Interactive Telecom Group, Ltd. v. worldVOICE
Claim Number: FA0201000103575
The Complainant is Interactive Telecom Group, Ltd, State College, PA (“Complainant”) represented by Timothy A. Schoonover. The Respondent is worldVOICE, Knoxville, TN (“Respondent”), represented by Gary Hall.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nitetalk.com>, registered with Network Solutions.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Estella S. Gold, Esquire as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on January 7, 2002; the Forum received a hard copy of the Complaint on January 8, 2002.
On January 11, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <nitetalk.com> is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 January 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 31, 2002 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on January 30, 2002.
On February 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Estella S. Gold as Panelist.
The Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, Interactive Telecom Group Ltd., has registered the service mark “nite talk” on May 19, 1998 with the United States Patent and Trademark Office under Registration No. 2,158,513. Complainant contends that the disputed domain name <nitetalk.com> is identical or confusingly similar to Complainant’s registered trademark “nite talk,” actually identical but for the space between the words “nite” and “talk.”
Complainant contends that Respondent used the domain name in bad faith, intending to profit from the registration of this domain name. Complainant’s registration of the trademark with the USPTO names as a first date of use of the mark May 25, 1995.
The Respondent does not dispute that Complainant has a registered trademark in the mark “nite talk” and has registered the domain name <nitetalk.net>. Respondent obtained the domain name for <nitetalk.com> on October 2, 1997, and <nitetalk.org> on December 21, 1999.
Complainant has a registered trademark number 2,158,513 in the mark “nite talk” with a date of first use in commerce of May 25, 1995, which pre-dates Respondent’s registration of the domain names <nitetalk.com> and <nitetalk.net>. The Panel finds that Respondent attempted to sell to Complainant the domain names at a price greater than $1,000. The Respondent’s attempt to register a trademark in 2002 is not relevant to the dispute at hand.
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
Complainant asserts that it has acquired rights in NITE TALK through registration with the United States Patent and Trademark Office (Reg. No. 2,158,513 on May 19, 1998) and that the disputed domain name is identical to its mark. See Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is identical to Complainant’s MYSTIC LAKE trademark and service mark). The Panel finds Complainant’s registered mark identical to Respondent’s use of the mark.
Rights or Legitimate Interests
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because its (Complainant’s) trademark rights predate Respondent’s registration of the domain name. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent was not a licensee of Complainant; (2) Complainant’s prior rights in the domain name preceded Respondent’s registration of the domain name; (3) Respondent was not commonly known by the domain name in question).
Respondent’s non-use (passive holding) of the domain name indicates it has no rights or legitimate interests in it. See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest could be found when Respondent failed to use the disputed domain names in any way); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).
Despite Respondent’s contention that it plans to use the domain name to host an Internet newsgroup service, the Panel finds Respondent has offered insufficient evidence to demonstrate a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where Respondent alleged that it intended to use the domain name <attweb.com> for a company called “At the Web” but failed to provide any evidence as to the existence of the company); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the Respondent to demonstrate that it has rights or legitimate interests).
The Panel further finds Respondent’s trademark application to be unpersuasive as evidence that it has rights or legitimate interests in the disputed domain name. See Warnervision Entmt. Inc. v. Emprire of Carolina Inc., 919 F. Supp. 717, 722 (S.D.N.Y. 1996) (finding no trademark rights accrue to either a pending trademark application or an approved “intent to use” application); see also Banco Mercantil del Norte, S.A., v. Servicios de Comunicación En Linea, D2000-1215 (WIPO Nov. 23, 2000) (finding that Complainant had rights in the mark because Complainant first used the mark and Respondent only subsequently filed for a trademark registration of the same mark under a different class).
Registration and Use in Bad Faith
Complainant asserts that Respondent demonstrated bad faith when it rebuffed Complainant’s offer to purchase the name for $1,000 and suggested greater compensation would be required in order for it to transfer registration of the name. See Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where Respondent, a domain name dealer, rejected Complainant’s nominal offer of the domain in lieu of greater consideration); see also Cruzeiro Licenciamentos Ltda v. Sallen & Sallen Enter., D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).
The Panel finds that, although only one domain name is currently in dispute, Respondent’s registration of two names that are identical to Complainant’s mark suggests a bad faith pattern of behavior calculated to prevent Complainant from obtaining domain names that reflect its mark. Policy ¶ 4(b)(ii). See YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks).
The Panel further finds that Respondent’s passive holding of the disputed domain name offers evidence of its bad faith registration and use of the name. See Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Therefore, the disputed domain name shall be transferred from the Respondent to the Complainant.
Estella S. Gold, Panelist
Dated: February 21, 2002
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