Calstore.com, a Division of Sarah Capital v. Calstore.net, a Division of Infodrive
[Indexed as Calstore.com v. Calstore.net]
[Indexed as Calstore.com et al]
The National Arbitration Forum
File No. 94296
Commenced: February 23, 2000
Judgment: March 20, 2000
Presiding Arbitrator: Louis Condon
Domain name - Domain name dispute resolution policy - Service Mark - Confusingly similar - Identical - Bad faith registration - Bad faith use - Simultaneous attempt to register.
Complainant was registrant of service mark. Respondent registered domain name Calstore.net. Complainant alleged its service mark was identical to the registered domain name and that Respondent had no legitimate interest in it and was using it in bad faith.
HELD, Name Not Transferred to Complainant.
Complainant operates their business from Alhambra, California, offering financial, postal and computer software services. Complainant registered the service mark CAL STORE in 1999, stating that they had been using it since 1995. Respondent has its office in Calcutta, India. Respondent has been in business for some time having registered other domain names as early as March 1999. Respondent was engaged in setting up an on-line shopping mall in Calcutta.
Both Complainant and Respondent attempted to register the domain name in question on December 15, 1999. Ultimately domain name was issued to Respondent.
The fact that, even though a world apart, both applied to register at the almost identical moment would be an indication that neither knew of the other's activities. While both parties have obvious reasons for wanting to use the domain name, the Complainant has failed to meet the burden of establishing Respondent's bad faith registration and use.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Registration Agreements referred to
Network Solutions, Inc. Registration Agreement, effective December 15, 1999
Administrative Decision referred to
Condon, Arbitrator: -
The above entitled matter came on to be heard for an administrative hearing on
March 20, 2000, before the undersigned arbitrator in accordance with Rule
3(b)(i) of ICANN's Uniform Domain Name Dispute Resolution Policy and Rules.
The arbitrator certifies that he has no conflict of interest with any of the parties to
this dispute. After due consideration of the written record as submitted, the
following decision is made:
Domain Registrant:InfodriveDate: Dec 15, 1999
Domain Registrar:Network Solutions, Inc.
This action was commenced by the Complainant's filing its complaint with the
National Arbitration Forum (The Forum) on February 23, 2000. Thereafter,
following a compliance review made in accordance with ICANN Rule 4, all
necessary parties were duly notified of the commencement of the administrative
proceedings. In due time the Respondent filed its Response.
FINDINGS OF FACT
1.The Complainant has its office and does business in Alhambra, California,
whereas the Respondent has its office and does business in Calcutta, India.
2.The Complainant registered its service mark " CAL STORE" with the State
of California on August 30, 1999, indicating that it had been using the mark
since January 1, 1999. Its stated business was offering financial, postal and
computer software services. In its complaint, Complainant stated it had
been using "CAL STORE´ since 1995.
3.The Respondent has been in business for sometime having registered other
domain names at least as early as March, 1999. At some time in 1999,
Respondent engaged in setting up an on-line shopping mall consisting of 50
shops in the City of Calcutta, India. A brochure explaining its business plan
was attached to its Response.
4.Both the Complainant and Respondent attempted to register the subject
domain name on December 15, 1999. Ultimately, the domain name was
issued to the Respondent, Infodrive by Network Solutions Registration
5.On the same day the Respondent was granted the domain name the
Complainant was notified that its request was denied.
6.The Complainant claimed to have contacted the Infodrive office and that the
Respondent's administrator, Rakesh Saraf, orally offered to sell the domain
name for a very high price. This was vehemently denied by the Respondent
who stated that he had never had any dialogue with the Complainant.
While both parties have obvious reasons for wanting to use the domain name, to
wit, one is in the State of California and the other is in the City of Calcutta, the
Complainant has the burden of making out its case for cancelling or transferring the
name. To do so, it must establish that :
1.The registered domain name is identical or confusingly similar to a
or service mark in which the Complainant has rights.
2.The Respondent does not have rights or legitimate interests in respect
3.The domain name should be considered as having been registered
and used in bad faith.
As indicated above, both parties have logical reasons for wanting to use the
domain name. The fact that, even though a world apart, both applied to register at
the almost identical moment would be an indication that neither knew of the other's
activities. There is no reason why either should have been aware of the other. The
Complainant does not claim that the Respondent is attempting to misleadingly
divert consumers or to tarnish its service mark. Nor has the Complainant proven
anything which would establish that the Respondent acted in bad faith in registering
the domain name.
Complainant having failed to establish items (2) and (3) as set forth above, the
Complaint is denied and the Respondent should be allowed to use the domain
March 20, 2000
Name not transferred