Domain name - Domain name dispute resolution policy - Worldwide Service mark - Worldwide Trademark - Trade Names - Nearly Identical - Confusingly similar - Bad faith registration - Bad faith use - Generic names - Descriptive names.

On October 21, 1998, Respondent registered the domain name ASTROCARTOGRAPHY.COM.

Complainant Astro*Carto*Graphy Living Trust holds the Trademark/Servicemark and word mark Astro*Carto*Graphy, both used in commerce since 1976.  The stated purpose of the mark was for: "Consulting services in the field of astrology.  Complainant and Respondent are engaged in the same general area of commerce.

Held, Name Not Transferred to Complainant.

Respondent concedes that "its second level domain name, astrocartography, in the top level domain, ‘com’, is confusingly similar to Complaint’s (sic) Marks" but takes the position that the term "astrocartography" is a generic term used by it and others. 

Complainant failed to show that Respondent has no legitimate interest in use of the word "astrocartography."  Respondent has used the web site since October 21, 1998, and maintains that users of the site are provided links to Complainant’s web site without charge and Complainant has not refuted this. 

Complainant failed to meet its burden of showing that Respondent "registered and used in bad faith" the domain name in violation of ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(i), 4(b)(ii), (iii), or (iv).

Policies referred to

Uniform Domain Name Dispute Resolution Policy
Rules to ICANN's Uniform Domain Name Dispute Resolution Policy

Panel Decision referred to
--

Hon. Buchele (Ret.), Panelist: -

The above entitled matter came on for an administrative hearing on

May 1, 2000 before the undersigned panel on the Complaint of ASTRO*CARTO*GRAPHY LIVING TRUST, RON MAHKA, TRUSTEE, hereafter "Complainant", against ADVANCED LOCATIONAL RESEARCH AND JULIAN LEE, hereafter "Respondent". Jeffrey D. Myers, Peacock, Myers & Adams, PC, represent Complainant. Seann W. Hallisky, Christensen O’Connor Johnson & Kindness, PLLC represent Respondent. Upon the written submitted record, the following decision is made:

PROCEDURAL FINDINGS 

Domain Name: ASTROCARTOGRAPHY.COM

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant:   Advanced Locational Research
                                          1365 North Foothill Road
                                         Ojai, California
                                          93023 USA

Date of Domain Name Registration: October 21, 1998.

Date Complaint filed: March 6, 2000

Date of Commencement of Administrative Proceeding in
Accordance with Rule 

2(a) and Rule 4(c): March 9, 2000

Due date for a Response: April 3, 2000. 

Respondent’s Response was filed (dated) March 9, 2000.

After reviewing the Complaint and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORUM (THE FORUM) forwarded the Complaint to the Respondent on March 9, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum  immediately notified Network Solutions, Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the
administrative proceeding had commenced. Respondent submitted a response to the Forum within twenty (20) days pursuant to Rule 5(a).

On October 21, 1998, Respondent registered the domain name ASTROCARTOGRAPHY.COM with Domain Name Registrar Network Solutions, Inc., the entity that is the Registrar of the domain name. On March 11, 2000, the Domain Name Registrar’s listing showed that Advanced Locational Research is the Registrant for the domain name  ASTROCARTOGRAPHY.COM. By registering its domain name with Register.com, Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT 

The undisputed evidence establishes that: 

1. Complainant Astro*Carto*Graphy Living Trust holds the Trademark/Servicemark Astro*Carto*Graphy, a stylized mark which it registered July 10, 1979 (No. 1,122,070) and of which it made first use in  commerce on August 10, 1976.

2. The stated purpose of the mark was for: "Consulting services in the field of astrology.

3. Complainant also holds the word mark Astro*Carto*Graphy, for which it made a trademark application (No. 75/667,983\2) on March 24, 1999 and which it first used in commerce August 10, 1976. 

4. The stated purpose of the word mark was for: "Printed materials and publications, namely, books, magazines, newsletters, pamphlets, brochures, posters, calendars, maps, astrological charts, and workbooks directed to the field of astrology." 

5. Complainant and Respondent are engaged in the same general area of commerce.

6. The evidence provided by Complainant and Respondent allows the inference that Complainant and Respondent engage in their commerce using different and distinct methodology.

7. To prevail, Complainant must establish in the record that Respondent:

a. registered a domain name that is "identical or confusingly similar to a trademark or service mark in which the complainant has rights; and 
b. has "no rights or legitimate interests in respect of the domain name; and
c. has registered and is using the domain name in "bad faith".

8. Respondent concedes that "its second level domain name, astrocartography, in the top level domain, ‘com’, is confusingly similar to Complaint’s (sic) Marks" but takes the position that the term "astrocartography" is a generic term used by it and others. 

9. Respondent has used the web site since October 21, 1998, and maintains that users of the site are provided links to Complainant’s web site without charge and Complainant has not refuted this. 

10. By Respondent’s above admission, Complainant met its burden of showing that the domain name ASTROCARTOGRAPHY.COM "is identical to or confusingly similar" to Complainant’s registered trade and word marks

11. Complainant failed to meet its burden of showing that Respondent has no rights or legitimate interests in respect of the domain name.

12. Complainant failed to meet its burden of showing that Respondent "registered and used in bad faith" the domain name in violation of ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(i), 4(b)(ii), (iii), or (iv).

Complainant’s prayer for relief requests that the domain name ASTROCARTOGRAPHY.COM be transferred from Respondent Advanced Locational Research to Complainant.

CONCLUSIONS 

The undersigned certifies that the panel of three arbitrators acted independently and have no known conflict of interests to serve as Arbitrators in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions with the unanimous agreement of the panel:

1. The domain name ASTROCARTOGRAPHY.COM registered by Respondent on October 21, 1998, is so close as to be identical or confusingly similar to Complainant’s ASTRO*CARTO*GRAPHY mark, by admission of Respondent. 

2. Complainant failed to show that Respondent has no legitimate interest in use of the word "astrocartography."

3. Complainant failed to show that Respondent registered or used the domain name in bad faith.

DECISION 

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN
NAME ASTROCARTOGRAPHY.COM REGISTERED
BY RESPONDENT REMAIN WITH RESPONDENT.

DATED: April 26, 2000, 2000 by Judge James P.
Buchele (Ret.), Chief Arbitrator of the Panel.

_______________________________________

Honorable James P. Buchele (Ret.)
Hon. Robert R. Merhige
Hon. Carolyn Marks Johnson 
Members of the Panel