RESPONSE AND BASES

I.

IDENTIFICATION OF RESPONDENT

As noted in Paragraph 1 of the Complainant Cover Sheet, Complainant identified Irish Realty Corporation ("IRC") as the registrant of . Although IRC is currently listed in the Network Solutions WHOIS database as the registrant of this domain, the true owner is rockcity.com, L.L.C. The administrative contact for this domain name is John Kennedy, one of the founding owners of rockcity.com, L.L.C. John Kennedy is also an owner of IRC, which is the manager of rockcity.com, L.L.C. Prior to the formation of rockcity.com, L.L.C., John Kennedy and IRC obtained ownership of (as well as other similar domain names) on behalf of rockcity.com, L.L.C. Although rockcity.com, L.L.C. now owns these domain names, IRC holds the registrations on behalf of rockcity.com, L.L.C. Therefore, both IRC and rockcity.com, L.L.C. are Respondents in this proceeding and all references to "Respondent" refer collectively to IRC and rockcity.com, L.L.C.

II.

SUMMARY OF RESPONSE

This dispute is not an "Applicable Dispute" as narrowly defined by the ICANN Uniform Domain Name Dispute Resolution Policy and Rules (the "Policy" and "Rules"). Complainant has not met and cannot meet the three required factors under Paragraph 4(a) of the Policy. As shown by the record below, Respondent acquired the domain name in March 1999 and has been using the name and mark ROCKCITY.COM in connection with the domain name since that time. In October 1999, rockcity.com, L.L.C began providing its original episodic programming to the public via the Web site. Respondent never "held" the domain name without using it and Respondent never offered to sell it to Complainant or any other person. Accordingly, Respondent requests maintenance of the status quo with respect to ownership of the domain name and a finding of Complainant's Reverse Domain Name Hijacking pursuant to Rule 15(e).

III.

THE DISPUTE IS NOT WITHIN THE SCOPE OF PARAGRAPH 4(a)

Paragraph 4(a) of the Policy, entitled "Applicable Disputes" defines the limited circumstances of "cybersquatting" in which imposition of the mandatory administrative proceeding is warranted. This Paragraph states as follows:

Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
you have no rights or legitimate interests in respect of the domain name; and
your domain name has been registered and is being used in bad faith.

By its own terms, the Policy requires that each of these three factors must be present in order to invoke the mandatory administrative proceeding. However, it is far from clear that Respondent's domain name is "confusingly similar" to Complainant's trademark. Moreover, Complainant has not provided and cannot provide any evidence to support either the second or the third factor. Respondent addresses each required factor in detail below.

The Domain Name Is Not Identical Or Confusingly
Similar To Complainant's Trademark "ROCK CITY NEWS"

Complainant claims to have acquired trademark rights in the mark "ROCK CITY NEWS" in connection with a rock music newspaper. This mark is not identical to the domain name . It also is not confusingly similar to because the parties' goods and services are unrelated. The Web site is not a rock and roll newspaper. Rather, rockcity.com, L.L.C. produces and airs reality-based original content programming on a variety of subjects. Moreover, Complainant's mark "ROCK CITY NEWS" is descriptive of its rock music newspaper and, thus, is an inherently weak mark. Further, the primary component, "ROCK CITY" is highly diluted – Respondent easily identified numerous examples of third party uses of the mark and close variations. For examples of such uses, see Exhibit 1. Thus, it is highly unlikely that Complainant's weak and diluted mark would be found "confusingly similar" to anything but a virtually identical mark that is used in connection with virtually identical goods, which Respondent's name/mark is not.

ii.

Respondent Has Substantial Legitimate Rights
And Interests In The Domain Name

Under the Policy, a respondent can demonstrate that it has legitimate rights and interests in its domain name by showing that it has (1) used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to notification of the dispute; or (2) has been commonly known by the domain name, even if it has not acquired trade/service mark rights in the name. In stark contrast to these low thresholds for showing legitimate rights and interests, Respondent and rockcity.com, L.L.C. have made substantial, ongoing, commercial and documented use of the domain name since at least as early as March 1999. Moreover, rockcity.com, L.L.C. has acquired substantial service mark rights in the domain name, dating back to at least as early as October 1999. The following documented background facts about Respondent and the development of the rockcity.com, L.L.C. online media business provide ample evidence to refute Complainant's false allegations to the contrary.

In February 1999, John Kennedy and the other founders of rockcity.com, L.L.C. began making preparations to establish an online media content business. As part of these early preparations, the founders selected the name ROCKCITY.COM to serve as the company's primary name and service mark. The founders attempted to register the corresponding domain name but discovered that it had already been registered by an individual named Yun Ye. The Network Solutions WHOIS report for as of February 1999 is attached as Exhibit 2. Therefore, John Kennedy, via his company IRC, contacted Yun Ye and negotiated the purchase of the domain name. A copy of the check used for purchase of the domain name from Yun Ye is attached as Exhibit 3. The Network Solutions domain name assignment form, assigning ownership from Yun Ye to Respondent in February 1999, is attached as Exhibit 4.

In March 1999, the founders organized the business entity rockcity.com, L.L.C. as an Oklahoma limited liability company. A copy of the Certificate of Limited Liability Company for rockcity.com, L.L.C. dated March 2, 1999 is attached as Exhibit 5. The Articles of Organization for rockcity.com, L.L.C. appoint Respondent as the initial manager of the company. A copy of the Articles of Organization are attached as Exhibit 6. The company's Articles of Organization also indicate that the street address of rockcity.com, L.L.C.'s principal place of business is 120 North Robinson, Suite 2100, Oklahoma City, Oklahoma 73102. This address is the First National Center of Oklahoma City which was, and continues to be, the principal place of business for rockcity.com, L.L.C.

Just days after Respondent formed rockcity.com, L.L.C., Respondent, through its intellectual property attorney, filed an application for federal registration of the mark "ROCKCITY.COM." A copy of the United States Patent and Trademark Office online status report for the ROCKCITY.COM service mark application is attached as Exhibit 7. During the summer of 1999, Respondent prepared for the launch of the Web site by producing original content for online broadcast. In particular, rockcity.com, L.L.C. produced episodes of a reality-based show about a cross-country, forty-four city tour by six cast members chosen by rockcity.com, L.L.C. called "RockCity Limits." Examples of invoices for services rendered to rockcity.com, L.L.C. in connection with the production of RockCity Limits are attached as Exhibit 8.

By August of 1999, the Web site was launched with the publication of a "coming soon" page containing the rockcity.com, L.L.C. trade name, the ROCKCITY.COM service mark and logo and advertising about the upcoming entertainment services that would be provided at the site. A printout of this page from the rockcity.com, L.L.C. domain server archive is attached as Exhibit 9. On October 1, 1999, rockcity.com, L.L.C. fully launched the Web site with the broadcast of its first originally produced Internet program. The Web site has been continually updated since its initial launch with the production of numerous other shows and activities. Printouts of representative pages from the current site, which demonstrate the nature and scope of the bona fide broadcast services offered at the site, are attached as Exhibit 10.

Since its inception in early 1999, Respondent has invested approximately $2 million in the Web site, including real estate leases, production costs, employee salaries and wages, legal expenses, and other general business expenses required to run a commercial, online media production and broadcast company. Respondent has produced seven original shows, each with multiple episodes that have been broadcast hundreds of times via the Web site. Since its inception, rockcity.com, L.L.C. has solicited and retained sponsors and advertisers that have advertised at the Web site including Yahoo, MP3 and Pepsi. (For example, see Exhibit 10 at page 9.) Depending on production schedules, the company has between five and twenty employees and contractors and maintains offices in Oklahoma City, Oklahoma, Norman, Oklahoma and Los Angeles, California.

Rockcity.com, L.L.C. has conducted business under the corporate name rockcity.com, L.L.C. and, accordingly, has been commonly known as "rockcity.com" by those with whom the company does business since at least as early as March 1999. Rockcity.com, L.L.C. has acquired service mark rights in the service mark "ROCKCITY.COM" in connection with the broadcasting of original programming via the Web site, dating back to at least as early as October 1, 1999. In addition, upon the examination of its ROCKCITY.COM trademark application, a United States Patent and Trademark Examining Attorney affirmatively found that the mark ROCKCITY.COM is not likely to cause confusion with any other mark on the Register or any prior filed application. As evidence of this finding, see the United States Patent and Trademark Office online status report for the application (Exhibit 7) which indicates that the application has been "published."

The above facts, all of which are fully documented, more than satisfy the Policy's litmus test for showing Respondent's legitimate rights and interest in the domain name. First, Respondent used the domain name and the corresponding trade name and service mark in connection with the bona fide offering of original media broadcasting from for nearly eight months prior to receiving notification of this dispute. In fact, Respondent first made demonstrable preparations for such use well over a year before notification of this dispute or, for that matter, before receiving any contact by Complainant whatsoever. Second, rockcity.com, L.L.C. has been commonly known by the domain name and the trade name rockcity.com, L.L.C. – in addition to acquiring service mark rights in the ROCKCITY.COM mark – since well before notification of this dispute.

iii.

Respondent Has Not Registered or Used
The Domain Name In Bad Faith

Complainant has attempted to establish that Respondent registered the domain name in "bad faith" by alleging numerous recklessly false and defamatory facts – none of which are documented by Complainant's purported "evidence." Respondent feels compelled to state that all of these allegations are either irrelevant to the issue or wildly false and apparently fabricated. First, contrary to Complainant's allegations, Respondent did not hold the domain for three years before using it. As demonstrated above, Respondent purchased the domain name in February 1999, started using the domain name in August 1999 and fully launched its online business in October 1999. Complainant's first contact with Respondent was in February of this year. The email sent by Complainant to Respondent dated February 7, 2000 is attached as Exhibit 11.

Respondent also did not offer to sell the domain to Complainant. Complainant claims that "J. Sloatman" of "Only Multi-Media, Inc." offered to sell the domain in February 1997 for $25,000. However, Respondent and rockcity.com, L.L.C. are in no way related to either "J. Sloatman" or "Only Multi-Media, Inc." and have no knowledge of "J. Sloatman" or "Only Multi-Media, Inc." Moreover, because Respondent acquired the domain name from Yun Ye in March 1999, Respondent could not possibly have made the alleged offer. (See Exhibits 2-4.)

Finally, Complainant's allegations that rockcity.com, L.L.C. registered and uses the domain name in order to "capture [its] audience and reputation" is simply absurd. Rockcity.com, L.L.C. is a global service, not a local one, attracting its audience from all over the world. For example, the Web site receives its fifth largest number of hits from Saudi Arabia. See Exhibit 10 at page 4 for a list of the top ten countries from which draws its audience. Moreover, there is no evidence to suggest or reason to believe that Respondent would even benefit from any consumer confusion between Complainant's local music news business and its own media production and Internet broadcast business.

Therefore, Complainant has failed to establish any "bad faith" on behalf of Respondent and, in sum, Complainant has not been able to demonstrate any of the three requirements for establishing that this is an Applicable Dispute under the Policy. Accordingly, the Panel should summarily dismiss the Complaint.

IV.

CORRECTION OF OTHER FALSE STATEMENTS OF FACT

In order to assist the Panel in deciphering Complainant's allegations and to support Respondent's request for sanctions, Respondent submits the following corrections and clarifications for the record:

The name "rockcity.com" as used by Respondent is meant to refer to creativity, fun, action and reality. Respondent's services are not related to "rock and roll" nor are they particularly related to music. Instead, the rockcity.com, L.L.C. business involves reality-based original content programs and broadcasting services. The name and mark "ROCKCITY.COM" is arbitrary or suggestive – not descriptive – of Respondent's services.

The Web site does not contain – and has never contained – any programming concerning a rock and roll band that comes to Los Angeles or, for that matter, any rock and roll band whatsoever. The subject matter of the Web site has nothing to do with the Los Angeles music scene. Respondent can only conclude that Complainant either has not even looked at the content at or is intentionally misrepresenting the facts. Printouts of representative pages from the current Web site are attached as Exhibit 10.

Complainant alleges that rockcity.com, L.L.C. does not have any bona fide business operations in Oklahoma and implies that rockcity.com, L.L.C. is not properly organized under the laws of Oklahoma. Although the rockcity.com, L.L.C. production office is located in Los Angeles, California, as noted above, its principal place of business has always been in Oklahoma City, Oklahoma. Neither Respondents nor rockcity.com, L.L.C have attempted to obtain a "fictitious business name" in Los Angeles or in any other jurisdiction. Complainant similarly attempts to cast doubt upon the legitimacy of the rockcity.com, L.L.C. business by claiming that Respondent "transferred or changed registrants" or "changed the address" of the domain name registration. These allegations are also unsupported and untrue.

"Rockcity.com" does not reflect Complainant's "famous trademark." First, if Complainant has established any trademark rights at all, they are in the mark "ROCK CITY NEWS" as used in connection with a local music newspaper. This mark cannot be "famous" in the trademark sense because it is highly descriptive of the goods offered in connection with the mark. Moreover, the mark is highly diluted, which is fundamentally incompatible with "famousness." See Exhibit 1 for numerous examples of third-party uses of the mark ROCK CITY and close variations, including two federal registrations.

V.

CONCLUSION: REVERSE DOMAIN NAME HIJACKING

Complainant has, without basis, attempted to harass Respondent into forfeiting its legitimately owned property. As a result, Respondent has, without justification, been forced to expend valuable time and a substantial amount of money to protect its property and reputation. Accordingly, Complainant should be sanctioned, so as to discourage any such future harassment before this Forum. Rule 15(e) vests this Panel with the authority to impose such sanctions in the form of public censure:

If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

If Complainant has demonstrated anything before this Panel, it is its own bad faith and desire to "punish" Respondent for being the rightful owner of the domain name. Complainant's attempt to harass Respondent into submission is plainly an attempt to deprive the Respondent of its domain name and, as such, constitutes Reverse Domain Name Hijacking under the Rules. As such, this Panel can and should declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

VI.

REQUEST FOR RELIEF

Respondent respectfully requests that this Panel: (1) find that this dispute is not an Applicable Dispute under the Policy and summarily dismiss the Complaint; (2) maintain the status quo and Respondent's ownership of the domain name; and (3) declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.


The Complaint should also be dismissed for failure to comply with the Rule's procedural requirements. Complainant swore under penalty of perjury that "A copy of [its] Complaint together with the Complaint Transmittal Sheet has been sent or transmitted to the Respondent in accordance with Rule 2(b), Rule 3(b)(xii)." However, Complainant did not provide any service to Respondent whatsoever.


Although Complainant claims rights in the mark "ROCK CITY," Complainant's evidence only shows use of the mark "ROCK CITY NEWS" in connection with Complainant's music newspaper.



Complainant's own "evidence" demonstrates that rockcity.com, L.L.C. is conducting bona fide business operations in connection with the domain name. See, for example, Complainant's Evidence 14, 15, 16, 17, 18 and 19.



The founders also obtained several other domain names corresponding to the mark ROCKCITY.COM, such as .


The Policy states that evidence of "bad faith" includes activities such as (i) registering a domain name primarily for the purpose of selling it to the owner of the corresponding trademark at a profit; (ii) engaging in a pattern of registering domain names for the purpose of preventing trademark owners from using their marks as domain names; (iii) registering a domain name primarily for the purpose of disrupting the business of a competitor; or (iv) using a domain name to intentionally create confusion with another party's trademark for commercial gain.





(continued)

(continue)

Irish Realty Corporation – Response and Bases
File Number: FA0005000094906
Domain Name: rockcity.com
Page  PAGE 4 of  NUMPAGES 7


Irish Realty Corporation – Response and Bases
File Number: FA0005000094906
Domain Name: rockcity.com
Page  PAGE 1 of  NUMPAGES 7

Rock City vs. rockcity.com - Table of Contents w/ evidence - Complaint - Grounds - Trademark /Timeline - Response Cover - Response - Response to Response - ICANN Decision - Our Opinion/Press Release - Our Opposition to their application for trademark - Call 323-461-6600 or email us.