The Complainant is PT Taman Dayu, Paruruan, Indonesia ("Complainant") represented by Mark E. Miller, of Fliesler Dubb Meyer & Lovejoy LLP. The Respondent is Taman Dayu MY Information Centre, Selangor, MY ("Respondent").

The domain name at issue is <tamandayu.com>, registered with Tucows, Inc.

The undersigned certify that they have acted independently and impartially, and to the best of their knowledge, they have no known conflict in serving as Panelist in this proceeding.

Judge Ralph Yachnin, Chair, Linda M Byrne, Esq., and Clive Lincoln Elliott, Esq. as Panel.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on June 6, 2001; the Forum received a hard copy of the Complaint on June 11, 2001.

On June 8, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <tamandayu.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 June 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 2, 2001 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@tamandayu.com by e-mail.

A timely response was received and determined to be complete on July 2, 2001.

On July 19, 2001, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Judge Ralph Yachnin, Chair, Linda M. Byrne, Esq., and Clive Lincoln Elliott, Esq., as Panel.

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

A. Complainant

The domain name <tamandayu.com> is identical or confusingly similar to a trademark or service mark in which the Comlainant has rights; and

The Respondent chose the domain name <tamandayu.com> because it is a good match for its business of selling of garden and outdoor furniture.

The Complainant should have registered the domain name before the Respondent did, and if the Complainant did, the Respondent would not have registered the domain name.

The website of the Respondent was developed in March, 2000, but since their products were out of date Respondent decided to change its contents with a new one which will be launched in July, 2001. Hence Respondent temporarily closed the site.

Respondent never offered to sell the website.

Respondent is using EASTJAVA.COM web hosting services because of their cheap price and server location.

In 1994 Complainant commenced using the service mark TAMAN DAYU in its real estate, country clubs and golf resort services business and since 1995 has expended US$3,000,000.00 in advertising and marketing campaigns to promote that business. In addition, it has used TAMAN DAYU as a corporate and trade name. Although each of the aforesaid words has a meaning, when linked together as "tamandayu," it has no meaning other than as an arbitrary and distinct mark.

In 1998, Complainant obtained an Indonesian Certificate of Creation (Copyright) for the logo TAMAN DAYU and design, and filed for a trademark on March 20, 2001 to be used generally for tourist, sports and recreation facilities.

The Respondent registered the domain name <tamandayu.com> on February 4, 2000.

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.

The Response received by the Forum is not in compliance with Rule 5(b) of the UDRP Rules. Specifically the Response fails to be in compliance with Rules 5(b)(i) – (iii), and 5(b)(vi) – (viii). It is in the Panel’s discretion whether or not to consider the arguments contained in the Response. Furthermore, the Complainant filed an Additional Submission of Complaint along with evidence of service on the Respondent. This submission expressly raised concerns about compliance with the procedural rules of the proceeding and as to the identity of the Respondent. No response was received. Notwithstanding the failure of the Respondent to adhere to the aforesaid Rules, in the interest of justice and equity, and in the spirit of reaching a decision based upon the merits of the case rather than a default, the Panel will consider the Respondent’s Response.

The Respondent’s disputed domain name is identical to the Complainant’s registered TAMANDAYU mark (Indonesian trademark application filed March 20, 2001) and also to the Complainant’s Indonesian Copyright Registration for the TAMANDAYU logo, which the Complainant has owned since 1998. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require "that a trademark be registered by a governmental authority for such rights to exist"). See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark)

Therefore, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

We find that Respondent does not have rights or legitimate interests in the disputed domain name because it is engaged in passive holding. See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names.)

In addition, notwithstanding the purported recent use of the domain name by a separate entity, Respondent is not, on the evidence, commonly known by the disputed domain name, pursuant to Policy ¶ 4(c)(ii), or making a noncommercial or fair use of the domain name, under Policy ¶ 4(c)(iii). See 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); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Therefore, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

There is conflicting evidence as to whether Respondent offered to sell the disputed domain name for Rp52.000.00 ($5,000 US), to Complainant. Hence this issue will not be used in determining this matter.

The Panel finds, based on Respondent’s passive holding as noted in the Rights and Legitimate Interests Section, that Respondent acted in bad faith by making no use, or passively holding of the disputed domain name. See 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).

There is another, and much more cogent reason to find bad faith attributable to the Respondent. The "Complainant’s Additional Response," to which the Respondent made no reply, contains Exhibit 12, which is a letter from F. F. Hiew, Executive Director, My information Center Sdn Bhd. According to Register.com, The Domain Name Registration Services, My Information Center is the Registrant of the subject domain name.

The letter states:

The Panel finds that the person who registered the domain name is not the Registrant whose name appears as such, and that the deception undertaken warrants a finding of egregious bad faith on the part of the party that registered the domain name and/or Respondent. Whether or not the Respondent is being used as a front, it seems that the true identity of the party that actually holds or controls the domain name remains uncertain. Nevertheless, the domain name appears to have been registered by deception and is being used in bad faith.

Therefore, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

Having established all three of the elements under the ICANN policy, the Panel concludes that the requested relief should be and hereby is granted.

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

Hon. Ralph Yachnin, Panel Chair

Justice, Supreme Court, NY (Ret.)

Date: July 26, 2001