ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Dynojet Research, Inc., of North Las Vegas, Nevada, U.S.A.
The Respondent is Gary Norman, an individual resident in Cambridge, England, U.K.
The Domain name at issue is dynojet.net, registered by the Respondent with DomainInfo.com
The remedy sought is the transfer of Domain name dynojet.net from the Respondent to the Complainant.
2. Procedural History
The complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy ("ICANN Policy") adopted by the Internet Corporation for Assigned Names and Numbers on October 24, 1999.
The electronic version of the Complaint form was filed on-line through eResolution's Website on August 16, 2000. The hardcopy of the Complaint Form was received on August 23, 2000. Confirmation of payment was received on August 23, 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.
This inquiry led the Clerk of eResolution to the following conclusions: the Registrar is DomainInfo.com, the Whois database contains all the required contact information, the contested domain name dynojet.net resolves to an active Web page. The Complaint is administratively compliant.
An e-mail was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement on August 17, 2000. The requested information was received August 18, 2000.
The Clerk's Office 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 (2a) in connection with forwarding the Complaint to the Respondent on August 24, 2000. This date is the commencement date of the administrative proceeding.
On August 24, 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 emails were successful. The faxes failed. The complaint, official notification and all the annexes were sent to the respondent via registered mail with proof of service.
The Respondent submitted a response on September 6, 2000 via the eResolution Internet site and a signed version on September 11, 2000.
On September 12, 2000, the Clerk's Office contacted a panelist and requested his services in this case. He was unable to act at this time.
On September 13, 2000, the Clerk's Office contacted Mr. Enzo Fogliani, and requested that he act as panelist in this case.
On September 14, 2000, Mr. Enzo Fogliani accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On September 14, 2000, the Clerk's Office forwarded a user name and a password to Mr. Enzo Fogliani, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On September 14, 2000, the parties were notified that Mr. Enzo Fogliani had been appointed and that a decision was to be, save exceptional circumstances, handed down on September 27, 2000.
3. Factual Background
The Complainant presents evidence in the form of a certificate issued by the U.S. Patent and Trademarks Office showing that the Complainant, Dynojet Research Inc., is the present title owner of a trademark that was registered with the U.S. Patent and Trademark Office on October 15, 1996, and that such trademark has been in use since 1991. Upon receiving the Complaint, eResolution verified that Mr. Gary Norman has registered the dynojet.net domain name with DomainInfo.com. The contested domain name dynojet.net resolves to an active Web page, which advertises "Cambridge Motorcycle and Breakers".
On August 2, 2000, Dynojet Research asked Mr. Gary Norman via e-mail to relinquish the domain name, offering to reimburse him the registration costs. Mr. Gary Norman refused, declaring himself to be available to negotiate for "around the sum of ten thousand UK pounds".
4. Parties' Contentions
The Complainant claims the domain name dynojet.net is part of the trademark name of the Organization "Dynojet Research Inc", and it is a Trademark registered with the United States Patent and Trademarks Office on October 15, 1996.
The Complainant claims that Respondent has no right to use the dynojet.net domain name because it is a registered Trademark.
Finally, the Complainant claims that Respondent acts in bad faith because he has requested monetary compensation in excess of documented out-of-pocket costs related to the domain name.
The Respondent admits he knew that Dynojet was the name of a Company well known in the motorcycle world, but denies to have registered the domain name in bad faith, or to have asked a sum of money greater than the sum he spent to register the domain name and prepare the web site.
5. Discussion and Findings
Under Paragraph 4 (a) of the ICANN Rules, the Complainant is required to prove, with respect to the domain name at issue, (a) that the domain name is identical or confusingly similar to the Complainant's trademark; (b) that the Respondent has no rights or legitimate interests in the domain name; and (c) that the domain name has been registered and is being used in bad faith.
These are the three matters at issue in this case.
(a) Identity or Confusing Similarity
As to the matter of similarity, it is clear to this Panel that the mark "Dynojet" is identical to the domain name "dynojet.net", the only difference being the tag ".net". This is sufficient - this Panel believes - to create confusion in the marketplace.
(b) Rights or legitimate interests
The Complainant has proved his title to the trademark "Dynojet". On the web pages at the address "www.dynojet.net" it is clear that "Cambridge Motorcycle and Breakers", advertised on those pages operate in the same market (motorcycle) of the Complainant.
The Panel takes this fact as evidence that the Respondent is not making legitimate non-commercial or fair use of the domain name, but is using the name "dynojet.net" to divert consumers to his site.
(c) Registration and Use in Bad Faith
It is proved that, in order to transfer the domain name dynojet.net, the Respondent has requested monetary compensation in excess of the documented out-of-pockets cost related to the domain name. Gary Norman wrote to Dynojet Reasearch: "I feel that if we negotiate, without being greedy, around the sum of ten thousand UK pounds, then we should be able to resolve this matter quickly and painlessly". This sum is obviously much more than the costs of domain name registration, and even of the site realization. In any case, the Respondent did not give any evidence demonstrating the fact that he had spent such amount of money for his site.
The circumstance that the Respondent has requested monetary compensation in excess of documented out-of-pockets cost related to the domain name is considered sufficient to prove that the domain name has been registered and is being used in bad faith, according to Paragraph 4,(b)(i) of the Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999.
The bad faith of the Respondent is also proved by the fact that he clearly knew that Dynojet is a trademark of a company, which operates in the same motorcycle market. Mr. Norman justified the registration of the domain name at issue by claiming that "we are helping your company [Dynojet Research] by advertising your product and proving that it works worldwide". But, since such assistance was never requested by Dynojet, this Panel believes that the registration of the domain name dynojet.net had only the scope of gaining visibility on the Internet for "Cambridge Motorcycle and Breakers" by using a well known name in the motorcycle world.
This proves that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site; which, under Paragraph 4,(b)(iv) of the Uniform Domain Name Dispute Resolution Policy, is considered evidence of the registration and use of a domain name in bad faith.
The Panel concludes that (a) the Domain name registered by Gary Norman and at issue herein is confusingly similar to the registered trademark "Dynojet" owned by Dynojet Research Inc.; that (b) the Respondent Gary Norman has no rights or legitimate interests in respect of the Domain name; and that (c) the Domain name at issue was registered and is being used in bad faith.
Accordingly, the Complainant's request is granted and, pursuant to Paragraph 3 (c), the Panel orders that the registration of the Domain name at issue, dynojet.net, be transferred from Mr. Gary Norman to Dynojet Research, Inc.
Rome, 26 September 2000
(s) Enzo Fogliani