Thomas McGrath d/b/a Frigid North
Company v. Beecher Rintoul
Claim Number: FA0110000100486
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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
postmaster@frigidnorth.com 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.
RELIEF SOUGHT
The Complainant requests that
the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
DISCUSSION
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).
DECISION
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
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