WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Talk City, Inc. v. Michael Robertson

Case Number D2000-0009

The Domain Name

This dispute concerns the domain name talk-city.com. The registrar for this domain name is
Network Solutions, Inc.

The Parties

The Complainant is Talk City, Inc., 307 Orchard City Drive, Suite 350, Campbell, CA 95008 ("Talk
City"). Talk City operates the virtual community located at talkcity.com and owns a United States
trademark registration for TALK CITY for the following computer services: "providing on-line
facilities for real-time interaction with other computer users concerning topics of general interest;
and providing an on-line bulletin board in the fields of consumer education and business topics."
According to NSI’s WHOIS database, Talk City also owns, among others, the domain names
talkcity.org, talk-city.net, talk-city.org, images-talkcity.com, images-talkcity.net, images-
talkcity.org. Talk City does not own the domain name talkcity.net; that domain name is registered
to Domains EO.

The respondent is Michael Robertson, P.O. Box 910091, San Diego, CA 92191. According to the
Complaint, Mr. Robertson is the Chief Executive Officer of MP3.com, Inc. The MP3.com website
states that it is "the premier Music Service Provider (MSP) allowing consumers to instantly
discover, purchase, listen to, store and organize their music collection from anywhere, at any
time, using any Internet device."

Factual Allegations from the Complaint

In its complaint, Talk City asserts that it has used the TALK CITY trademark since April 1996 and
has developed substantial fame in that mark.

In October 1997, Mr. Robertson registered the domain name talk-city.com. At or about the same
time, Mr. Robertson registered the domain names meta-crawler.com, meta-crawler.net, win-
zip.com and four-11.com. Talk City asserts that each of these domain names contains a well-
known trademark of an Internet company, and that Mr. Robertson registered these names to
misdirect Internet traffic to his company’s MP3.com website. The complaint further claims that Mr.
Robertson has not used the talk-city.com domain name in connection with a bona fide offering of
goods or services and is not making any legitimate noncommercial or fair use of the domain
name.

Attached to the complaint are two letters Talk City’s counsel sent to Mr. Robertson objecting to
his registration of the talk-city.com domain name. Although no written response appears in the
record, Mr. Robertson apparently replied (through counsel) that he would not transfer the domain
name to Talk City absent a payment by Talk City.

Procedural History

After determining that Talk City’s complaint met the relevant procedural requirements, the WIPO
Arbitration and Mediation Center (the "Center") commenced this proceeding on January 26, 2000.
The Center transmitted the complaint to Mr. Robertson and his counsel at Cooley Godward LLP
by mail, facsimile and e-mail, and informed them that a response was due by February 14, 2000.
When Mr. Robertson failed to respond by the deadline, the Center issued a Notification of Default
on February 15, 2000. On February 16, 2000, the Center appointed David H. Bernstein of
Debevoise & Plimpton as the Panelist in this matter.

In response to the appointment of the Panel, Respondent (through an in-house lawyer at

MP3.com, Inc.) sent an e-mail to the Center the evening of February 16, 2000. The e-mail stated
that, since receipt of the complaint, Respondent had attempted to resolve this dispute amicably
by offering to transfer the domain name to Talk City, but that Talk City refused to settle the
dispute unless Mr. Robertson would agree to reimburse Talk City for its fees and costs. In light of
these facts, Respondent asserted, the proceeding should be terminated under Rule 15(e) of the
Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") because Talk City
brought the proceeding in bad faith simply to harass Mr. Robertson. The e-mail concluded by
reiterating that Mr. Robertson was "ready, willing and able to transfer the Domain Name in
question directly to Talk City." The following day, in response to Respondent’s February 16 e-
mail, Talk City stated that it took "strong exception" to the "mischaracterization[s]" in
Respondent’s e-mail.

On February 28, 2000, Respondent (this time through his outside counsel, Cooley Godward LLP),
submitted a "Request for Termination of Proceedings and to Set Aside Default." The Request
stated that Respondent had taken steps to transfer the domain name "talkcity.net" [sic] to Talk
City, and therefore that this proceeding should be terminated pursuant to Rule 17(b) because it
now is unnecessary to continue the proceeding. In the alternative, Respondent asked that the
default be set aside on the ground that his failure to respond was "inadvertent" because "there
was some confusion as to the appropriate time and format for which to respond."

Decision
For the reasons stated below, the domain name talk-city.com should be transferred to Talk City.

a. Respondent’s Late Submissions.

Before reaching the merits, the Panel must decide whether to consider Respondent’s
February 16, 2000 e-mail and February 28, 2000 Request, both of which were sent after the
deadline for response, and what weight to accord them. Under the Rules, this determination is
solely within the discretion of the Panel. Rule 10(a), (d). See also WIPO Notification of Complaint
and Commencement of Administrative Proceeding ("Notification of Commencement") 6 ("The
Administrative Panel will not be required to consider a late-filed Response, but will have the
discretion to decide whether to do so.").

i. The February 16 e-mail.

Because the February 16 e-mail was sent just two days after the deadline and on the same day
that the Panel was appointed, and because it was received before the Panel began any
substantive review of this matter, it is appropriate to consider the e-mail. In fairness, and to avoid
any prejudice, the Panel also has considered Talk City’s February 17 response.

After considering Respondent’s February 16 e-mail, the Panel has concluded that it will not
accord any weight to the facts alleged in it. That is because Respondent’s e-mail did not contain
any certification that the information contained in the e-mail was, "to the best of Respondent’s
knowledge complete and accurate." Rule 5(b)(viii). Without the benefit of this certification, it is not
appropriate to accept the factual assertions contained in the e-mail. Although the Panel is granted
discretion to consider late responses, it is not granted similar discretion to waive the Rule 5(b)(viii)
certification requirement. Moreover, given that we still are in the early stages of the ICANN
uniform dispute resolution process, it is arguably even more important than usual to insist on strict
compliance with the Rules. Inconsistent approaches to the Rules will only cause a loss in
confidence in the Uniform Domain Name Dispute Resolution Policy (the "Policy") and the Rules
promulgated by ICANN.

ii. The February 28 Request.

The February 28 Request poses a different issue. This submission was not sent until two weeks
after Respondent’s deadline for a response, and on the eve of the deadline for the Panel’s
decision (March 1, 2000). See Rule 15(b) (absent extraordinary circumstances, Panel decisions
are due within two weeks of the Panel’s appointment). For this reason alone, the Panel would be
justified in disregarding this submission.

Moreover, Respondent has shown no entitlement to the requested relief. Respondent’s claim that
he "inadvertent[ly]" failed to respond to the complaint rings hollow given that Mr. Robertson
clearly received notice and consulted with his counsel prior to the February 14 deadline. Indeed,
his counsel’s February 16 e-mail states that, since receipt of the complaint, Respondent had
pursued settlement negotiations with Talk City, including on February 8, which shows that
Respondent received and began to act on the complaint prior to the deadline. Furthermore, by
the time of the February 16 e-mail, Respondent knew he was in default, yet submitted no request
for the default to be lifted, either in that e-mail or shortly thereafter. To set aside the default at this
time, absent extraordinary, compelling reasons, would be unfair to Talk City, which expects a
decision by March 1, and could undermine potential claimants’ expectation that resort to the
Policy can lead to an expedited resolution of domain name disputes pursuant to the Rules.

Similarly without merit is Respondent’s assertion that he did not respond to the complaint in a
timely fashion because "[t]here was some confusion as to the appropriate time and format for
which to respond." The Center’s Notification of Commencement, sent both to Respondent and his
counsel, clearly stated:

Deadlines. Within 20 calendar days from the day you receive this notification you must submit to
the Complainant and to us a Response according to the requirements that are described in the
Rules, Paragraph 5 and the Supplemental Rules. The last day for sending your Response to the
Complainant and to us is February 14, 2000.

Notification of Commencement 5. The Rules, to which Respondent was referred in

the Notification of Commencement, are similarly clear. See Rule 5(a) ("Within twenty (20) days of
the date of commencement of the administrative proceeding the Respondent shall submit a
response to the Provider."). Moreover, both Mr. Robertson (CEO of a prominent Internet
company) and his outside counsel, Cooley Godward LLP (a well known law firm) are
sophisticated parties. For all these reasons, there is no basis to lift the default in this matter.

b. Respondent’s Arguments that the Proceeding Should be Terminated.

In the February 16, 2000 e-mail, Respondent argues that the proceeding should be terminated
under Rule 15(e) because Talk City brought the proceeding in bad faith simply to harass
Mr. Robertson. The Panel rejects this argument. First, as noted above, no weight is accorded to
the factual assertions in the e-mail, and thus there are no facts before the Panel that would justify
termination. Second, even if the factual statements in Respondent’s e-mail were accepted, they
would not provide any basis for a finding of bad faith. That Mr. Robertson previously offered to
transfer the domain name to Talk City in return for "some nominal consideration," and now offers
to transfer it without receiving any consideration, is not sufficient evidence to show that Talk City
has pursued this matter in bad faith or with an intent to harass. To the contrary, having been
unable to resolve the dispute with Mr. Robertson directly, it was fully appropriate for Talk City to
have invoked the Policy. Accordingly, the Panel finds that Talk City has not abused the
administrative proceeding process, and declines to terminate this proceeding under Rule 15(e).

There similarly is no basis for terminating the proceeding under Rule 17(e), as Respondent
requested in his February 28 submission. Not only has the Panel decided to disregard that
submission, but also, Respondent’s reference in that submission to transfer of the domain name
"talkcity.net", which is not even the subject of this proceeding, is irrelevant. Furthermore, even if
Respondent were to try to transfer the domain name talk-city.com to Talk City, it would be unable
to do so unilaterally during the pendency of this proceeding. See Policy 8(a) (a registrant may not
transfer a domain name during a pending administrative proceeding unless the transferee agrees
in writing to be bound by the arbitrator’s decision).

c. Respondent’s Offer and Attempt to Transfer the Domain Name.

A more difficult issue is presented by the statement in the February 16, 2000 e-mail that Mr.
Robertson now is "ready, willing and able to transfer the Domain Name in question directly to Talk
City," and by the claim in the February 28 submission that Respondent has begun the process of
transferring the domain name at issue in this case (which was improperly identified as
"talkcity.net") to Talk City. In light of this offer, the Panel initially was tempted to rule that the
domain name should be transferred and that it is unnecessary to reach the merits of the dispute.
On reflection, though, that would not be an appropriate resolution.

The Rules expressly provide that the proceeding may be terminated if the parties "agree on a
settlement." Rule 17(a). Although Mr. Robertson has now offered all of the relief that Talk City
seeks in this proceeding, Talk City has not "agreed" to accept that offer. Given that Mr. Robertson
did not make this offer until after the filing of the complaint, Talk City is entitled to a decision on
the merits. This conclusion is consistent with the Rules’ mandate that, in the event of default, the
Panel "shall decide the dispute based upon the complaint," absent exceptional circumstances.
Rule 5(e) (emphasis added); see also Rule 14(a).

d. Respondent’s Failure to Answer.

Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts
as true all of the allegations of the complaint. The Rules expressly provide that the Panel "shall
draw such inferences" from the Respondent’s failure to comply with the rules "as it considers
appropriate." Rule 14(b). Moreover, when a respondent defaults, the Rules direct the Panel to
"proceed to a decision on the complaint." Rule 14(a); see also Rule 5(e). Furthermore, the Panel
is charged with rendering its decision "on the basis of the statements and documents submitted."
Rule 15(a).

Even were the February 16, 2000 e-mail treated as an answer, it would not affect this decision.
That is because, in addition to the absence of the required certification, Respondent’s e-mail
made no attempt to respond directly to the allegations of the complaint. Nor has Mr. Robertson
articulated any legitimate reason for his registration of this domain name or countered the charge
that he registered the domain name in bad faith.

e. Evidence of Bad Faith Registration and Use.

In its complaint, Talk City argues that bad faith can be found for three independent reasons: (a)
Mr. Robertson refused to transfer the domain name talk-city.com to Talk City absent a payment
by Talk City in excess of the expense Mr. Robertson incurred in registering the domain name; (b)
Mr. Robertson registered and used the domain name for purposes of attracting Internet users to
his company’s MP3.com website; or (c) Mr. Robertson’s registration of the domain name has
created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the
MPS.com website.

Talk City has properly alleged, and Respondent has not contested, that Mr. Robertson registered
and used the domain name in order to attract Internet uses to the MP3.com website, and that
MP3.com, Inc. derives significant advertising revenues based on the amount of Internet traffic
directed to its site. This showing is sufficient to satisfy the requirement that, to justify transfer, a
complainant must show that the domain name was registered and used in bad faith. Policy 4(a)
(iii). See also Policy 4(b) (listing non-exhaustive examples of evidence of bad faith use and
registration). In light of this finding, the Panel need not consider Talk City’s alternate bases for a
showing of bad faith.

Conclusions

The Panel finds that Mr. Robertson owns a domain name (talk-city.com) identical or confusingly
similar to Talk City’s trademark (TALK CITY), has no rights or legitimate interests in respect of the
domain name, and registered and used the domain name in bad faith. These three factors entitle
Talk City to an order transferring the domain name from Mr. Robertson to Talk City. Policy 4(a).

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel orders that the registration of the
domain name talk-city.com be transferred to Talk City, Inc.
 David H. Bernstein
Presiding Panelist

Dated: February 29, 2000