ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
This is a domain name dispute under the ICANN Uniform Domain Name Dispute Resolution Policy (the "UDRP"). The Complainant is W3 Internet Solutions SARL of Switzerland acting on behalf of Dr. Giovanni Pasini. Dr. Pasini, through his business entity Pasini Labaratorio Chimico S.n.c. del Dr. Giovanni Pasini & C. is the owner of U.S. Trademark Reg. No 2,265,525 - DINABASE -- for synthetic resins for use in the manufacture of dental impressions; and, dental applicators and syringes for applying soft pastes. Complainant requests transfer of the dinabase.com domain name which was registered by the Respondent with Register.com on February 26, 2000. Respondent is Paul Clark of Oklahoma, USA, an individual.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on April 18, 2000. The hardcopy of the Complaint Form was received on May 4, 2000. Payment was received on April 27, 2000.The coversheet was received on May 4, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry leads the Clerk of eResolution to the following conclusions: the Registrar is Register.com, the Whois database contains all the required contact information except billing, and the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement and billing contact on May 3, 2000. The requested information was received May 4, 2000.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on May 9, 2000. That date is the commencement date of the administrative proceeding.
On May 9, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
The Respondent submitted a response via the eResolution Internet site May 26, 2000 and submitted a signed version on May 29, 2000.
On May 30, 2000, the Clerk's Office contacted Merton Thompson, and requested that he act as panelist in this case.
On June 2, 2000, Merton Thompson accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On June 2, 2000, the Clerk's Office forwarded a user name and a password to Merton Thompson, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On June 2, 2000, the parties were notified that Merton Thompson had been appointed and that a decision was to be, save exceptional circumstances, handed down on June 15, 2000.
3. Factual Background
Complainant sells thermoplastic material for dental use under the DINABASE trademark. It has done so for approximately 8 years and states that its trademark is registered in 23 countries. Complainant submitted a partial U.S. Trademark Certificate of Registration as evidence of its trademark rights. Complainant states that it has made a significant investment in preparing an e-commerce site that it planned to launch under the dinabase.com domain name.
Respondent resides in the United States and indicates that he registered the domain name at issue for use with a searchable database of dining establishments. Respondent states he derived the domain name at issue by combining the words "dining" and "database," hence "dinabase." Respondent submitted statements that he had registered two other food related domain names before notice of this dispute as evidence of his legitimate interest in the domain name at issue.
Complainant contacted Respondent after learning the dinabase.com domain had been registered and asked that the domain name be handed over. In reply the Respondent asked for $10,000 USD in compensation for fees, web development hours and clientele loss.
The Parties were apparently unable to come to terms. The Complainant also states that it intends to file a separate legal action against Respondent but provided no further information regarding that proceeding.
4. Parties' Contentions
Complainant offers the following to make its case for transfer of the domain name dinabase.com:
i) Identity or Confusing Similarity
Complainant states that the domain name at issue is identical to its registered trademark DINABASE.
Complainant claims the right to the domain name dinabase.com as there are no other registered trademarks that correspond exactly to that domain.
iii) Bad Faith
Complainant maintains that Respondent's request for $10,000 as compensation for transferring the domain name at issue constitutes "domain name squatting." Complainant also seeks to make a negative inference against Respondent based on the following alleged facts : Complainant made an availability search for the domain name at issue on the Register.com web site and intitially found the domain available; upon returning to Register.com days later, Complainant learned that the domain had been registered by the Respondent.
Respondent contends that he has a legitimate interest in using the dinabase.com domain for a searchable database of dining establishments. As additional evidence of his intent to use dinabase.com for a food related site, Respondent indicated that he registered two other food related domains,
Respondent also maintains that he has not registered the domain name at issue in bad faith. He states that his offer to transfer the domain for $10,000 was in response to a "rude demand" by Complainant and that his primary motivation in registering the domain was to use it, not resell it. Complainant points out that his intended use, dining information, in no way conflicts, competes or is likely to be confused with Complainant's dental products.
5. Discussion and Findings
Under the UDRP paragraph 4(a) the Complainant bears the burden of proving that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the 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.
Therefore the question before this Panel is whether the Complainant has met its burden with respect to the three elements.
(i) Although the documentation submitted to evidence the Complainant's authority to act on behalf of the trademark owner was scanty and likely insufficient to constitute a full power of attorney, the evidence did show that Complainant was authorized to make such use of the DINABASE trademark as would be required to obtain a corresponding domain registration. The Panel therefore finds that the Complainant has standing under the UDRP to proceed on behalf of the owner of the DINABASE trademark.
The Panel further finds that Complainant has met its burden with respect to the first element. Complainant represents the owner of a subsisting U.S. Trademark Registration for DINABASE, a mark that is clearly identical to the dinabase.com domain name at issue.
(ii) The Panel finds that Complainant has failed to meet its burden with respect to establishing that the Respondent has no rights or legitimate interests in the domain name at issue. Complainant offered no evidence with respect to this required element other than the bald assertion that, as sole owner of a unique trademark, it should have a per se right in the corresponding domain name. It is evident from the pleadings submitted that Respondent registered the domain name at issue and two other food related domain names before notice of this dispute. Moreover, this panel is bound by the UDRP paragraph 4(c), which states in relevant part:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (emphasis added)
The Panel finds that the evidence submitted shows that the Respondent made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods and services (dining information services) before notice of this dispute, thus satisfying Paragraph 4(c)(i) of the UDRP. Accordingly, the Panel finds the Complainant has not met its burden with respect to this element.
(iii) The Panel finds that the Complainant has failed to meet its burden in establishing that the domain at issue was registered and is being used in bad faith. The UDRP lists the following circumstances as evidence of a registration and use in bad faith in paragraph 4(b):
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
(i) The Panel finds that the domain name at issue was not acquired for the primary purpose of sale to Complainant or a competitor of Complainant. While the Respondent's requested compensation for transfer of the domain may have been significantly more than his documented domain related expenses, the evidence does not support a finding that the domain was acquired primarily for sale to the Complainant or a competitor of Complainant.
(ii) The Panel finds that the Respondent has not registered the domain name at issue to prevent the Complainant from reflecting its mark in a corresponding domain name nor has Respondent engaged in a pattern of such conduct. No evidence was submitted that could prove that Respondent exhibited a pattern of domain registrations intended to prevent mark owners from obtaining corresponding domain names.
(iii) The Panel finds that the evidence submitted does not support the conclusion that Respondent registered the domain name at issue to disrupt the business of a competitor. No evidence was submitted that indicates the Parties are in competition.
(iv) The Panel finds that the evidence does not show that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark. Respondent's present use of the domain is consistent with his stated intended area of use, namely, providing information about dining. No evidence was submitted that would suggest that the Respondent intended to benefit from a likelihood of confusion or that any likelihood of confusion exists.
As the Complainant has failed to prove any of the listed indicia of bad faith or any other compelling evidence of bad faith, the panel finds that the Complainant has not met its burden with respect to this element.
For the foregoing reasons, the panel concludes that the Complainant has not met its burden of proof under the UDRP paragraph 4 (a)(ii) and (iii). Accordingly, the panel finds the domain name dinabase.com should not be transferred to Complainant.
Signed this 14th day of June 2000 in Boston USA by Merton Thompson, Panelist
(s) Merton Thompson