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1. The Parties
Complainant is the Jolt Company, Inc. d/b/a Wet Planet Beverages, a
corporation with its principal place of business in Rochester, New York,
USA.
Respondent is Digital Milk, Inc., a corporation with its principal place
of business in San Francisco, California, USA.
2. The Domain Names and Registrar
The domain names at issue are: <jolt.com> and <jolt.net> ("the
Domain Names").
The registrar is Network Solutions, Inc., located in Herndon, Virginia,
USA.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain
Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and
the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated
October 24, 1999 ("the Rules").
The Complaint was filed by e-mail on April 3, 2001, with hard copy received
on April 5, 2001, naming Digital Milk, Inc. as Respondent. On May
13, 2001, Respondent submitted its response to the Complaint.
On June 25, 2001, the WIPO Arbitration and Mediation Center appointed
Mark V.B. Partridge, Jonathan Hudis and David E. Sorkin as panelists.
The Panel issued Procedural Order No. 1 on July 10, 2001, seeking additional
documents from Respondent. Respondent's supplemental submissions
were received on July 25, 2001.
4. Factual Background
Complainant is currently engaged in production and distribution of a
variety of products including beverages, gum, candy, energy bars, snowboards
and clothing apparel. Complainant was initially involved in beverage
production. On January 30, 1985, Complainant began selling JOLT soda
in its local markets of western New York. Soon thereafter, Complainant
expanded its operation and began selling JOLT soda nationwide. Complainant
continues to actively advertise and market the JOLT mark on television
and radio. Complainant estimates it has spent in excess of $7 million
dollars in marketing and advertising the JOLT mark. Similarly, Complainant
has realized in excess of $50 million dollars in sales of products associated
with its JOLT mark.
On June 27, 1985, Complainant filed for trademark registration for the
word JOLT with the United States Patent and Trademark Office. The
mark was registered on January 28, 1986, Reg. No. 1380691. By 1992,
Complaint expanded its operation internationally and had filed for trademark
registrations for its mark in various countries in addition to the United
States.
The domain name <jolt.com> was initially registered by Jerod Tufte.
After receiving an objection from Complainant, Mr. Tufte offered the <jolt.com>
domain name for sale.
Respondent claims to be an Internet investment and development firm.
On or about September 3, 1999, Respondent noticed that domain name <jolt.com>
was offered for sale on a web site called <domains.com>. Thereafter,
Respondent purchased the disputed domain name <jolt.com> for an undisclosed
amount. Respondent registered the additional domain name <jolt.net>
in November 1999.
On February 10, 2000, Complainant sent a cease and desist letter to
Respondent, regarding its use of the Domain Names. Respondent, in
its reply, denied any bad faith intentions in its use and registration
of <jolt.com> and <jolt.net>. Again, on May 23, 2000, Complainant
sent a second cease and desist letter, to which Respondent replied asserting
its legal rights in the Domain Names. Respondent's refusal to cooperate
with Complainant's demands ultimately resulted in the initiation of this
proceeding.
5. Parties' Contentions
Complainant contends that the Domain Names are identical to its mark,
that Respondent has no rights or legitimate interests in the Domain Names,
and that Respondent has registered and used the Domain Names in bad faith.
Respondent claims that Complainant's mark is a common word put to descriptive
use, and thus Complainant has no enforceable trademark rights under the
UDRP. In addition, Respondent maintains it has a legitimate interest
in the Domain Names because it developed a plan for bona fide use prior
to notice of this dispute. Lastly, Respondent asserts that it did
not register nor use the disputed domain names in bad faith.
6. Discussion
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution
Policy, Paragraph 4(a) of the Policy requires the complainant to prove
each of the following:
i) 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
ii) that the respondent has no rights or legitimate interests in the
domain name; and
iii) that the domain name has been registered and used in bad faith.
A. Confusing Similarity
Complainant has demonstrated prior rights in the mark JOLT based on
registration and use. The salient portion of the Domain Names is
identical to Complainant's mark. Therefore, Complainant has satisfied
the first element of its claim.
B. Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated
by showing that: (i) before any notice of this dispute, respondent
used, or demonstrably prepared to use, the domain name or a name corresponding
to the domain name in connection with a bona fide offering of goods or
services; (ii) respondent has been commonly known by the domain name,
even if no trademark or service mark rights have been acquired; or
(iii) respondent is making a legitimate noncommercial or fair use of the
domain name, without intent for commercial gain to misleadingly divert
customers or to tarnish the trademark at issue. Policy 4(c).
Here, Respondent contends that before any notice of this dispute, it
had demonstrably prepared to use domain names in connection with a bona
fide offering of goods or services. Complainant asserts that Respondent's
activities are a deliberate infringement of its rights and therefore cannot
be bona fide offering.
Other decisions recognize that an extensive and elaborate business plan
that shows Respondent's preparation to use the Domain Name in connection
with a bona fide offering of goods or services may be sufficient to establish
a legitimate interest in a domain name. See Titan Industries Limited
v. Tanishq Corporation, WIPO Case No. D2000-1793 (March 14, 2001) (noting
that business contracts and registration certificate of establishment prior
to any notice of the dispute demonstrated legitimate interest in a domain
name).
Here, Respondent provided evidence by way of documents and affidavits
to demonstrate its preparations for bona fide use of the Domain Names:
1. Digital Milk, Inc. was incorporated on April 8, 1999.
2. In September 1999, Respondent retained Wilson Sonsini Goodrich &
Rosati to conduct a screening search regarding the JOLT name for use in
connection with online entertainment. Based on the results of the
search, counsel advised Respondent that "we are optimistic about the prospects
for availability." It appears that Complainant's mark was disclosed
in the search and not viewed as a bar to Respondent's proposed use.
3. Respondent acquired the <jolt.com> domain name from the original
owner on October 5, 1999, after receiving the results of the screening
search.
4. Between September 1999 and November 1999, Respondent contacted potential
partners, advisors and investors to whom Respondent presented its business
plan involving the use of the <jolt.com> domain name for online entertainment
content. The contacts are demonstrated by a substantial amount of
email concerning the project between Respondent and third parties.
5. In October 1999, Respondent completed a detailed business plan identifying
a management team and providing financial projections for its proposed
venture, then identified as "The Jolt Network."
6. On November 20, 1999, Respondent registered the additional domain
name <jolt.net> for use in connection with The Jolt Network.
7. In late January, Respondent changed the focus to its proposed venture
from online entertainment content to online game shows. Respondent
proceeded with further development of this idea by contacting various people
as potential partners, advisors and investors.
8. On February 15, 2000, Respondent received a cease and desist letter
from Complainant. In response, Respondent's counsel advised Complainant
of Respondent's plan to use the name for an online entertainment network,
consistent with the preparations it had undertaken during the prior six
months.
Based on the record presented, this Panel finds that Respondent has
presented sufficient evidence to show "demonstrable preparations to use
[the Domain Names] in connection with a bona fide offering of goods or
services" under Paragraph 4(c)(i) of the Policy.
Complainant suggests that Respondent's plans should be discounted because
it has not in fact made use of the Domain Names for a period of approximately
two years. Further, complainant suggests that Respondent's acquisition
of the Domain Names is "tainted" by the bad faith of the prior owner of
the <jolt.com> domain name, who offered the domain name for sale at
auction and transferred it to Respondent in exchange for an equity interest
in The Jolt Network.
We recognize that the circumstances surrounding the transfer of the
<jolt.com> domain name to Respondent and the efforts to legitimize the
registration and use of the domain name after the transfer may appear suspicious.
And we are mindful that a sham business plan should not be sufficient to
demonstrate a legitimate interest under the Policy (see J.P. Morgan v.
Resource Marketing, WIPO Case No. D2000-0035 (March 23, 2001), and Advanced
Internet Technologies v. AIT,.Inc., WIPO Case No. D2000-0597 (February
20, 2001). Nevertheless, in the context of a truncated UDRP proceeding,
sufficient issues have been raised by Respondent's submissions and supplemental
submissions to rebut Complainant's claim of a lack of rights or legitimate
interest in the Domain Names. The UDRP contemplates the transfer
of domain names only when the Complainant demonstrates all three requisites
of the policy (UDRP 4(a)(i)-(iii)) by a preponderance of the evidence.
Here, we conclude that Complainant has not prevailed on the second element
of its claim.
Finally, Complainant suggests that it should prevail because Respondent's
proposed use would infringe Complainant's prior rights. However,
given the opinion of counsel and the differences in the goods and services
of the parties, this does not appear to be a case of deliberate infringement.
Legitimate disputes over likelihood of confusion are beyond the scope of
the current Policy. See Avnet, Inc. v. Aviation Network, Inc., WIPO
Case No. D2000-0046 (March 24, 2000). Thus, Complainant's remedy
for infringement, should it wish to pursue it, is an action for infringement
in the United States courts.
B. Bad Faith
Because Complainant has not prevailed on an essential element of its
claim, we do not need to consider further the final element of bad faith.
7. Conclusion
The Panel concludes that Complainant has failed to establish that Respondent
lacks any right or legitimate interest in the Domain Names <jolt.com>
and <jolt.net>. Therefore, Complainant's request for transfer
is denied.
Mark V. B. Partridge
Presiding Panelist
Jonathan Hudis
David E. Sorkin
Panelists
August 1, 2001
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