Domain name - Domain name dispute resolution policy - Common law trademark - Widespread name recognition - Identical - Confusingly similar - Legitimate interest - Bad faith registration - Bad faith use - Creating a likelihood of confusion with Complainant’s mark - Valuable consideration in excess of out-of-pocket expenses.

Complainant owns and uses the common law trademark “Blue Max” in connection with computer-related products.  In 1998, Complainant’s company was reincorporated under the name Blue Max Technology.  Complainant also owns the domain name, bluemax.net. In 1996, Respondent registered the domain name, Bluemax.com.  For a brief period, Respondent used the domain name in question to link users to a test page for an under construction auction site.  Respondent has since stopped using the domain name in question completely.  

HELD, Name Transferred to Complainant.

Domain name is identical or confusingly similar to the mark in which Complainant has rights.  Further, Respondent has no rights or legitimate interests in respect of the domain name.

Respondent used the domain name to attract users to the auction site prior to 1999.  Attracting users to a website by creating a likelihood of confusion with Complainant’s mark as to the source of the website is evidence of bad faith registration and use.  Moreover, Respondent’s current passive holding of the domain name constitutes bad faith use.  Finally, Respondent offered the domain name for sale to Complainant and Complainant’s competitors for valuable consideration in excess of out-of-pocket expenses.  All these serve as evidence of bad faith registration and use.

Policies Referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999.

Registration Agreements Referred to

Network Solutions Service Agreement Version 4.0.

Cases Referred to
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Panel Decisions Referred to

America Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum).

Hewlett Packard Co. v. Full System, FA 94637 (Nat. Arb. Forum).

Hitachi, Ltd. V. Fortune Intil Dev. Ent, D2000-0412 (WIPO).

Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO).

Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO).

Carmody, Panelist: -

PARTIES

The Complainant is Blue Max Technology, Newbury Park, CA, USA ("Complainant"). The Respondent is Compudigital Industries, Granite Bay, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is "Bluemax.com", registered with Network Solutions Inc ("NSI").

PANELIST

Hon. James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on July 5, 2000; The Forum received a hard copy of the Complaint on July 5, 2000. 

On July 10, 2000, NSI confirmed by e-mail to The Forum that the domain name "Bluemax.com" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network
Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On July 10, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 31, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email. 

On July 31, 2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default. 

On August 3, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records in the case file, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forumís Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered a domain name that is identical to its trademark registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to
the domain name, and that the respondent has registered and is using the domain name in bad faith. 

B. Respondent 

The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegation of the Complainant will be deemed true.

FINDINGS

The Complainant owns the common law trademark "Blue Max". From 1969 until 1998, the Complainant’s company name was International Instrumentation, Inc. while computer related products were known as Blue Max. Because of the widespread name recognition, in 1998 the Complainant reincorporated the company under the name Blue Max Technology. The Complainant uses the domain name <bluemax.net> to promote its services on the Internet.

The Respondent registered the domain name in question on May 3, 1996. In early 1999, the Respondent used the domain name in question to link users to a test page for an under construction auction site. During conversations with the Respondent, the Respondent stated that the domain name in question was an unused, available domain he owned for use in testing and developing an auction site. During the end of 1999, the Respondent stopped using the domain name in question completely.

In November 1999, the Complainant attempted to contact the Respondent to request that the domain name be transferred to the Complainant. One of the Respondent’s employees stated that the domain name was not being used and that he knew of no plans to use the domain name. He suggested that the Complainant make an offer to cover the Respondent’s expenses surrounding the domain name. Over the next few months, the Respondent refused the Complainant’s multiple offers (ranging from $200 to $10,000) and eventually started a bidding war over the domain name with another party.

DISCUSSION 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements to support a claim that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 

(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.

Identical and/or Confusingly Similar

The Complainant has common law rights in the mark BLUE MAX. The Respondent’s domain name is identical to the Complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as "net" or "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain names in question. The Respondent has not denied that assertion.

The domain name in question is not a mark by which the Respondent is commonly known. Policy ? 4(c)(ii). Rather, the Respondent is associated with the domain name Compudigital Industries. The Respondent has made not argued that it is using
the domain name in connection with a bona fide offering of goods and services or is making a legitimate noncommercial or fair use of the site. Policy ? 4(c)(i), (iii). Failure to respond to the Complaint permits the inference that the use of the Complainant’s mark is misleading and Respondent has no rights or legitimate interests in the domain name in question. See Hewlett Packard Co. v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000. 

Registration and Use in Bad Faith

The Complainant asserts that the Respondent acted and is acting in bad faith. The Respondent has not denied that assertion.

The Respondent used the domain name to attract users to the auction site prior to 1999. Attracting users to a website or other on-line location by creating a likelihood of confusion with the Complainant’s mark as to the source of the website is evidence
of bad faith registration and use. Policy ? 4(b)(iv). See America Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that bad faith where the Respondent attracted users to a website sponsored by the
Respondent).

The Respondent also is now passively holding the domain name without use. The Respondent and its employee admitted that the domain name was not in use and was not to be used in the immediate future. This is evidence of bad faith. See Telstra
Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that passive holding of a domain name is use of the domain name in bad faith).

The Respondent used the domain name for a profit by offering it for sale to the Complainant and the Complainant’s competitors for valuable consideration in excess of out-of-pocket expenses. Policy ? 4(b)(i). See Hitachi, Ltd. v. Fortune Intíl Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding Respondent’s offer to sell the domain name for $100,000 constitutes bad faith).

Based on the above, the panel concludes that the Respondent registered and used the domain name in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted. 

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "Bluemax.com" be transferred from the Respondent to the Complainant.
  James A. Carmody, Judge (Ret.), Panelist
Dated: August 6, 2000