Shamoon Advertising & Marketing, Inc.
v. TecInfo
Claim Number: FA0503000445227
PARTIES
Complainant
is Shamoon Advertising & Marketing,
Inc., (“Complainant”), 1427 South Main Street, Suite 201 Greenville,
MS 38701. Respondent is TecInfo,
(“Respondent”), 601 N. Deer Creek Dr. E., Leland, MS 38756.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <lifeinthedelta.com> and <lifeinthedelta.net>,
registered with Network Solutions, Inc.
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.
Mark
McCormick as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
22, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 23, 2005.
On
March 23, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <lifeinthedelta.com> and <lifeinthedelta.net> are registered with Network Solutions,
Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that
Respondent is bound by the Network Solutions, Inc. 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 30, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 19,
2005 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@lifeinthedelta.com and
postmaster@lifeinthedelta.net by e-mail.
A timely
Response was received and determined to be complete on April 12, 2005.
A
timely additional submission was received from Complainant on April 18, 2005.
On April 18, 2005,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mark McCormick as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that Respondent’s <lifeinthedelta.com> and <lifeinthedelta.net>
domain names are identical to Complainant’s LIFE IN THE DELTA mark and that the
addition of the generic top-level domains “.com” and “.net” are insufficient to
distinguish Respondent’s domain names from Complainant’s mark. Complainant further contends that Respondent
is not known by the disputed domain names and that Respondent is not using the disputed
domain names in connection with any active website. On that basis, Complainant alleges that Respondent has no rights
or legitimate interests in the domain names.
Finally, Complainant contends that Respondent’s registration of the
domain names was in bad faith because Respondent registered the domain names
primarily to sell them back to Complainant for a substantial profit.
B.
Respondent
Respondent
asserts that Complainant cannot claim rights in the LIFE IN THE DELTA mark
because the mark is a common phrase used in different contexts and is generic
in nature. Respondent contends that it
was holding the domain names for possible commercial use and that it thus had
rights and legitimate interests in the domain names, particularly since the
phrase “life in the delta” is generic and commonly used. Finally, Respondent contends that because
the domain names are composed of the generic phrase “life in the delta” the
Panel cannot find that Respondent registered or used the disputed domain names
in bad faith. Respondent contends it
registered the domain names to use in future business promotions.
C.
Additional Submissions
Complainant’s
additional submission consisted of additional exhibits.
Complainant since 1997 has published a
monthly magazine circulated in the Mississippi Delta region called Life in
the Delta. Complainant mails the
publication to more than 27,000 homes in an eleven-county area. Complainant sponsors community events under
the name and in November 2004 registered the name as a trademark with the State
of Mississippi. In 1998, Complainant
contracted with Respondent for Respondent to register the <lifeinthedelta.com>
domain name for it. This contractual
relationship existed through a date in 2001 when Respondent, without notifying
Complainant, deemed that the arrangement had terminated. On a date in 2003, Respondent registered the
<lifeinthedelta.com> domain name in its own name, without
Complainant having knowledge of that event.
In January 2005, Complainant determined to have another provider
establish a website for it using the <lifeinthedelta.com> domain
name. When Complainant contacted an
employee of Respondent to effect the transfer, a series of events ensued,
including a prompt registration by Respondent in its own name of the <lifeinthedelta.net>
domain name. Ultimately, Respondent
offered to sell the domain names to Complainant for $4,000, and the present
proceeding resulted.
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 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 Respondent is identical or confusingly similar to
a trademark or service mark in which Complainant has rights;
(2)
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name has been registered or is being used in bad faith.
The Panel finds that Complainant
established common law trademark rights in the LIFE IN THE DELTA mark through
its continuous use of the mark in commerce since 1997. See Lee Enter., Inc. v. Polanski, FA
135619 (Nat. Arb. Forum Jan. 22, 2003).
In addition, the registration of the mark in November 2004 with the
State of Mississippi supports Complainant’s claim of right to the use of the
mark in relation to Respondent’s registration of the <lifeinthedelta.net>
domain name in January 2005.
No doubt exists that the <lifeinthedelta.com>
and <lifeinthedelta.net> domain names are virtually identical and
certainly confusingly similar to the LIFE IN THE DELTA mark. See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000).
Rights or Legitimate Interests
Respondent is not commonly known by the
disputed domain names nor was Respondent authorized to register in its own name
the domain names featuring Complainant’s LIFE IN THE DELTA mark. In addition, Respondent has not used the disputed
domain names in connection with any active website and appears to have no
concrete plans to do so. It lacks
rights and legitimate interests in the domain names. See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum
Feb. 12, 2001); Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000); Am. Nat’l. Red Cross v. Domains, FA 143684 (Nat.
Arb. Forum Mar. 4, 2003).
Registration and Use in Bad Faith
It seems clear that Respondent registered
the disputed domain names in its own name in bad faith. This is supported by the fact that
Respondent made no use of the <lifeinthedelta.com> domain name
since its registration of the name in its own name in 2003. Then when Respondent learned of
Complainant’s interest in using the <lifeinthedelta.com> domain
name to establish its website through another provider, Respondent promptly
registered the confusingly similar domain name <lifeinthedelta.net>. Because Respondent had been engaged
initially to register the <lifeinthedelta.com> domain name for
Complainant, Respondent became acquainted with Complainant’s intentions and
plans. In addition, Respondent knew of
the importance to Complainant that the domain names be identifiable with
Complainant’s magazine. Finally,
Respondent offered to sell the registrations to Complainant for $4,000, an
amount that exceeds any reasonable computation of Respondent’s out-of-pocket
costs. Respondent’s non-use of the
disputed domain names constituted passive holding, and Respondent’s only
interest appears to have been to attempt to extract a profit from Complainant
when Respondent was contacted by Complainant in January 2005 regarding
Complainant’s interest in implementing its website plans. All of these circumstances establish
Respondent’s bad faith. See Grundfos
A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000); Digi Int’l. v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be
granted in favor of Complainant.
Accordingly, it is Ordered that the <lifeinthedelta.com>
and <lifeinthedelta.net> domain names be transferred from
Respondent to Complainant.
Mark McCormick, Panelist
Dated: May 5, 2005
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