[Indexed as: Calvert Group v. Pagano]
[Indexed as: KNOWWHATYOUOWN.COM]
National Arbitration Forum
Administrative Panel Decision
Case No.: FA0006000095068
Commenced: 29 June, 2000
Judgment: 27 July, 2000
Presiding Panelist: The Honorable Paul A. Dorf, (Ret).
Domain name - Domain name dispute resolution policy - Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use Legitimate interest Cyber squatting Out-of-pocket cost.
The Complainant, Calvert Group, Ltd, is engaged in the business of managing the nations first and largest family of socially responsible mutual funds. In conjunction with the Complainants commitment to social responsibility they developed the Know What You Own® brand. Complainant uses the mark in connection with advertising and its website.
Respondent, Joseph Pagano, registered the domain name knowwhatyouown.com days before Complainant tried to do so and contends that he registered the domain name to coincide with the catch phrase he came up with for his business.
Held, Name Transferred to Complainant.
Respondents domain name is confusingly similar to Complainants
registered trademark, Know What You Own. It is also confusingly similar
to the service offered by Complainant under its Know What You Own®
service.
Respondent has no legitimate interest in the domain name as Complainants
registration of the trademark Know What You Own® pre-dates Respondents
registration of the domain name. Further, Respondents argument that the
idea of "knowing what you own" is a logical extension of all investing
activities does not justify that he has any rights or legitimate interests
in the domain name.
Respondent registered the name in bad faith as evidenced by his
offer to transfer the domain name to the Complaint for the sum of $10,000,
which far exceeds any out-of-pocket costs that may have been related to
the registration of the domain name. Further, Respondent has not developed
the website beyond the under construction phase.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decision referred to
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Dorf, Panelist: -
1. The Parties
The Complainant is Calvert Group, Ltd., Bethesda, MD, USA ("Complainant").
The Respondent is Joseph Pagano, Chicago, IL, USA ("Respondent").
2. Registrar and Disputed Domain Name(s)
The domain name at issue is "KNOWWHATYOUOWN.COM", registered with Network
Solutions Inc. ("NSI").
3. Procedural History
Complainant submitted a Complaint to the National Arbitration Forum
("The Forum") electronically on 06/26/2000; The Forum received a hard copy
of the Complaint on 06/26/2000.
On 06/28/2000, NSI confirmed by e-mail to The Forum that the domain
name "KNOWWHATYOUOWN.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 ICANNs UDRP.
On 06/29/2000, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of 07/19/2000
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 Respondents registration as technical, administrative and billing
contacts by email.
On July 20, 2000 pursuant to Complainants request to have the dispute
decided by a Single Member panel, The Forum appointed The Honorable Paul
A. Dorf (ret.) as Panelist.
4. Relief Sought
The Complainant requests that the domain name be transferred from the
Respondent to the Complainant.
5. Parties Contentions
A. Complainant
The Complainant contends that the Respondent by registering the domain
name that is the subject of this Complaint, has created confusion among
its customers as the domain name is identical or confusingly similar to
the Complainants trademark brand for researching potential investments,
which is used as a interactive tool on its website. Also, the Respondent
has registered the domain names in bad faith and is engaged in the business
of cyber squatting for profit.
B. Respondent
The Respondent contends that he did not register the domain name in
bad faith, but instead to coincide with the catch-phrase he came up with
for his business.
6. Findings
The Complainant is engaged in the business of managing the nations
first and largest family of socially responsible mutual funds. It is their
philosophy that their shareholders can make sound investments without compromising
their values. In addition to assessing the economic viability of potential
investments, companies are evaluated according to specific social and environmental
criteria designed for each of the Complainants funds. In conjunction with
the Complainants commitment to social responsibility they developed the
Know What You Own® brand in April, 1996.
On July 1, 1997 Complainant was issued trademark registration 2,075,786
by the United States Patent and Trademark Office for Know What You Own®
and currently uses this trademark in its advertising materials and as an
interactive tool on its website in connection with the Know What You Own®
service.
When the Complainant attempted to register the domain name that is
the subject of this Compliant in July 1999, it was discovered that the
Respondent had registered the same name just days before.
7. 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
Complainant has a valid trademark registered with the U.S. Patent and
Trademark Office for Know What You Own. The Respondents registration of
this domain name may create confusion to the public as the stated intent
for the website to explain technology produced by important tech companies
in clear, non-technical language. This is also confusingly similar to the
service offered by Complainant under its Know What You Own® service.
Rights or Legitimate Interests
Respondent has no legitimate interest in the domain name as Complainants
registration of the trademark Know What You Own® pre-dates Respondents
registration of the domain name.
Further, Respondents argument that the idea of "knowing what you own"
is a logical extension of all investing activities does not justify that
he has any rights or legitimate interests in the domain name.
Registration and Use in Bad Faith
The Respondent offered to transfer for the domain name to the Complaint
for the sum of $10,000, which far exceeds any out-of-pocket costs that
may have been directly related to the registration of the domain name.
Also, the Respondent failed to develop the website beyond the "under
construction" phase. This appears to be an attempt by the Respondent to
disrupt the Complainants business.
8. Decision
As all three elements required by the ICANN Policy Rule 4(a) have been
satisfied, it is the decision of this panelist that the requested relief
be granted.
Accordingly, for all of the foregoing reasons, it is ordered that the
domain name "knowwhatyouown.com" be transferred from the Respondent to
the Complainant.
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