ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Megatel Computer Corporation, a company that operates within the industry of computer chips, circuitry, boards, software, custom design and fabrication of boards and software to client, operating system software embedded in single-board microcomputers and microprocessors, design for others of computer interface board and computer software and custom manufacture of computer interface boards and computer software for others.
The company is headquartered in the City of Toronto, Ontario, Canada.
The Respondent is MIS Associates, Inc., headquartered in Roswell, Georgia, United States of America
The domain name at issue is 'megatel.com'; the Registrar was Network Solutions, Inc.
The remedy sought is the transfer of the domain name to the Complainant.
2. Procedural History
The electronic version of the Complaint form was sent by email to eResolution on July 18, 2000. It was filed on-line by the Clerk's Office on eResolution's Website on the same day. The hardcopy of the Complaint Form was received on August 1, 2000. The choice of jurisdiction was received on July 18, 2000. Payment was received on August 1, 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 inactive 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 July 19, 2000. The requested information was received July 20, 2000.
On July 20, 2000, the Clerk's Office received three emails from the email address of the administrative contact.
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 August 3, 2000. That date is the commencement date of the administrative proceeding.
On August 3, 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 complaint, official notification and all the annexes were sent by Fedex to the respondent's various addresses. According to the Fedex tracking system, all were delivered. All the faxes were sent successfully. An automatic acknowledgement of the receipt of our email was received from the billing contact email address
A message of error from the system was received for the technical contact email address because the message was too long. A message of error was also received from the system for the address email@example.com.
On August 30, 2000, the Respondent still did not submit his response to eResolution.
On August 30, 2000, the Clerk's Office notified the Respondent and the Complainant of the failure of the first one to respond to the complaint. It also informed the parties that according to ICANN Rules Art.5 (ix)(e)"If a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"
On August 25, 2000, the Clerk's Office contacted a first Panelist, and requested that he acts as panelist in this case. He did not answer.
On August 30, 2000, the Clerk's Office contacted M. Giovanni Ziccardi, and requested that he acts as panelist in this case.
On September 2, 2000, M. Giovanni Ziccardi, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On September 5, 2000, the Clerk's Office forwarded a user name and a password to M. Giovanni Ziccardi, allowing him to access the Complaint Form and the evidence through eResolution's Automated Docket Management System.
On September 5, 2000, the parties were notified that M. Giovanni Ziccardi had been appointed and that a decision was to be, save exceptional circumstances, handed down on September 18, 2000.
3. Factual Background
The Complainant is the owner of the registered trademarks in the United States and Canada 'Megatel, registered on July 3, 1992, used in association with both wares and services since at least as early as 1986.
The Complainant uses the mark in association with its web site at 'megatel.ca' from which its customers may specify the configuration of computer interface boards and computer software and the custom manufacture of same for which they place orders using the web site.
The Respondent registered the domain name 'megatel.com'. The domain name has never been used in connection with a business, brand, product, or service that can be linked in any way to the word 'megatel'. The web site was inactive.
Counsel for the Complainant wrote to the Respondent complaining of the registration by the Respondent of the second level domain name megatel.com.
The letter contained notice of the complainant Megatel's registrations and prior use of 'Megatel', notice of Megatel's services, including its services associated with its web site at megatel.ca and notice that appropriation of 'megatel.com' is likely to have the effect of depreciating or diluting the value of the goodwill attaching thereto.
Counsel for the Complainant responded to the letter from the Respondent, MIS Associates, Inc. The letter contained an offer to pay to the respondent a nuisance fee, on the order of $500.00, for the transfer of the domain name. The letter includes an allegation: "a recent review of the megatel.com address indicates that it results in the display of a web page entitled "firstname.lastname@example.org" - "coming soon! Boston's on-line lifestyle magazine for the Gay, Lesbian and Transgendered Communities."
4. Parties' Contentions
The Complainant highlights, first of all, that 'Megatel' is a registered trademark of Megatel Computer Corporation.
The domain name megatel.com is identical to the registered trademark.
The Complainant declares also that the domain name has never been used in connection with a business, brand, product, or service that can be linked to the word 'megatel'.
The respondent did not submit any response or document to this Panel.
By correspondence dated October 4, 1999, the Respondent replied to the demand letter in the following terms: "Our office recently received a letter from your attorney regarding our domain name address of Megatel. Our firm, in good faith, registered this several years ago for future, and have not advertised or promoted its use for commercial purposes. Upon consideration of the matter, our firm is willing to transfer the rights of the domain address to your firm for the firm sum of Eight Thousand, Five Hundred U.S. Dollars ($8,500.00) to cover our developmental cost of Megatel. Should you wish to accept our offer, you may respond directly to me or we can have our respective attorneys deal with the issues."
This is the only document coming from the Respondent.
5. Discussion and Findings
A. Copy or Similarity.
'Megatel', United States Trademark Registration No. 2,203,455, was registered on November 17, 1998, and is used in association with both wares and services since at least as early as May, 1982. The mark is registered for use in association with operating system software embedded in single-board microcomputers and microprocessors (Class 9 wares); design for others of computer interface board and computer software (Class 42 services); and custom manufacture of computer interface boards and computer software for others (Class 40 services).
Without doubt the Complainant's trademark 'Megatel', registered in the United States and Canada, is identical to the domain name 'megatel.com' forming the subject matter of the complaint.
The first requirement is satisfied: the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
First of all, as appears from the BetterWhois.com search, the record for the domain name megatel.com was created March 7, 1997, subsequent to the dates of first use of 'Megatel' by the Complainant in both Canada and the United States, and subsequent to the date of registration of the trademark in Canada.
As appears from the respondent's letter, the Respondent has not advertised or promoted the use for commercial purposes of megatel.com. At the date of the letter, namely, October 4, 1999, megatel.com was not an active web site.
The Respondent's statements and conduct are therefore inconsistent with any reasonable demonstration by the Respondent of a legitimate interest in the domain name.
The web site was inactive and had nothing whatsoever to do with the advertisement or promotion for commercial purposes of the domain name megatel.com, nor did it reflect any use or legitimate use of 'Megatel' as a trademark or trade name. Indeed, megatel.com was no longer displayed in the URL field and use of megatel.com in the URL address field simply created a link to the URL: 'email@example.com'.
This conduct, on the part of the Respondent, is inconsistent with the Respondent having any rights or legitimate interests in respect of the contested domain name, and is inconsistent with legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's Megatel's registered trademark.
MIS Associates, Inc. delivered a facsimile dated December 28, 1999 which stated: "In reply to your letter dtd (sic) 15 DEC. 99. Your suggested offer is insufficient. As indicated, my costs exceed $7,500.00."
The Respondent's conduct is inconsistent with any rights or legitimate interests in respect of 'megatel.com' and is only consistent with having incurred certain unspecified and alleged costs related to the domain name megatel.com.
According to this Panel also the second requirement is satisfied: MIS Associates has no rights or legitimate interests in respect of the domain name.
C. Bad Faith
The Respondent has never operated an active web site in association with the domain name or URL address 'megatel.com'. The Respondent offered to sell the rights of the domain name address to the Complainant for the sum of USD $8,500.00 "to cover our developmental cost of megatel". By fax dated December 28, 1999, the respondent stated "as indicated, my costs exceed $7,500.00".
The Respondent has never replied to the request from counsel for the Complainant as to how the respondent arrived at costs in excess of USD $7,500.00. There is no evidence that this amount in any way relates to the out-of-pocket expenses of the Respondent directly related to the domain name.
Concurrent with this offer to sell, the Respondent linked the URL/domain name megatel.com to the aforesaid "firstname.lastname@example.org" inactive web site.
The Respondent registered the domain name megatel.com on or about March 7, 1997. The URL and domain name megatel.com was inactive and the Respondent has demonstrated no use whatsoever of megatel.com in connection with a bona fide offering of goods or services, nor is there any evidence that the Respondent has been commonly known by the domain name megatel.com.
To the contrary, the extensive period of inactivity, since 1997, and including the period of time subsequent to the demand letters which were sent by counsel for the Complainant, is compelling circumstantial evidence that the Respondent registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, and, that the Respondent has engaged in a pattern of such conduct. Such circumstances are evidence of bad faith.
According to this Panel, the name 'Megatel' was primarily registered for the purposes of either selling, renting, or otherwise transferring it to the owner of the trademark or service mark, or a competitor, for valuable consideration in excess of the documented out of pocket costs directly related to the Domain Name.
According to this Panel, the Domain Name has been registered and is being used in bad faith.
The evidence, submissions of the parties, examination of documents, ICANN Regulations compel this Panel to conclude and decide that:
- The domain name 'megatel.com' registered by MIS Associates Inc. is identical to the registered mark of 'Megatel', a mark in which the Complainant has rights.
- MIS Associates has no legitimate interest in respect of that domain name, has not been commonly known by this domain name, and is not making legitimate non-commercial or fair use of the domain names.
- The domain name at issue was registered and is being used in bad faith by MIS Associates.
The Respondent did not prove any of the three circumstances set out in ICANN Policy at Paragraph 4 (c).
Accordingly, the Complainant's request is granted and, in accordance with Paragraph 3 (c), the Panel orders that the registration of the domain name at issue, 'megatel.com' be transferred from MIS Associates to Megatel Computer Corporation.
This done and signed in Castelfranco Emilia, Modena, Italy, on September 18, 2000.
(s) Giovanni Ziccardi