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:

 
PROCEDURAL FINDINGS

Domain Name:Calstore.net

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
      Services.

   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. 

 
CONCLUSION

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
           trademark 

           or service mark in which the Complainant has rights.

        2.The Respondent does not have rights or legitimate interests in respect
           of the 

           domain name.

        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.

DECISION

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
name.

 
Arbitrator

Louis Condon

March 20, 2000

Charleston, SC