Thomas McGrath d/b/a Frigid North Company v. Beecher Rintoul
Claim Number: FA0110000100486
The Complainant is Thomas McGrath d/b/a Frigid North Company, Anchorage, AK (“Complainant”). The Respondent is Beecher Rintoul, Anchorage, AK (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <frigidnorth.com>, registered with Tucows.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 4, 2001; the Forum received a hard copy of the Complaint on October 10, 2001.
On October 10, 2001, Tucows confirmed by e-mail to the Forum that the domain name <frigidnorth.com> is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 October 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 6, 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 firstname.lastname@example.org by e-mail.
A timely response was received and determined to be complete on November 6, 2001.
On November 19, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
The Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant contends that the domain name at issue is identical to the substantive portion of their trademark; that use of the domain name would be misleading as the Complainant and Respondent conduct business in the same geographical area; that the Respondent has no rights or legitimate interests in the domain name as it is not being used as a website for commerce; and that the domain name at issue was registered in bad faith.
The Respondent contends that the domain name at issue is not misleading as the Respondent and Complainant are not engaged in the same type of business and that the domain name was not registered in bad faith.
The Complainant is engaged in the business of selling wholesale and retail electronic parts and accessories, and has registered the Frigid North Co. business name in the State of Alaska, the latest renewal being in 1998.
The original Respondent states that their Internet site caters to outdoor adventure sites and is geared toward individuals located outside the state. At this time, the site is only partially operational.
There is an online store associated with Respondent’s website, offering several products identical to those in the Complainant’s inventory.
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.”
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 domain name at issue is identical in pertinent part to the Complainant’s business name, which was renewed in 1998 with the State of Alaska Department of Commerce and Economic Development, Division of Banking, Securities and Corporations. See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001).
Rights or Legitimate Interests
The Respondent is not commonly known by the disputed domain name, does not appear to be making a bona fide offering of goods or services in connection with same, and does not appear to be making a noncommercial or legitimate fair use of the disputed domain name. See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s THE BODY SHOP trademark and service mark”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
In addition, until the filing of this Complaint, it appears the Respondent was holding the domain name at issue. See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).
Registration and Use in Bad Faith
While it is not clear whether the Respondent is a direct competitor of the Complainant, the Respondent is offering identical merchandise to Complainant’s on its website. The Respondent also lives and operates business in the same geographical area as Complainant. See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).
The Complainant contacted the Respondent and offered to buy the domain name at issue for a nominal sum. The Respondent submitted a counter-offer to Complainant for $20,000. See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the Respondent demonstrates bad faith by registering the domain name for the purpose of transferring the domain name in the amount of $3,000, an amount in excess of out of pocket costs).
As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name <frigidnorth.com> be transferred from the Respondent to the Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: December 3, 2001
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page