observe and no opportunity to determine who to believe or who to question further.

Furthermore, Complainant, while asserting that each new transferee should constitute a new user that breaks the chain of registration, has not provided the Panel with any evidence (1) that the original registrant here and those following it did not register and use the domains in good faith, or (2) that the successive business asset transfers, which included many other assets worth far more than the domains, were primarily for the illicit purpose of acquiring domain names for sale to trademark owners. Complainant merely argues that the activities of the final owner in offering to sell the domain name for $650,000 per se establishes bad faith, and the fact that Respondent is not using and has no use for the domains, means Respondent has no right to the domain and no legitimate interest in the domains. It also argues that Respondent’s failure to respond to Complainant’s demands is evidence of lack of legitimacy and bad faith.

The Panel declines to resolve this issue, beyond finding that Respondent has shown at least some basis for its argument it acquired the domains in the course of a series of legitimate business transactions and therefore has established at least a minimal right to the domains. The Panel, therefore, concludes that Complainant did not meet its burden of proof on this issue under UDRP ¶4(a)(ii), and that this conclusion also means that Complainant cannot satisfy the burden of showing bad faith registration of the domains in question under UDRP ¶4(a)(iii).

Because of the conclusions and findings of the Panel on the second requirement of the UDRP, the Panel believes that even if Complainant’s plausible argument that asking $650,000 for the domain names from the trademark owner were to be accepted as evidence of bad faith use, Complainant has still not established that Respondent registered or acquired the domain names in bad faith.

The UDRP requires that the Complainant demonstrate both that the Respondent acquired or registered the domains in bad faith, and that the Registrant is using the domain names in bad faith or holding them to prevent a trademark owner from using them. Here the undisputed evidence is that Respondent acquired the domains in the course of acquisition of business assets in documented sales of a block of assets. The fact that Respondent has no present use for the domains and now desires to sell them is not, in this Panel’s view any basis for finding per se bad faith use. Surely, the UDRP is not to be interpreted so that any offer to sell a domain that is no longer of use to its owner is evidence of bad faith. This defies common sense.

The Panel thus concludes that Complainant did not make the necessary showing of bad faith registration, acquisition and use of the domains required by URDP ¶4(a)(iii).

For the foregoing reasons, the Complaint is dismissed and Respondent is entitled to continue to use the disputed domain names.