Under the ICANN Uniform Domain Name Dispute Resolution

Case Number: AF-0270
Contested Domain Name:
Panel Member: Christiane Féral-Schuhl


1. Parties and Contested Domain Name

The Donald M. Fishback Company, Inc., 1750 Alexandria Drive, Suite 4, Lexington, Kentucky 40504 USA, a software developer/vendor.

The Registrant is Platinum Internet Services, LLC, 295 Lafayette Avenue, Hawthorne, NJ 07506 USA.

The contested domain name is

2. Procedural History

The electronic version of the Complaint form was filed on-line through eResolution's Website on June 28, 2000. The hardcopy of the Complaint Form was received on July 18, 2000. The choice of jurisdiction was received on June 30, 2000. Payment was received on July 11, 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 led the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions, inc., the Whois database contains all the required contact information, 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 on June 29, 2000. The requested information was received July 6, 2000.

The Clerk's Office 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 July 20, 2000. That date is the commencement date of the administrative proceeding.

On July 20, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.

On August 7, 2000, the Respondent submitted, via eResolution internet site, his response. The signed version of the response was received on August 18, 2000.

On August 24, 2000, the Clerk's Office contacted Ms. Christiane Feral-Schuhl, and requested that she acts as panelist in this case.

On August 28, 2000, Ms. Christiane Feral-Schuhl, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On August 28, 2000, the Clerk's Office forwarded a user name and a password to Ms. Christiane Feral-Schuhl, allowing her to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On August 28, 2000, the parties were notified that Ms. Christiane Feral-Schuhl had been appointed and that a decision was to be, save exceptional circumstances, handed down on September 10, 2000.

On August 28, 2000, the Complainant sent a request to the Clerk's Office asking to be permitted to submit some amendments to his complaint, as events have taken, further justifying its position in this case and his right to the domain name.

On September 6, 2000, the Clerk's Office informed both parties that the Complainant's request was accepted by the Panelist. The Complainant was allowed to provide new elements, including annexes, which would add to or amend the contents of the Complaint (the original Complaint, as filed on-line through eResolution's Website on June 28, 2000, was to remain as an unaltered document of the administrative proceedings files). The Respondent was allowed to submit his response on the additional arguments and elements. The Complainant had until September 8, 2000 at 4pm, time of Montreal, to send to the Clerk's Office in both electronic format and hard copy format. The Respondent has until September 10, 2000, at 4pm, time of Montreal, to send to the Clerk's Office in both electronic format and hard copy format. Each Party was to transmit its rebuttal to the other Party, in accordance with the regulation. As a result, the date for the decision to be handed down was set for September 16, 2000 and the Clerk's Office would have three days to forward it to the Parties.

On September 8, 2000, before 4pm, time of Montreal, the Complainant sent his new elements to the Clerk's Office.

On September 11, 2000, the Clerk's Office informed the Complainant that the Respondent did not submit any rebuttal in this case.

On September 12, 2000, the Respondent informed the Clerk's Office that he had have reviewed the complainants rebuttal, and was preparing a Response that shall be completed on September 13, 2000. The Clerk's Office answered the same day to the Respondent and informed him that he was in default, as he had until September 10, 2000 to file a rebuttal.

3. Factual Background

The Donald M. Fishback Company, Inc, is a developer/vendor of software, newsletters and educational material and seminars, all related to investing. It is the holder of the registered trademark "ODDS®" and the trademark "ODDS® Online™".

The Registrant, Platinum Internet Services, LLC, presents himself as building turnkey websites in the gaming, adult and Business to Business sector.

The Registrant has submitted a Response in the present proceedings. He has not submitted any annexed documents in the present proceedings.

4. Parties' Contentions

The Complainant states that ODDS(R) is a registered trademark of The Donald M. Fishback Company, Inc., that ODDS(R) Online(tm) is a trademark of The Donald M. Fishback Company, Inc., and that ODDS Online is the name of a web based option analysis program owned by The Donald M. Fishback Company, Inc. The Complainant has provided a US Patent & Trademark Office document for the "ODDS" registered trademark.

The Complainant emphasizes the fact that its product has been available to the public for a period of 1 year and 3 months, and that the ODDS registered trademark is used in all of its products and services. The Complainant defines its product and services as newsletters, software, educational material and seminars, all related to investing.

The Complainant further submits that it has plans to soon release a second version of the software with the same trademarks, called ODDS Online Platinum Edition, and that it may use this trademark in other future versions of its web based analysis software.

The Complainant states that the domain name in question is identical to the name of its flagship software ODDS(R) Online(tm). The Complainant explains that this situation directly creates a confusion for its customers: they mistakenly enter in their browsers while trying to access information about the Complainant's software.

The Complainant further states that it is currently using the domain name and that when its customers reach the default page, they view "a page that they do not want to see". The Complainant says that its clients complain frequently about the fact that it does not own this domain name.

The Respondent replies that he uses the name as the name of a gaming related website, and that this is the name of a website and not a service or product as the complainant offers.

The Complainant further remarks that the Respondent does not have any products or services or information related to the name on the site in dispute, and that the domain name holder's only product concerning the domain name is the domain name. The Complainant emphasizes the fact that the Respondent is attempting to sell the domain name at a high price.

The Respondent states that it never contacted the Complainant to try and sell the domain name to him. The Respondent explains he builds turnkey websites in the gaming, adult and Business to Business sector, and that such sites include webhosting from its own servers, domain name, which it owns many and matches with sites that the Respondent offers.

The Complainant further informs that the respondent has not sent a copy of his response by any means to him, though required by Section 5 ("The Response"), paragraph B, subparagraph (vii), of the ICANN Rules.

5. Discussion and Findings

Complainant has the burden under section 4 of the Uniform Domain Name Dispute Resolution Policy (UDRP) of showing (A/) that the Respondent's domain name is identical to or confusingly similar to its trademark or service mark, (B/) that Respondent has no rights or legitimate interests in the domain name, and (C/) that Respondent has both registered and used the domain name in bad faith.

A/ Similarity of domain name to mark is indeed identical to, or confusingly similar to, the trademark ODDS(R) Online(tm) or to the name ODDS Online.

B/ Respondent's rights or legitimate interests in the domain name

The UDRP provides that a registrant may demonstrate its rights or legitimate interest in its domain name by showing evidence of any of the following:

(i) before any notice to Respondent of the dispute, Respondent's 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is 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.

The panel notes that the Respondent has not submitted any evidence with his Response and, therefore, has not demonstrated its rights or legitimate interests in its domain name under paragraph 4(c) of the UDRP.

On the contrary, the Complainant has presented evidence of the existence of the absence of rights or legitimate interest in its domain on the part of the Respondent. In particular, since this dispute began, the respondent appears to have mirrored a site with the domain name that looks like slightly different but primarily the same as a site

C/ Bad faith Registration and Use

Paragraph 4(b) of the UDRP describes the following circumstances as probative of a registrant's 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.

It appears from the screenshot in a jpg image (Annex 1 of Complainant's annexed documents) that the Respondent offered the domain name on sale at auction on his website, at the starting price of $79,000, and was soliciting higher offers. It appears from the second screenshot (complainant's Annex #D001792) that the website changed suddenly as of June 29, 2000. The following statement can be read on the second screenshot "…Site no longer for sale, so please do not contact us regarding purchase." This significant change would correspond to the telephone conversation that the representative of the Claimant says to have had with a correspondent at when the former indicated to the latter that The Donald M. Fishback Company, Inc had a trademark corresponding to the said domain name (the Claimant's assertions in this respect have not been expressly contended by the Respondent).

Accordingly, it appears from an unofficial email from the Respondent dated August 7th, 2000, after receiving the official commencement notice of this dispute (this document has been submitted as an annex by the Complainant along with his amended Complaint - annex labelled "unofficial.rtf"), that the Respondent was reiterating his request for an offer regarding the domain name. "… [We] would consider an offer that satisfies all parties. In my opinion if we can't settle the issue through this manner the party that loses in arbitration will probably take legal action to contest the arbitration decision and enter into an unproductive dispute."

The Complainant has demonstrated bad faith registration, as well as bad faith use.

6. Conclusions

It appears to the Panel that the Complainant has demonstrated bad faith registration and bad faith use of the domain name, based on its trademark rights to the name "ODDS® Online™", in accordance with the provisions of the UDRP.

In conclusion, the Panel decides to transfer the domain name to the Complainant.

7. Signature

At Montreal

September 15, 2000

(s) Christiane Féral-Schuhl

Presiding Panelist