National Arbitration Forum

DECISION

ZAO Saturn High-Tech v. Elite Business Associates

Claim Number: FA0608000780232

PARTIES

Complainant is ZAO Saturn High-Tech (“Complainant”), represented by Lisa Rosenburgh, of Salans, 620 Fifth Avenue, New York, NY 10020. Respondent is Elite Business Associates (“Respondent”), represented by Brian S. Goldman, of Goldman & Maurer, LLP, 87-46 Van Wyck Expressway, PO Box 180347, Richmond Hill, NY 11418.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <prology.com>, 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.

James Bridgeman as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 18, 2006.

On August 18, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <prology.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has 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 August 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 13, 2006 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 by e-mail to postmaster@prology.com.

A timely Response was received and determined to be complete on September 13, 2006.

A timely Additional Submission from Complainant was received and determined to be complete on September 18, 2006.

A further Additional Submission was received from Respondent on September 21, 2006.

On September 21, 2006 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant requests that the Panel issue a decision that the domain name <prology.com> be transferred to Complainant.

Since 1997, Complainant has continuously used its trademark PROLOGY for audio systems and components and multimedia products, primarily for use in automobiles, in Russia.

Complainant’s PROLOGY products are also sold in the Ukraine, Belarus, Republic of Moldova, Latvia, Lithuania, Estonia, Germany, the United Arab Emirates, Azerbaijan, Armenia, Kazakhstan, Tajikistan and Uzbekistan.

Complainant has an active presence on the Internet, and has operated a website at the <prology.ru> ccTLD address since as early as May 17, 2000. Complainant has submitted a printout of the <prology.ru> website as an annex to the Complaint.

Complainant currently holds the following registrations for its PROLOGY Trademark:

(a) Russian Trademark Registration No. 153425, issued June 16, 1997, in Classes 9, 12, 37 and 42.

(b) International Trademark Registration No. 775181, issued November 29, 2001, in Classes 9, 12 and 37.

Protection has been extended to numerous other jurisdictions throughout the world.

Complainant authorized an eponymous New York corporation Saturn High-Tech, Inc . to apply for a United States Trademark registration in its name viz. US Trademark Application Serial No. 78/645927, June 8, 2005, in Class 9 and has authorized said Saturn High-Tech, Inc as its sourcing, purchasing and shipping agent in the United States.

By reason of Complainant's extensive use, sales, advertising and promotion, the PROLOGY trademark is recognized and relied upon by the trade and the public

as identifying Complainant and its authorized goods, and distinguishing them from others and the goods and services of others . Complainant's PROLOGY trademark is distinctive and is famous in its industry and is among Complainant's most valuable assets.

Complainant submits that the <prology.com> domain name is identical or confusingly similar to Complainant's PROLOGY trademark.

Complainant's PROLOGY trademark was both famous and distinctive at the time that Respondent registered the domain name, and Respondent was familiar with the PROLOGY trademark at that time. Complainant has established its rights in and to the PROLOGY trademark, through use in Russia since 1997, its registration with the Russian Trademark Office and under the Madrid Agreement and Protocol, and submits that Respondent's domain name is confusingly similar thereto, in accordance with Paragraph 4(a)(i) of the Policy.

Complainant further submits that the domain name <prology.com>, used and registered by Respondent, is identical to Complainant's PROLOGY trademark. The mere addition of the TLD extension ".com" to the registered trademark does not alter the fact that the domain name is confusingly similar thereto . It is well-settled under the Policy that the top level indicator " .com" should not be taken into account when considering identity or confusing similarity. See Inter-Continental Hotels Corporation v. Cheap-Hotel-Room, Inc., D2004-1041 (WIPO March 12, 2004); Six Continents Hotels, Inc. v. Albert Jackson, D2003-0922 (WIPO February 2, 2004); Red Bull GmbH v. Tony Marinelli, D2001-0522 (WIPO June 28, 2001); Grupo Ferrovial, S.A. v. Carlos Zamora, D2001-0017 (WIPO March 4, 2001); The Toronto Dominion Bank v. Boris Karpachev, D2000-1571 (WIPO January 15, 2001); Reuters Limited v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000).

Complainant further submits that Respondent has no rights or legitimate interests in the domain name. Respondent has not used, nor made demonstrable preparations to use, the domain name in connection with any bona fide offering of goods or services, is not commonly known by the domain name, and has not made any legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's PROLOGY trademark. Further, Complainant has not licensed or otherwise authorized Respondent's use of its trademark in any manner, including use in Respondent's domain name.

Respondent has not used the subject domain name for any purpose. Passive holding of a domain name has been held to evidence that a domain name user has no rights or legitimate interests in or to the domain name, as well as bad faith use and registration thereof. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO November 13, 2000); Telstra Corporation Ltd. v. Nuclear Marshmallows D2000-0265 (WIPO February 18, 2000). The fact that Respondent registered the domain name on April 19, 2002 but has never made use of the domain name is evidence of passive holding of the domain name.

In view of the above, Respondent has no rights or legitimate interests in the domain name, satisfying paragraph 4(a)(ii) of the Policy.

Complainant submits that the domain name was registered and is being used in bad faith and argues that Respondent's passive holding of the domain name constitutes bad faith use and registration thereof.

On or about 1999, the principal from Saturn High-Tech, Inc. met with the Chairman of Respondent and entered into an informal oral arrangement whereby Saturn High-Tech, Inc., used Respondent’s business address for various business matters in the United States, and the said Chairman of Respondent, through his various companies viz. Elite Business Associates, I & I Brokerage, Inc. and Digital Advantage, Ltd., assisted Saturn High-Tech, Inc. with various business matters in the United States. Saturn High-Tech, Inc. and the Chairman of Respondent conducted various business activities from that time until April 2006.

In the year 2000, said Chairman of Respondent assisted Saturn High-Tech, Inc. to incorporate in the United States through his company I & I Brokerage Inc. In August 2000, he visited Complainant's display booth at an exhibition in Moscow. During the exhibition, he also visited Complainant's offices in Moscow.

Furthermore, in November 2001, said Chairman of Respondent requested and received samples of PROLOGY car speakers and submitted a proposal to Complainant to market PROLOGY products in the United States. Complainant has annexed a copy proposal to the Complaint.

Complainant submits that in view of this relationship with Saturn High-Tech, Inc., as well as the Chairman’s visit to Complainant's offices in Moscow, Respondent was well aware of the details of Complainant's business, the PROLOGY trademark and PROLOGY products.

Without authorization from Complainant, on April 19, 2002, Respondent registered the domain name <prology.com>.

The domain name is currently inactive and indicates "This Site is Under Construction and Coming Soon". Screen prints from Respondent's website, dated June 8, 2006 and August 8, 2006 are attached to the Complaint.

Complainant submits that Respondent has never had an active website at the <prology.com> address and has annexed screen prints from the Wayback Machine Internet Archive from June 4, 2002, November 28, 2002, September 25, 2003, November 30, 2003, March 23, 2004 and January 23, 2005 to the Complaint to support this assertion.

After learning of Respondent's registration of the domain name, Complainant contacted Respondent to request transfer of the <prology.com> domain name. Respondent replied that the domain name had been registered on Complainant's behalf and promised to transfer it to Complainant. On various subsequent occasions after learning of Respondent's registration of the subject domain name, Complainant requested that Respondent transfer the domain name to Complainant but Respondent did not comply with any of these requests. On or about April 17, 2006, Complainant sent a fax request to Network Solutions requesting transfer of the subject domain name. Network Solutions denied the request as the name and address of record for Complainant was not the same as the name and address of record for the domain name.

In response to Complainant’s request to transfer the domain name, Respondent forwarded an e-mail to Complainant asking for an explanation. Complainant replied to Respondent advising that Complainant owns the PROLOGY trademark and that Respondent failed to comply with the promises to transfer the domain name to the Complainant. Registrant again denied Complainant’s request to transfer the subject domain name. Copies of various emails to and from the Complainant are annexed to the Complaint.

Complainant notes that the list of circumstances that may be taken as evidence of "bad faith" use and registration in paragraph 4(b) of the Policy is illustrative and not exhaustive. Given Respondent's business relationship with said Saturn High Tech, Inc., Respondent clearly had knowledge of Complainant's PROLOGY trademark as well as Complainant's business in general when it registered the domain name in its own name. In addition, despite Respondent's acknowledgement that the domain name was registered on Complainant's behalf and Saturn High Tech, Inc.'s repeated requests that Respondent transfer the domain name to Complainant, Respondent failed to transfer the domain name to Complainant. There could be no good faith explanation for Respondent's actions. As such, Respondent’s activities correspond to those listed in paragraph 4(b) of the Rules, as evidence of bad faith registration and use of a domain name.

Complainant further submits that Respondent’s failure to respond to Saturn High Tech, Inc.'s requests for transfer of the domain name to Complainant is also evidence of bad faith, and argues that if Respondent believed it had legitimate rights in and to the domain name and/or that it used and registered the domain name in good faith, it should have responded explaining its position. Instead, Respondent refused to comply with Saturn High Tech, Inc.'s requests even after acknowledging that the domain name had been registered on Complainant's behalf. See Mars, Incorporated v. Vanilla, Ltd., D2000-0586 (WIPO September 1, 2000) (The Panel stated "[a]lthough a registrant has no obligation to respond or acknowledge unsolicited inquiries from others about its domain name, a lack of response raises the possibility that the contact information is incorrect or that the registration was obtained for a bad faith purpose. Therefore, one expects that a good faith registrant would provide some reply to reasonable inquiries.").

Based on the evidence presented above, the requirements of Paragraph 4(a)(iii) of the Policy have been proved.

B. Respondent

Respondent asserts that Complainant has failed to meet its burden and, therefore, this Panel should refuse Complainant’s request to transfer the <prology.com> domain name to Complainant.

Respondent states that its Chairman was approached by a principal of the Claimant to assist him with registration of the corporate name of Saturn High Tech, Inc. (a New York Corporation). The principal of the Claimant also requested that Saturn High Tech, Inc. be permitted to use Respondent’s office as a base of its operations on a temporary basis. Respondent consented to this request.

In addition, said principal of the Complainant, approached Respondent with a business proposition: to help him buy Clarion (auto stereo speakers and systems) for distribution in Russia and other former Soviet Republics (Clarion refused to sell any of its products to him).

On July 17, 2001, Respondent registered the name <prology.com>. At the time of registering the name, Respondent had no knowledge that there was any relationship between the name PROLOGY and Complainant.

On August 21, 2001, Respondent met with persons affiliated with a third party, Harmon International in Moscow. The purpose of Respondent’s visit was to enter into a business relationship with Harmon International as he already had a business relationship with Clarion and was selling its products. At the time of his visit to Moscow, Respondent did not attend any trade show nor did he “visit with anyone on behalf of Prology” nor was he made aware of the name from any source. After spending four days in Moscow, Respondent continued on to Berlin to attend another show as a guest of Harmon International.

In or around October, 21, 2001, Respondent was verbally approached by a third party with a proposal to distribute Russian manufactured car alarm systems under the name of “ALLIGATOR” and audio speakers and systems under the name of “PROLOGY,” in the United States. Since that time Respondent had developed strong contacts in the car stereo industry. In response, Respondent requested samples of these products, which samples were never received and, therefore, no business was ever conducted.

In or about April 2002, Respondent contacted Network Solutions and renewed the registration of the domain name <prology.com>. Respondent requests the Panel to note in particular that Respondent renewed this registration and it will expire in April, 2014, thus demonstrating Respondent’s intent not to sell or transfer this name, but to keep it and use it to cultivate business with this name. At the time of the renewal, Respondent changed the ownership into the business name, Elite Business Associates.

At the time of the original registration of <prology.com>, a search was made and no such or similar name existed. A copy of the WHOIS record is annexed to the Response.

Over the years that Respondent has been the owner of the <prology.com> domain name, Respondent has had numerous requests by individuals from the former republics of the Soviet Union to purchase this domain name. Respondent has refused to sell the name as Respondent has planned to use this unique name with respect to an Italian ice cream product (gelato) which Respondent has been developing for some time in partnership with Italian based companies such as Montebianco, Fabbri, Fugar, Anselmi, etc. for the import and mass production of Gelato for supermarket and household use in the United States. At the present time, Respondent has formed a company in the State of California, “Mambo Gelato, Ltd,” which is heavily involved in this venture. Respondent has annexed a copy of the corporate registration certificate to the Response.

‘Prolo-Gelato’ is being used as a test name and Respondent has been maintaining the ownership of <prology.com> as it is a close match to the name of the planned future product. This also explains why Respondent’s website established at the <prology.com> address is still under construction, as Respondent and its associates have not finalized this new business venture due to the fact that the product they are producing is subject to approval by the United States Department of Agriculture and the FDA.

At various times since Respondent purchased the <prology.com> domain name, Respondent has been advised by Network Solutions that there have been anonymous offers for as much as $25,000 to purchase this name. However, Respondent has never entertained such a thought as it was planned to use this name in the future.

Respondent submits that there is a number of irregularities in the Complaint. In particular, the exhibit that purports to contain evidence of Complainant’s trademark registrations annexed to the Amended Complaint contains a purported foreign document with no official translation. Respondent has no way to verify any of the contents of this translation and asks that no weight or credibility be afforded to same.

Furthermore Respondent submits that Complainant has attempted to illegally obtain the transfer of Respondent’s domain name by the use of fraudulent documents. Respondent refers to documents annexed to the Response that Respondent received from Network Solutions in April, 2006, wherein Complainant and its employees or others working on its behalf had fraudulently written to Network Solutions indicating that Respondent had agreed to voluntarily transfer <prology.com> to them. Said documents contain a signature of a person purporting to be an “authorized representative” of Respondent. No such individual has ever been in the employ of Respondent and no such employee has ever had an authority to act on behalf of Respondent. Upon receipt of this document, Network Solutions contacted Respondent and Respondent advised them of all of the above and no such wrongful, fraudulent transfer was ever effectuated. This individual who signed the purported transfer documents has been reported to the United States Department of State and Homeland Security.

However, the fraudulent conduct does not end there. In June 2003, a letter was sent to Russian Customs Officials announcing that Respondent was appointed vice president of Complainant and that Respondent was involved in the manufacturing products under the name “PROLOGY”. Such letterhead was fabricated by Complainant as no such business relationship has ever existed.

Finally, this Tribunal should also be made aware that Complainant has fraudulently used the name of the said Chairman of Respondent as Vice President of Complainant on invitations for various individuals seeking to obtain entry visas in to the United States.

Respondent submits that:

1. Although Complainant may have an Internet presence as <prology.ru>, it was well aware of Respondent’s ownership interest in <prology.com> since July 2001. The question one must ask is why did Complainant wait until 2005 to apply to register the PROLOGY trademark in the United States? Clearly such trademark flies in the face of the fact that there would be confusion in the ownership of this company’s name. At the time of its application to register this trademark in the United States, Complainant was well aware that Respondent was the owner of the domain name <prology.com>.

2. Respondent has never had any business relationship with Complainant or PROLOGY and any statements to the contrary are simply not true;

3. The only relationship that Respondent has had with said Saturn High-Tech, Inc. (i.e. the New York corporation separate and distinct from Complainant) was the assistance Respondent afforded to them in filing for their corporate name in New York and letting them use Respondent’s office address;

4. The reason Respondent’s website is “under construction” is based upon the business dealings that have been ongoing. The website and use of <prology.com> has never been “passive.” Rather, it has not been “used” at all, as Respondent’s business venture is not ready to proceed at this juncture;

5. While the name PROLOGY exists in the former Soviet Republics, it has no such existence in the United States markets and while <prology.ru> is similar to <prology.com>, based upon Respondent’s intended use, there can be no confusion between the two companies. In fact, Respondent would be willing to have a link on its website to <prology.ru> so that there could be no such confusion that Respondent’s website is in anyway related to Complainants’ website.

6. Complainant has not set forth a prima facie case showing that Respondent has no legitimate interests in the domain name <prology.com> whereas Respondent submits that Respondent has demonstrated a legitimate interest in the domain name;

7. Complainant has failed to demonstrate that Respondent has registered <prology.com> and is using same in bad faith. However, Complainant’s illegal and fraudulent conduct does demonstrate the lengths it will go to steal this name from Respondent; and

8. Lastly, it is respectfully asserted that Complaint should fail as the Complaint is not verified by anyone with personal knowledge of the facts set forth in same and, on that basis; it is defective and should be dismissed.

C. Additional Submissions of Complainant

In an Additional Submission Complainant refutes the submissions made by Respondent and inter alia states that according to the WHOIS record submitted with the Complaint and the Response, Respondent registered the subject domain name on April 19, 2002.

There is no evidence that the domain name was registered at any date prior to that date by Respondent. Nevertheless, Respondent’s contacts with Complainant since 1999 as described in the Complaint prove that Respondent was well aware of Complainant's rights in the PROLOGY trademark at least in Russia.

Respondent’s assertion that its Chairman visited Moscow in August 2001 is correct, as Complainant made an error in its Complaint (indicating that the visit was August 2000), however, the remaining allegations in the Response with regard to this visit are not truthful. The purpose of the visit to Moscow was to meet with Complainant, and not with the third party, Harman International. Complainant refers to a copy of an email in support of this assertion.

Complainant has never attempted to illegally obtain the transfer of the subject domain name.

There is no evidence to prove Respondent’s planned to use the subject domain name in connection with a gelato business.

Complainant also denies the allegations of forgery of a letter that have no direct bearing on these proceedings.

D. Additional Submissions of Respondent

In further additional submissions filed by Respondent and dated September 21, 2006, Respondent repeats its submissions and further submits inter alia that Complainant has brought these proceedings when its attempts to legally purchase the name from Respondent failed, and its subsequent fraudulent attempts to secure it from Network Solutions failed also.

FINDINGS

Complainant is a closed joint stock company organized and existing under the laws of Russia, with a principal place of business at Moscow, Russia and is the owner of the following registrations for the PROLOGY trademark:

(a) Russian Registration No. 153425, issued June 16, 1997, in Classes 9, 12, 37 and 42.

(b) International Registration No. 775181, issued November 29, 2001, in Classes 9, 12 and 37.

Respondent is a Domestic Business Corporation organized and existing under the laws of the State of New York. Respondent appears to be a one person organization and refers to its principal as being a businessman who has developed numerous business ventures and has registered various “.com” domain names for the purpose of doing business in the future with his various and numerous commercial enterprises.

Despite the fact that Respondent claims to have registered the domain name in dispute on July 27, 2001 the Panel finds that this is incorrect and that Complainant is correct in stating that the domain name was registered on April 19, 2002. This is clear from both the WHOIS database and confirmed by the Registrar in its reply to the Verification Request.

A number of issues relating to the validity of certain documentation have been raised by Respondent and fraud has been alleged. This Panel finds that while these issues and allegations may impact on the credibility of the submissions and evidence received from the parties, none of these allegations directly relate to the issues that may be decided by this Panel in the present proceedings. Furthermore UDRP proceedings are limited in scope and are not intended to address such questions.

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 transferred as requested:

(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 and is being used in bad faith.

Identical and/or Confusingly Similar

Finding for Complainant

Complainant has established that it has rights in the PROLOGY mark through its trademark registrations and its use of the trademark in Russia and abroad. In particular Complainant has established rights in the Russian Registered Trademark registration number 153425 dated June 16, 1997. Complainant has thereby established rights in the PROLOGY mark through this registration for the purposes of Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the Complainant can demonstrate a mark in some jurisdiction).

This Panel accepts Complainant submission that the disputed <prology.com> domain name is identical to Complainant’s PROLOGY mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

Rights or Legitimate Interests

Finding for Complainant

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

The Panel finds that Respondent is not commonly known by the <prology.com> domain name pursuant to Policy ¶ 4(a)(ii). Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name and Complainant has asserted that Respondent is not authorized to use Complainant’s mark. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

Respondent’s claim to have a legitimate interest in the domain name strains credibility. Respondent clearly had a business connection with the owner of the trademark PROLOGY in Russia, prior to the date on which Respondent registered the domain name. Given the circumstances, it is too much to expect the Panel to accept that it was a mere coincidence that Respondent selected that particular name without knowledge of or reference to Complainant’s name or rights.

Credibility is further stretched by Respondent’s statement that Respondent now plans to use the disputed domain name in connection with an ice cream business.

There has been no active use of the disputed domain by Respondent, and without demonstrable preparations to use the <prology.com> domain name, Respondent has made neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”).

In the view of the Panel the Respondent has no rights or legitimate interest in the domain name.

Registration and Use in Bad Faith

Finding for Complainant

The Panel finds that Respondent registered the <prology.com> domain name for the purposes of commercially benefiting from the goodwill associated with Complainant’s mark. Respondent’s disputed domain name is capable of creating a likelihood of confusion as to the source and affiliation of Complainant to the disputed domain name and corresponding website, especially as Complainant operates a website at the <prology.ru> domain name. This is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the 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”).

On the evidence it appears to this Panel that Complainant is correct in its allegation that Respondent had actual notice of Complainant’s mark when registering the disputed domain name. It is clear that Respondent knew of Complainant and Complainant’s business as far back as 1999. On the balance of probabilities Respondent was also aware of Complainant’s use of the PROLOGY mark because Respondent was contacted in 1999 to assist Complainant’s authorized agent in the United States with various business dealings.

The record includes evidence of Respondent’s knowledge of the PROLOGY mark prior to the registration of the <prology.com> domain name, including email correspondence in which Respondent makes references to a PROLOGY product by name prior to the registration of the disputed domain name. Respondent’s actual notice of Complainant’s mark when registering the disputed domain name amounts to bad faith registration and use under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also 163972 Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3, 2000) (finding that because the respondent was hired by the complainant to help design and register the complainant’s websites, the respondent had intimate knowledge of the complainant’s business and use of its TEENFLO mark. Therefore, the respondent’s registration of the <teenflo.com> domain name was in bad faith).

Furthermore, in the particular circumstances of this case, Respondent’s passive holding and lack of an active use of the <prology.com> domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). Respondent’s possession of the disputed domain name for at least four years without making active use of the disputed domain name amounts to passive holding and the length of time involved further indicates that the Respondent’s claim to have plans to actively use the domain are not to be taken seriously. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Mondich 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).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED

Accordingly, it is Ordered that the <prology.com> domain name be TRANSFERRED from Respondent to Complainant.

James Bridgeman, Panelist
Dated: October 5, 2006

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