COMBINED
RESTRICTIONS DISPUTE RESOLUTION POLICY
UNIFORM DOMAIN NAME DISPUTE RESOLUTION
POLICY
Nashua
Corporation v. Alex Pujari and Internet Incubators, Inc.
Claim
Number: FA0303000149413
Complainant is Nashua Corporation,
Nashua, NH (“Complainant”) represented by Jason A. Duva, of
Testa Hurwitz & Thibeault, LLP. Respondent is Alex Pujari and Internet
Incubators, Inc., Robards, KY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nashua.biz>,
registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.
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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the
National Arbitration Forum (the "Forum") electronically on March 14,
2003; the Forum received a hard copy of the Complaint on March 17, 2003.
On March 14, 2003, Intercosmos Media
Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the
domain name <nashua.biz> is registered with Intercosmos Media
Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant
of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified
that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a
Directnic.Com registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with the Restrictions Dispute
Resolution Policy (the “RDRP”) and the Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On March 25, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of April 14, 2003 by which Respondent
could file a Response to the Complaint, was transmitted to Respondent pursuant
to paragraph 2(a) of the Rules for the Uniform Dispute Resolution Policy as
supplemented by the Supplemental Restrictions Dispute Resolution Policy.
Having received no Response from
Respondent, using the same contact details and methods as were used for the
Commencement Notification, the Forum transmitted to the parties a Notification
of Respondent Default.
On April
30, 2003, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the Forum appointed Hon Ralph Yachnin as Panelist.
Having reviewed the communications
records, the Administrative Panel (the "Panel") finds that the Forum
has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform
Domain Name Dispute Resolution Policy (the "Rules") "to employ
reasonably available means calculated to achieve actual notice to
Respondent." Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant requests that the domain name
be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1.
Respondent’s
<nashua.biz> domain name is identical to Complainant’s NASHUA
mark.
2.
Respondent
does not have any rights or legitimate interests in the <nashua.biz>
domain name.
3.
Respondent
registered and used the <nashua.biz> domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant, Nashua Corporation, holds
several federal trademark registrations for the NASHUA mark in Respondent’s
country of domicile (e.g., U.S. Reg. No. 579,753). Complainant
has used the NASHUA mark since as early as 1911 in connection with a series of
goods ranging from toner (for both copiers and printers), projection screens,
and paper products. Complainant attempted to register the disputed domain name
on September 14, 2001, but due to an unexplained error on the part of NeuLevel,
Complainant’s application for registration was never finalized.
Respondent, Alex Pujari and Internet
Incubators, Inc., registered the <nashua.biz> domain name on
November 7, 2001. Complainant contacted Respondent on January 9, 2002 in an
attempt to acquire Respondent’s domain name registration. Respondent responded
to Complainant’s communication with an offer to transfer its registration in
exchange for the ability to be hired on as Complainant’s web designer for the
domain name. Respondent also noted that if Complainant did not agree to these
terms, the domain name would be used to host a website for either the city of
Nashua, New Hampshire (which already has an official website), or a city of
that name in the Bahamas (which does not exist). Since its registration of the
domain name, Respondent has not posted a website.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit
a Response, the Panel shall decide this administrative proceeding on the basis
of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a)
and 15(a) of the Rules and draw such inferences it considers appropriate
pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires
that Complainant must prove each of the following three elements to obtain an
order that a domain name should be cancelled or transferred:
(i)
the domain name registered by Respondent is identical or confusingly
similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or
legitimate interests in respect of the domain name; and
(iii) the domain name has been registered
and is being used in bad faith.
Paragraph 4(b) of the RDRP Policy defines
“bona fide business or commercial use” as the bona fide use or bona fide intent
to use the domain name or any content software, materials, graphics or other
information thereon, to permit Internet users to access one or more host
computers through the DNS:
(i)
to exchange goods, services, or property of any kind; or
(ii)
in the ordinary course of trade or business; or
(iii) to facilitate the exchange of
goods, services, information, or property of any kind or the ordinary course of
trade or business.
Bona Fide Business or Commercial Use
Respondent’s registration of the <nashua.biz>
is subject to the requirements of the RDRP Policy. The RDRP requires that the
domain name be used in connection with a bona fide business or commercial use.
The RDRP Policy ¶ 4(c) provides a list of situations that will not be
considered to be a bona fide business or commercial use of a domain name.
Paragraph 4(c)(i) specifically notes that it does not constitute a bona fide
business or commercial use of a domain name when a respondent registers the
domain name solely for the purpose of “selling, trading or leasing the domain
name for compensation.”
In the present dispute, Complainant
initiated an email exchange with Respondent to determine if and how the
disputed domain name could be transferred to Complainant. Respondent’s reply
indicated that it was willing to transfer its domain name registration, but
only in exchange for compensation. Specifically, Respondent was to be the web
designer for Complainant once the transfer was completed. Respondent also
notified Complainant that if it was not interested in the offer, Respondent was
ready to build a website for either the city of Nashua, New Hampshire (which
already had an official website), or Nashua, Bahamas (a city which does not exist).
As Respondent was initially contacted by
Complainant, and not vice-versa, Respondent’s offer to trade its domain name
registration for its web design services does not fall under RDRP Policy ¶
4(c)(ii), which specifically notes that an offer to sell, trade, or lease a
domain name must be unsolicited by the third party. However, Complainant’s
uncontested allegations do indicate that Respondent’s sole purpose in
registering the domain name was to procure some sort of transfer agreement from
a third party, trading its domain name registration in exchange for
compensation. Respondent’s willingness to transfer its registration for
compensation to Complainant, its statement to Complainant of its plan to use
the domain name in a similar manner for other parties who could be interested
in the <nashua.biz> domain name and Respondent’s non-use of the
domain name for any other purpose all support the inference that Respondent
registered the domain name with the intent to trade it off for compensation. As
stated above, registration of a domain name for this purpose is not a bona fide
business or commercial use of a domain name pursuant to RDRP Policy ¶ 4(c)(i).
Accordingly, the Panel finds that
Respondent has failed to use the <nashua.biz>
domain name in relation to a bona fide business or commercial use and RDRP
Policy ¶ 4(a) is satisfied.
As Complainant has sufficiently
demonstrated that it has rights in the NASHUA mark, the Panel finds that
transfer of the disputed domain name is appropriate in this dispute. As
Complainant has prevailed on its claim under the RDRP, the Panel need not
consider Complainant’s claim under the UDRP at this time.
Having established all elements required
under the RDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nashua.biz>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
May 1, 2003
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