ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant, Indiana Oxygen Company, Inc., brings this action against the Respondent, Indiana Welding Supply, Inc., pursuant to ICANN's Uniform Dispute Resolution Policy (the "Policy") seeking transfer of the registration of the domain names indianaoxygen.com and indianaoxygen.net (the "Domain Names"). The Domain Names were registered through the domain name registrars Network Solutions, Inc. and Melbourne IT, Ltd. d/b/a Internet Names Worldwide (the "Registrars"), respectively.
2. Procedural History
The Complainant filed the Complaint online through eResolution's web site on March 15, 2001. Payment was received on March 15, 2001. The hardcopy of the Complaint Form and annexes were received March 21, 2001. The Clerk then sent a copy of the Complaint Form and required Cover Sheet in accordance with paragraph 2(a) of ICANN'S Rules for the Policy. On March 23, 2001, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
No response to the Complaint was received by eResolution via web site submission, e-mail or postal mail.
Section 5(e) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy provides: "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint." Accordingly, all of the facts stated in the Complaint are assumed to be true for purposes of evaluating whether the Domain Names should be transferred pursuant to the Policy.
3. Factual Background
All facts discussed herein are derived from the Complaint or the annexes submitted by Complainant. The Complainant has been doing business under the name " Indiana Oxygen Company Inc. " in the U.S. since 1915. Since its inception, the Complainant has used the trade name and trademark " Indiana Oxygen " in connection with its goods and services. The Complainant provides goods and services related to the manufacture, sale and distribution of gas products, cylinders and welding supplies. The Complainant has not registered its " Indiana Oxygen " mark with the U.S. Patent and Trademark Office.
The Respondent registered indianaoxygen.com on April 2, 1998 and indianaoxygen.net on May 26, 2000. The Respondent is a direct competitor of the Complainant, and they are both located in Indianapolis, Indiana, U.S.A. The Respondent has never used the Domain Names commercially. The Respondent was aware of the Complainant's use of the trade name " Indiana Oxygen " as the parties have been in competition with one another for at least 23 years and the parties were involved in a litigation with each other prior to the Respondent's reservation of the Domain Names.
The Respondent has also registered the domain name suttongarten.com. Sutton Garten is the name of another competitor of the Respondent located in the Indianapolis area.
On August 17, 2000, counsel for the Complainant wrote to the Respondent asking for the release of the indianaoxygen.com domain name. The Respondent did not reply to the request.
4. Parties' Contentions
The Complainant contends that the Domain Name is identical to its trademark, that the Respondent has no legitimate interest in the Domain Name, and that the Respondent registered and used the Domain Name in bad faith. The Respondent has not responded to the Complainant's allegations.
5. Discussion and Findings
Section 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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 second levels of the Domain Names are identical to the Complainant's trademark and trade name, " Indiana Oxygen. "
B. Respondent's Interest in Domain Name
A respondent can demonstrate a legitimate interest in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the 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 at issue
The words "Indiana Oxygen" do not form any part of the Respondent's name and the Respondent has not provided the Panel with any evidence that it used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services. Further, the Respondent has not demonstrated that it made any legitimate noncommercial or fair use of the domain names. Accordingly, the Panel finds that the Respondent does not have any right or legitimate interest in respect of the Domain Name.
C. Bad Faith
Section 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
This list of bad faith factors is not exclusive. Other circumstances can demonstrate bad faith.
Because the Respondent is a competitor of the Complainant, the Panel finds that the Respondent has acted in bad faith in violation of Paragraph 4(b)(iii) by registering the Domain Names primarily for the purpose of disrupting the business of a competitor. The Panel also finds bad faith in violation of Paragraph 4(b)(ii) on the ground that the Respondent 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, because the Respondent engaged in a pattern of such conduct by registering several competiors' names as domain names.
Because the Complainant has proved the three elements required for transfer of the Domain Names, the Panel orders that the Domain Names be transferred to the Complainant.
Signed, this 25th April, 2001 in Boston, Massachusetts
(s) Michelle Brownlee