Domain name – Domain name dispute resolution policy – U.S. Trademark – Deceptively similar – Legitimate interest - Bad faith registration – Bad faith use – Inactive website – Warehousing domain names.

Complainant has duly registered “RCF” as a trademark for its products in the U.S. with 1959 being claimed as that date of first use.  In addition, various forms of the “RCF” mark have been registered in other countries for many years.  Respondent registered the domain name "RCF.com".

HELD, Name Transferred to Complainant.

Respondent’s domain name RCF.COM is identical or deceptively similar to Complainant’s registered trademark RCF.

Respondent has never been known as RCF and Respondent’s website has at all relevant times since the registration of the domain name RCF.COM, been inactive for any purpose. 

Respondent’s warehousing of dozens of domain names, especially including a widely registered trademark in this case, reflects that it has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to Complainant or to a competitor of Complainant for valuable consideration in excess of Respondent’s out-of-pocket expenses. Accordingly, Respondent has registered and used the domain name RCF.Com in bad faith.

Policies referred to

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

Registration Agreements referred to

Registration Agreement with Network Solutions Inc.., effective July 23, 1997

Administrative Decision referred to
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Carmody, Arbitrator: -
 

PROCEDURAL FINDINGS

Trademark:  RCF; U.S. Patent and Trademark Office Reg. No. 1,662, 305,
Registered October 29, 1991 (and      many non-U.S. registrations)

Domain Name: RCF.COM

Domain Name Registrar: Network Solutions

Domain Name Registrant: Vanilla Limited

Administrative Contact: Ng, Cecilia

Date of Domain Name Registration: July 23, 1997

Date Complaint Filed: May 2, 2000

Date of Commencement of the Administrative Proceeding in Accordance with Rule
2(a) and

Rule 4(c)': May 3, 2000

Due Date for Response: May 23, 2000.  No Response filed.

After reviewing the Complaint, and determining it to be in administrative
compliance, the National Arbitration Forum ("Forum") forwarded the Complaint to the Respondent on May 3, 2000, in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c).   In compliance with Rule 4(d)[1], the
Forum immediately notified Network Solutions that the administrative proceeding
had commenced.  The Complaint was then docketed and forwarded to the
undersigned arbitrator for decision.  Respondent did not submit a response to the
Forum within twenty (20) days pursuant to Rule 5(a).
 
 

FINDINGS OF FACT

1.   On May 4, 2000, Network Solutions confirmed that Respondent registered the
domain name "RCF.COM" under the registrant name Vanilla Limited and reflected
Cecilia Ng as the current Administrative Contact.  Network Solutions
acknowledged the commencement of this administrative proceeding, that
Respondent is bound by the Network Solutions Service Agreement Version 4.0
and that the said domain name is on “active” status. Accordingly, Respondent
agreed to resolve any dispute regarding its domain name registration pursuant to
ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and the
Uniform Domain Name Dispute Resolution Policy.  Neither the Complainant nor
Respondent contests the jurisdiction of the Forum or the undersigned arbitrator to
resolve this controversy.

2.       By virtue of the fact that there has been no appearance by Respondent, all
reasonable inferences of fact in the allegations of the Complaint will be taken to be
true.

3. Complainant Mackie is a corporation formerly known as Radio Cine Forniture
R.C.F. North America Inc. and which controls the worldwide operations of Radio
Cine Forniture (RCF).   Since 1949, Complainant has been in the business of
producing, marketing and sale of audio electronic products such as audio speakers.

4. Complainant has duly registered “RCF” as a trademark for its products with the
U.S. Patent and Trademark Office with a claimed date of first use of January, 1950
and holds Registration Number 1,662,305, registered on October 29, 1991.  In
addition to U.S. registration, various forms of the “RCF” mark have been
registered in several dozen countries for many years. 

5. As noted above, Respondent registered the domain name “RCF” on July 23,
1997.

6. Respondent’s website, http://www.rcf.com,  has, at all relevant times since the
registration of the domain RCF.COM, been inactive for any purpose and has
displayed only the message: “Welcome to the Future Website of rcf.com.”

7. Respondent, to the best knowledge of Complainant, has never been known as
RCF. 

8. Respondent is warehousing numerous domain names, many with the “Welcome
to the Future Website of ….”

9. Counsel for Complainant sent Respondent a “cease and desist” letter on March
5, 1999 and has not received a response.

10. Complainant seeks relief in the form of transferal of the domain RCF.COM to
Complainant.

CONCLUSIONS

The undersigned certifies that he has acted independently and has no known
conflict of interest to serve as the Arbitrator in this proceeding.  Having been duly
selected, and being impartial, the undersigned makes the following findings and
conclusions:

1.      Respondent’s domain name "RCF.COM” is identical or deceptively similar
to Complainant’s registered trademark “RCF.”  Paragraph 4.a.i. of the Policy.

2.      Complainant has valuable and legally protectable rights and legitimate
interests in the mark:

   "RCF," and Respondent has none. Paragraph 4.a.ii. of the Policy.

3.     Respondent’s warehousing of dozens of domain names, especially including a
widely registered trademark in this case, and its failure to respond to Complainant’s
“cease and desist” letter, reflects that it has registered the domain name in question
primarily for the purpose of selling, renting, or otherwise transferring the domain
name to the Complainant or to a competitor of Complainant for valuable
consideration in excess of Respondent’s out-of-pocket costs directly related to the
domain name. Accordingly, I find that Respondent has registered and used the
domain name "RCF.COM" in bad faith. Paragraph 4.aiii. of the Policy. 

4.      I find that Complainant’s requested relief of transferal of the domain name
“RCF.COM” from Respondent to Complainant is warranted based on the
foregoing.  Paragraph 4.i. of the Policy.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i) of the
ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and the
National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain
Resolution Policy, it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME
"RCF.COM" REGISTERED BY RESPONDENT VANILLA LIMITED BE
FORTHWITH TRANSFERRED TO COMPLAINANT MACKIE
INDUSTRIAL, INC.

Signed this 13th day of June 2000 by Judge James A. Carmody (Retired),
arbitrator.
  [1]Any references to "Rule" or "Rules" are to ICANN's Rules for Uniform Domain
Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy (the “Policy”) as supplemented by the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy.