Domain name - Domain name dispute resolution policy - U.S. Trademark - Common Law Trademark - Respondent default - Identical - Confusingly similar - No use of the domain name - passive holding of a domain name - knowledge of infringement - bad faith use.

Complainant was registrant of United States trademark GARAGE for prerecorded phonograph records and other storage media for musical entertainment. Respondent registered the domain name garagerecords.com, but has not posted any information or services. Respondent was aware of the Complainant’s mark.

Held, Name Transferred to Complainant.

As a result of Respondent’s failure to respond, all reasonable inferences of fact in the Complaint will be deemed true. Complainant has rights in the registered mark, Garage. Complainant also has common law rights in the mark Garage Records, Inc., which has been in use by Complainant since incorporation in 1995. Respondent’s domain name is identical to and confusingly similar to the marks in which Complainant has rights  The Panel determined that Respondent has no rights or interests in the domain name. 

Respondent had knowledge of the Complainant’s registered mark and its services offered upon registering the domain name. Passive holding of a domain name with knowledge that it is infringing on another’s mark, is evidence of use in bad faith. 

Policies referred to

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

Registration Agreements referred to

Network Solutions Service Agreement Version 5.0

Cases referred to
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Panel Decisions referred to

Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000).
Nintendo of America, Inc. v. Lizmi, FA 94329 (Nat. Arb. Forum Apr. 20, 2000).
Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000).
Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
World Wrestling Fed. Entertainment, Inc. v. Bosman, D0099-0001 (WIPO Jan. 14, 2000).
Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000).

PARTIES
The Complainant is Garage Records, Inc., New York, NY, USA ("Complainant"). The Respondent is Garage Records, Malibu, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "GARAGERECORDS.COM", registered with Network Solutions Inc. ("NSI").

PANELIST(s)
The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist(s).

PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/27/2000; The Forum received a hard copy of the Complaint on 06/27/2000

On 06/28/2000, NSI confirmed by e-mail to The Forum that the domain name "GARAGERERECORDS.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 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 07/10/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/31/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail. 

On 08/08/2000, 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 10, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Harold Kalina (Ret.) as Panelist.

Having reviewed the communications records, 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 Forum’s 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 and confusingly similar 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. 

A. Respondent
The Respondent submitted no response in this matter.
As a result of the Respondent’s failure to respond, all reasonable inferences of fact in the Complaint will be deemed true. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000).

FINDINGS
The Complainant owns the U.S. registered trademark for the mark GARAGE (registration date: 07/23/1996; No. 1,988,982) for prerecorded phonograph records, audio and videocassette tapes, and audio and video compact disks featuring musical entertainment.

The Respondent registered the domain name in question on July 25, 1997. Since registration, the Respondent has not posted any information or services at the website that corresponds with the domain name.

At the time of registration of the domain name, the Respondent was aware of the Complainant’s mark. In 1997, the Respondent tried to register "Garage Records" as a trademark. The Complainant formally protested the Respondent’s trademark application on the grounds that: (1) it was confusingly similar to the Complainant’s mark, (2) the goods and services described in the Respondent’s application were similar to the Complainant’s goods and services, (3) the Complainant’s mark had been used in interstate commerce prior to the Respondent’s use. The Respondent abandoned the attempt to register the mark.

On February 4, 1999 the Complainant contacted the Respondent requesting that the domain name be transferred. The Respondent failed to respond.

DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order 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.

Complainant’s Rights in the Mark
The Complainant has rights in the registered mark, Garage. The Complainant also has common law rights in the mark Garage Records, Inc., which has been in use by the Complainant since incorporation in 1995. Sufficient association between the mark and the Complainant exists, and as a result, a common law trademark has been established. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the Complainant have rights in a registered trademark and that it is sufficient to show common law rights). 

Identical and/or Confusingly Similar
The Respondent’s domain name is identical to and confusingly similar to the marks in which the Complainant has rights. See Nintendo of America, Inc. v. Lizmi, FA 94329 (Nat. Arb. Forum Apr. 20, 2000) (finding that Respondent’s domain names <pokemon2000.com> and <pokemons.com> are confusingly similar to the Complainant’s mark).

Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name in question. The Respondent has not denied the Complainant’s assertion.

The Respondent has not used the domain name in connection with a bona fide offering of goods and services. Policy ¶ 4(c)(i). The Respondent also has not made a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. Policy ¶ 4(c)(iii). The Respondent has made no use of the domain name, but is rather, holding it passively without activating the website.

The panel determines that the Respondent has no rights or legitimate interests in the domain name in question.

Registration and Use in Bad Faith
The Complainant asserts that the Respondent has registered and used the domain name in bad faith. The Respondent has not denied the Complainant’s assertion.

ICANN Policy requires that the Complainant prove registration and use in bad faith. See World Wrestling Fed. Entertainment, Inc. v. Bosman, D0099-0001 (WIPO Jan. 14, 2000).

The Respondent had knowledge of the Complainant’s registered mark and its services offered upon registering the domain name. This is evident by the Respondent’s attempt to seek trademark registration of the mark "Garage Records." See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (finding registration in bad faith where respondent admits he knew of the Complainant and the Complainant’s mark at the time of registration). The panel concludes that the Respondent registered the domain name in bad faith.

The Respondent has made no use of the domain name in question. Passive holding of a domain name with knowledge that it is infringing on another’s mark, is evidence of use in bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"). The panel determines that is one of such circumstances, and the Respondent 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, "GARAGERECORDS.COM" be transferred from the Respondent to the Complainant. Judge Harold Kalina (Ret.)
Dated: August 17, 2000