DECISION

 

Morrow & Morrow Corporation v. Daniel Nagy

Claim Number: FA0203000106103

 

PARTIES

 

The Complainant is Morrow and Morrow Corporation, Santa Monica, CA (“Complainant”).   The Respondent is Daniel Nagy, Santa Monica, CA   (“Respondent”).

           

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <morrowandmorrow.com>, registered with Network Solutions.

 

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.

 

            Judge Richard B. Wickersham, (Ret.) as Panelist

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 22, 2002; the Forum received a hard copy of the Complaint on March 25, 2002.

 

On March 28, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <morrowandmorrow.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 March 29, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 18, 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 postmaster@morrowandmorrow.com by e-mail.

 

A timely Response was received and determined to be complete on April 18, 2002.

 

On May 1, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Richard B. Wickersham, (Ret.), as Panelist.

 

RELIEF SOUGHT

 

The Complainant requests that the domain name be transferred from the Respondent to  Complainant.

           

PARTIES’ CONTENTIONS

 

A.   Complainant

Complainant notes that its company name is Morrow & Morrow Corporation.   This name is a registered California Corporation and the Articles of Incorporation were filed March 28, 1990.

 

Complainant alleges that the Respondent has no rights or legitimate interests in respect to the domain name, <morrowandmorrow.com> because Morrow & Morrow Corporation has been registered with the State of California for the past twelve years.  Further, a dispute is alleged to have existed for some time between Respondent and Complainant in reference to Complainant’s construction of Respondent’s home at 1133 Georgina Avenue.   Complainant points out that Respondent owes Complainant $32,056.37 for work performed, in addition to $55,189.99 to others subcontracted by Complainant in the construction of Mr. Nagy’s home.  Complainant alleges that Respondent has demonstrated “overt hostility” to Complainant and “is not above” attempting in bad faith to tarnish the name of Morrow & Morrow through the use of <morrowandmorrow.com>.

 

Complainant points out that Respondent is making no legitimate non-commercial use because the Website is not set up.  Further, that Respondent is making no fair use of the domain name “because it is the name of my company,” and he has no right, relationship or authority “to use my company name.”  Complainant concludes that Respondent’s use of the domain name could only be used to divert business or to tarnish my legitimate business name and, finally, that no other legal proceedings have been commenced or terminated in connection with or relating to the domain name that is the subject of this Complaint.

 

B.   Respondent

 

Respondent alleges that:

 

            (1)  Respondent does not owe Complainant money.

 

            (2)  Respondent has not demonstrated hostility to Complainant.

 

(3) Respondent is not and has no intention of being in the construction business.  Respondent has been in the securities business for almost twenty years.  That is Respondent’s only business.

 

(4) Respondent has no intention of using this domain name to tarnish Morrow & Morrow Corporation.  It is understandable that Complainant is concerned that his name could be subject to being tarnished.  Complainant performed construction work for Respondent.  The local Building and Safety Department, Santa Monica Building & Safety inspected the work of Complainant.  The building inspectors issued a notice of code violations and correction order.  Some thirty-three code violations were documented.  Respondent has filed a Complaint with the State Contractors License Board.  That is the proper forum for resolution of the issues involved.

 

(5) Respondent has no problem with giving the domain name to the Complainant, if the Complainant is asking for the use of this domain name for his construction business.  However, Respondent is concerned Complainant has filed this Complaint for the sole purpose of denying Respondent the use of this domain name and has no intent in using it.

 

FINDINGS

 

The Panel finds that Morrow & Morrow Corporation has been registered with the State of California for the past twelve years.  Further, that a dispute has existed between Respondent and Complainant in reference to Complainant’s construction of Respondent’s home. Further, that money is owing from Respondent to Complainant and to Complainant’s subcontractors in relation to the construction of Mr. Nagy’s home.  The Panel finds that the Respondent has demonstrated overt hostility to the Complainant and is not above attempting in bad faith to tarnish the name of Morrow & Morrow through the use of <morrowandmorrow.com>.  The Panel further notes that Respondent is making no legitimate non-commercial use because the Website is not set up.  Further, Respondent is making no fair use of the domain name because it is the name of Morrow & Morrow Corporation and that Mr. Nagy has no right, relationship or authority to use the company name.  The Panel concludes that Respondent’s use of the domain name could only be used to divert business or to tarnish the legitimate business name of Morrow & Morrow Corporation.

 

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 Policy ¶ 4(a)(i).

 

Complainant contends that it has established its right to the MORROW & MORROW mark through continuous use since it incorporated its business with the State of California on March 28, 1990.  See British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the UDRP to “unregistered trademarks and service marks”; see also Sunkist Growers, Inc. v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org> and <sunkistgrowers.net> are identical to Complainant’s common law SUNKIST GROWERS mark); see also Down East Enter. Inc. v. Countywide Communications, FA96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE).

 

The disputed domain name is identical to Complainant’s mark.  Instead of using the ampersand associated with Complainant’s mark, Respondent uses “and” in the disputed domain name.  The Panel finds that since an ampersand cannot be used in a domain name, the disputed domain name and mark are identical.  See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at “www.pge.com” because the ampersand symbol is not reproducible in a domain name); see also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to Complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”).

 

            Rights or Legitimate Interests   Policy ¶ 4(a)(ii).

Complainant contends that Respondent is not commonly known as <morrowandmorrow.com> and therefore, does not have a right or legitimate interest to the disputed domain name pursuant to Policy ¶ 4(c)(ii).   See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

 

We find that since Respondent has not made any apparent use of the disputed domain name, Respondent has not made a bona fide use pursuant to Policy ¶ 4(c)(i), nor a legitimate, non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “...merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).

 

 

Registration and Use in Bad Faith   Policy ¶ 4(a)(iii).

 

Complainant claims that Respondent’s sole interest in registering the disputed domain name is to tarnish Complainant’s mark and business.   This assertion is based on previous dealings between Complainant and Respondent that went sour.  Even though Respondent has not used the disputed domain name, the Panel concludes that when Respondent uses the identical disputed domain name the use would be considered bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy’); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the Respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (“The Respondent intentionally registered a domain name which uses Complainant’s name.  There is no reasonable possibility that the name karlalbrecht.com was selected at random.  There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith”).

 

Given Respondent’s willingness to transfer the disputed domain names to Complainant (as stated in his Response), we infer that Respondent has registered and used the disputed domain names in bad faith.  See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in ICANN Policy).

 

DECISION

 

The Complainant has proved the necessary three elements to obtain an Order that a domain name should be transferred and we determine that the domain name here involved be transferred from Respondent to Complainant. 

                                   

 

JUDGE RICHARD B. WICKERSHAM, (Ret. Judge), Panelist

                                               

                                                                       

Dated: May 9, 2002

 

 

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