Domain Name - Domain Name Dispute Resolution Policy - Identical -Famous mark - Sale of Domain Name - Bad faith 

The domain name at issue is "DOOM.COM".  The Complainant is Id Software, Inc. and the Respondent is Doom Gaming Connections.  Complainant holds a registered Trademark, "Doom", which it has used continuously since 1993.  The Mark is famous, and refers to a tremendously popular computer game. 
Complainant states that Respondent, as the owner of the domain name "doom.com", violates the ICANN Rules and Policies and has placed the domain name for sale at e-bay.com (the online auction service).
Respondent purchased the name two years before the Mark was registered and has never used the domain name in any way which conflicts with the rights of the Complainant.

HELD:  Name Not Transferred to Complainant

The Mark and domain name are identical but prior to the e-bay auction, Respondent had never attempted to use the name in a way that violated the ICANN Rules and Policies. Respondent held the domain name "doom.com" from 1995 until 2000 without doing any act in violation of the Rules and Policies.
There is no evidence in this case that Respondent acquired the name for any improper purpose, and Respondent’s conduct does not allow an inference that this Respondent’s acquisition and use were improper. 
Respondent has no legitimate interest in the name except as an address and as an asset for sale. Respondent’s e-bay auction is some evidence of bad faith. However, because there is no evidence of any attempt to sell during the first five years of ownership, there can be no inference that Respondent acquired the name for the purpose of resale to Complainant or a competitor. There is also no evidence that the name was registered in order to prevent the Mark holder from using the name or evidence of registration for the purpose of disrupting Complainant’s business. The e-bay auction alone is simply not sufficient evidence of bad faith.

Cases referred to:

CRS Technology Corp. v. Condenet, Inc., Forum File No. FA #93547, February 3, 2000.

PARTIES
The Complainant is Id Software, Inc., Mesquite, TX, USA ("Complainant"). The Respondent is Doom Gaming Connections, West Jordan, UT, USA ("Respondent").

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

PANELIST(s)
R. Glen Ayers, Jr. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/09/2000; The Forum received a hard copy of the Complaint on 06/09/2000.
On 06/13/2000, NSI confirmed by e-mail to The Forum that the domain name "DOOM.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 06/19/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/10/2000 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. 
Respondent’s Response, dated July 2, 2000, was timely filed. 
On July 11, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed R. Glen Ayers, Jr. as Panelist.
The Complainant filed an additional submission on July 14, 2000, which was not filed in compliance with Supplemental Rule #7 and was not considered.

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

PARTIES’ CONTENTIONS
A. Complainant
The Complainant holds a registered Trademark, "Doom" (the "Mark"), which is registered in both the United States and various countries. The Mark is almost certainly "famous", and refers to a tremendously popular computer game. The Complainant has used the Mark continuously since 1993.
Complainant states that Respondent, as the owner of the domain name "doom.com", violates the ICANN Rules and Policies and has placed the domain name for sale at e-bay.com (the online auction service).
B. Respondent
Respondent’s defense is simple. He states that he purchased the name in 1995, two years before the Mark was registered, that he has never used the domain name in any way which conflicts with the rights of Complainant, and that the domain site disclaims any connection with Complainant. 

FINDINGS
This dispute can be reduced to a very simple statement: Does the offer to sell a domain name, which is itself identical to a famous Mark, violate all three of the ICANN Policies and Rules?
The Mark and domain name are identical but prior to the e-bay auction, Respondent had never attempted to use the name in a way which violated the ICANN Rules and Policies.
There is no evidence in this case that Respondent acquired the name for any improper purpose, and Respondent’s conduct does not allow an inference that this Respondent’s acquisition and use were improper. After all, Respondent held the domain name "doom.com" from 1995 until 2000 without doing any act in violation of the Rules and Policies.
However, while, the word "doom" is a common English noun and has no unique relationship to the world of computer games, the use by Complainant of that name for a highly popular product has certainly made the word into a famous or distinctive Mark.

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 Mark and the domain name are identical. Likelihood of confusion is so obvious that, as the evidence shows, Respondent has posted a disclaimer at its website stating that its domain has no connection with the Complainant.
Rights or Legitimate Interests
Respondent has no legitimate interest in the name except as an address and as an asset for sale. The domain is not currently in use and has not been in commercial use since 1996. Respondent’s only real interest is the resale value of the domain name.
Registration and Use in Bad Faith
Respondent’s e-bay auction is some evidence of bad faith. However, there is no evidence of any attempt to sell during the first five years of ownership, so there can be no inference that Respondent acquired the name for the purpose of resale to Complainant or a competitor [See Rule 4(b)(i)]. There is also no evidence that the name was registered in order to prevent the Mark holder from using the name [Rule 4(b)(ii)]. There is no evidence of registration for the purpose of disrupting Complainant’s business. [Rule 4(b)(iii)]. There is evidence of intent to attract Internet users to the site by creating confusion. [Rule 4(b)(iv)].
The e-bay auction alone is simply not sufficient evidence of bad faith. 
This is one of those situations where the first to trademark a common word - - "Doom" - - and the first to register a domain using that word are not the same person. Previously, the panel for "concierge.com" (CRS Technology Corp. v. Condenet, Inc.), Forum File No. FA#93547, February 3, 2000, of which I was a member, ruled that the holder of the Trademark "Concierge" could not prevent the holder of the domain name "concierge.com" from using the domain name for a competing business. The first to register the generic word won, but in that case, the holder of the Mark did not hold a famous or highly distinctive Mark made famous or distinctive by the holder’s marketing efforts.
This case is not similar to "concierge.com", but the result must be the same, since there is insufficient evidence of "bad faith" on the part of the current owner of the domain name.
If a purchaser from Respondent or Respondent were to engage in acts which would violate the Policies set forth at ICANN Rule 4(b), then the result would be different.

DECISION
Based upon the foregoing, and pursuant to ICANN Rule 4(i), it is decided as follows: The undersigned directs that the domain name "doom.com", registered by Respondent, not be transferred to Complainant.
  R.GLEN AYERS, JR., PANELIST
Dated: July 24, 2000