Brite-Lite, Inc. v. Von Wolf FX
[Indexed as: Brite-Lite v. Von Wolf]
[Indexed as: brite-lite.com]
The National Arbitration Forum
Administrative Panel Decision
Case No. FA0004000094641
Commenced: 19 April, 2000
Judgment: 6 June, 2000
Presiding Panelist: Honorable Richard B. Wickersham, Arbitrator
Domain name - Domain name dispute resolution policy - Trademark - Servicemark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Source - Sponsorship - Affiliation - Endorsement.
Brite-Lite, Inc. is a 20 year old company selling wholesale lighting throughout Canada and the United States as well as abroad. Brite-Lite, Inc. registered brite-lite.com by Telus.
In late 1999 Network Solutions the registrar of brite-lite.com invoiced Telus Advertising Services in the amount of $35.00 for renewal of brite-lite.com (Telus was the billing contact of this domain). The renewal fee was not paid as a result of error the domain name became available. On March 11, 2000, Respondent registered brite-lite.com with Register.com. The site was never developed by Respondent.
Held, Name Transferred to Complainant.
Respondent's domain name is confusingly similar to Complainant's trademark or service mark in which Complainant has all rights, title and interest.
Respondent is deemed to have no rights or legitimate interests in said domain name.
Respondent's domain name has been registered and is being used in bad faith. Respondent registered the domain name in order to sell the name to its rightful owner for consideration in excess of out-of-pocket costs. Further, Respondent intended to divert consumers away from Complainant's business for the purpose of financial gain, and in order to prevent Complainant's use of the domain name, the trademark to which it has full rights.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decision referred to
The above entitled matter came on for an administrative hearing on June 1, 2000 before Richard B. Wickersham, Arbitrator, assigned to this matter on the Complaint of Brite-Lite, Inc. (Complainant) against Von Wolf FX (Respondent). Upon the written submitted record, including the Complaint and the Response to the Complaint the following Decision is rendered.
2. PROCEDURAL FINDINGS
Domain Name: brite-lite.com
Registrar's Name: Register.com
Date of Domain Name Registration: March 11, 2000
Date Complaint Filed: April 19, 2000
After reviewing the Complaint and determining it to be in administrative compliance, the National Arbitration Forum (the "Forum") forwarded the Complaint to Respondent in compliance with Rule 2(a) and the administrative proceeding was commenced pursuant to Rule 4(c). The Forum immediately notified Register.com, the Internet Corporation for Assigned Names and Numbers ("ICANN") and the Respondent that the administrative proceeding had commenced pursuant to Rule 4(d). Respondent has submitted a Response to the Forum within twenty (20) days pursuant to Rule 5(a), which time has now expired. The Complaint and the Response and all Exhibits were forwarded to the Arbitrator for decision.
On March 11, 2000, Respondent registered the domain name with the domain name registrar Register.com, the entity that is the registrar of the domain name. Register.com verified that Respondent is the registrant for the domain name and by registering its domain name with Register.com, Respondent agreed to resolve any disputes regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution policy. Neither the Complainant nor the Respondent has contested the jurisdiction of the Forum or the Arbitrator assigned to resolve this controversy.
1. A Domain Name Dispute Complaint was submitted in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy and Rules by Brite-Lite, Inc., contact person Brian Roach, of Calgary, Alberta, Canada.
2. Brite-Lite, Inc. is a 20 year old company selling wholesale lighting throughout Canada and the United States as well as abroad. The company noticed, in 1996, that the Internet was "taking off" and accordingly on December 19, 1996 Brite-Lite, Inc. had registered by Telus Yellow Pages. They were told not to register their name with the hyphen but later, on April 16, 1997, Brite-Lite, Inc. had brite-lite.com registered by Telus. In 1999 Telus transferred their sites over to "Softcom.ca" so that Softcom.ca could host them. Further, they had Softcom.ca set up as an alias. Thereafter, the alias redirected all email and entrees to brite-lite.com.
3. In late 1999, November 23, 1999 and December 22, 1999, Network Solutions the registrar of, at that time, invoiced Telus Advertising Services in the amount of $35.00 for renewal of (Telus was the billing contact of this domain). The renewal fee was not paid and became available. On March 11, 2000, Von Wolf FX Respondent, by Gerald Szlatiner, contact person, registered with Register.com as it was available.
4. Thereafter Brian Roach and Gerald Szlatiner were in contact with one another by phone and e-mail but have been unable to resolve their differences. Mr. Szlatiner was informed by Mr. Roach that the invoice to Telus was not paid in error (Telus had not forwarded the invoice to Brite-Lite, Inc., Complainant) and offered to pay all fees and expenses to return the domain name to Brite-Lite, Inc.
5. Gerald Szlatiner rejected a $200 offer to resolve the problem. Brite-Lite, Inc., rejected the Gerald Szlatiner position of "waiting for a substantial offer," feeling it was a type of blackmail or extortion, based upon all of its years of maintaining both names and brite-lite.com over the past 4 years and over 20 years of business of Brite-Lite, Inc., throughout Canada and the United States.
6. In its Complaint Brian Roach notes that Von Wolf FX (Gerald Szlatiner) has no legitimate interest or rights in the domain name "as it is our name," and they (Von Wolf FX) are not in the Lighting Business.
The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:
1. It is important to note that this proceeding is based upon the Rules and the Policy previously defined to which the parties contractually agreed to submit themselves in the event of a domain name dispute. In this mandatory administrative proceeding, the Complainant, Brite-Lite, Inc., has asserted in its Complaint that Von Wolf FX, Respondent, has a domain name () which is identical or confusingly similar to a trademark or servicemark in which the Complainant has rights, i.e., Brite-Lite, Inc.; further, that Von Wolfe FX, Respondent, has no rights or legitimate interests in respect of the domain name , and further that said domain name has been registered and is being used in bad faith. As we noted above, the domain name was registered with Register.com, March 11, 2000, by Von Wolf FX, Respondent. In this administrative proceeding, the Complainant Brite-Lite, Inc. must prove and we find that Complainant has proved that each of these three elements are present.
2. For the purposes of proving that Respondent's domain name has been registered and is being used in bad faith the following circumstances have been considered by and found by the Arbitrator that Respondent, Von Wolf FX, has registered and/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 servicemark for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; further, that Von Wolf FX, Respondent, has registered the domain name in order to prevent the owner of the trademark or servicemark from reflecting the mark in a corresponding domain name; and further, by using the domain name, Von Wolf FX, Respondent, has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location. Factually, the Arbitrator finds from the evidence that as far back as December 19, 1996 Brite-Lite, Inc. registered the domain name by Telus Yellow Pages and subsequently on April 16, 1997, Complainant Brite-Lite, Inc. registered brite-lite.com by Telus Yellow Pages. Further, in 1999, Telus transferred said sites over to Softcom.ca so that Softcom.ca could host them. In addition, Brite-Lite, Inc., Complainant, had Softcom.ca set up as an ALIAS. This was done in case users might only key in without a hyphen. The ALIAS thereafter redirected all e-mail and entrees to brite-lite.com.
3. Through a misadventure, a thirty-five ($35.00) dollar renewal invoice, sent by Network Solutions to Telus Advertising Services (the billing contact of the domain), was misdirected and not paid by accident.
4. On March 11, 2000, Respondent, Von Wolf FX, by Gerald Szlatiner, contact person, registered , as it was then available; and when one went to the site after March 11, 2000, such person was greeted with the message "Welcome to - web site coming soon - this web-page will be up and running soon. For investment or purchasing interests, please contact me using the e-mail address below." (Garando@hotmail.com).
5. Respondent's domain name is confusingly similar to Complainant's trademark or servicemark in which Complainant has all rights, title and interest and consumers are likely to be confused into believing that there is some affiliation, connection, sponsorship, approval or association between Respondent and Complainant, when in fact no such relationship exists. See Rule 4(a)(i).
6. Respondent does not have any right or legitimate interest in respect to the domain name . See Rule 4(a)(ii).
7. Under all of the circumstances set forth hereinabove the Arbitrator finds that the domain name has been registered by Register.com at the instance of Von Wolf FX, by Gerald Szlatiner, contact person, e-mail address Garando@hotmail.com and that such registration and use of such domain name is considered by the Arbitrator as having been registered and used in bad faith, and further, Respondent is deemed to have no rights or legitimate interests in said domain name, and further, the domain name is identical to the mark of Complainant, Brite-Lite, Inc.
8. Based upon the above findings and conclusions and pursuant to Rule 4(i) of the ICANN's Rules for Uniform Domain Name Resolution Policy and the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy, it is decided as follows:
9. The domain name registered by Respondent, Von Wolf FX, shall be and is hereby transferred forthwith to Brite-Lite, Inc., Complainant.
10. Respondent, Von Wolf FX, shall forthwith cease and desist from any and all use of the domain name .
Domain Name Transferred