Domain name – Domain name dispute resolution – Misdirection of e-mails – Goodwill and reputation damage – Identical domain name – Misdirection of customers – No legitimate interests or rights – Not commonly known by domain – Unfair use of domain – Misleading consumers – Bad faith – Prevent registration. 

Complainant had trademark for “National Moving Network” to be used in conjunction with operation of its business.  Complainant attempted to register domain names for “nationalmoving.com” and “nationalmoving.net” but was not successful for technical reasons not in their control.  On a later date, Complainant tried to register “nationalmoving.com” but found that it had already been registered by Respondent, along with another domain name. Complainant's former business partner, who is Respondent's brother, now works for Respondent. 

Held, Names Transferred to Complainant.

The domain names registered by Respondent were identical to Complaint’s registered trademark, with the exception of the domain level designations. When, potential customers would enter the registered trademark of Complainant, they would be lead to the website of a competitor rather than Complainant.  Complainant is suffering from misdirected or undelivered e-mails and a loss of goodwill because of Aldo DiSorbo’s (Respondent's brother) prohibition from the moving industry. 
Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by the domain name. Nor is Respondent making a fair or legitimate use of the domains. The use of the domains is to divert potential customers away from Complainant to the Respondent for commercial gain. 
Registration of the domain names was done by Respondent in bad faith.  They were only registered in order to prevent Complainant from registering a domain name that would reflect its registered trademark.

Policies referred to

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

Panel Decision referred to
--

Condon, Panelist: - 

The above styled matter came on for an administrative hearing on June 26, 2000 
before the undersigned arbitrator in accordance with ICANN’S Uniform Domain Name Dispute Resolution Policy and Rules. The arbitrator certifies that he has no conflict of interest in this matter. After due consideration of the written record as submitted, the following decision was made:
Disputed Domain Name(s): “NATIONALMOVING.COM”, and
“NATIONALMOVINGNETWORK.COM”
    Domain Registrant:                                American Van Lines
            Domain Registrar:                                 NETWORK SOLUTIONS, INC.
 
 

PROCEDURAL HISTORY
            Complainant, National Moving Network, Inc., submitted a Complaint to the National Arbitration Forum (The Forum) electronically on May 22, 2000; The Forum received a hard copy of the Complaint on May 30, 2000.
            On May 26, 2000, Network Solutions, Inc. (NSI)   confirmed by e-mail to The Forum that the domain names “NATIONALMOVING.COM” and  “NATIONALMOVINGNETWORK.COM” are 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 ICANN”s UDRP.
            On May 31, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 20, 2000, by which Respondent could file a Response to the Complaint, was transmitted to the 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   June 21, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Louis E. Condon as Panelist. Having reviewed the communications records in the case file, 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. 

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

PARTIES CONTENTIONS

 COMPLAINANT
            The Complainant contends that the Respondent has registered a domain name that is identical 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 name in bad faith.
RESPONDENT
The Respondent denies the allegations of the Complaint and claims it has plans to use the domain names for a bona fide offering of goods and services. 

FINDINGS
            The Respondent is owned by Stefano DiSorbo who is the brother of Aldo DiSorbo a former business partner of the Complainant. In April 1998, Randy Goldberg (Complainant) and Aldo incorporated the American Moving Network, Inc. in the State of Florida to broker moving services. Subsequently, they split and on February 19, 1999, Randy Goldberg incorporated “National Moving Network, Inc.”, to provide related moving brokerage  services, commencing business the same day. From March 3, 1999 through March 10, 1999 National Moving Network, Inc. repeatedly tried to register the domain names “nationalmoving.com” and “nationalmoving.net” through an ICANN accredited registrar. However, for various technical reasons not within its control, these requests were not processed in a timely fashion.  On March 15, 1999, when Complainant tried for a third time to register the domain names, its request to register the name  “nationalmoving,com” was denied in light of Respondent’s registration that had occurred on March 12, 1999.
            Although Complainant alleges that Aldo works for the Respondent, Stefano denies that his brother has any connection with American Van Lines, Inc. which offers identical service as that of National Moving Network.  An Internet user typing in the Complainant’s name is directed to a competitor offering identical services in the same geographic region causing Complainant irreparable harm. Complainant claims there have been numerous incidences of misdirected or undeliverable emails sent to the domain names at issue. 
            This damage to Complainant’s good will and reputation is further compounded by the fact that Aldo DiSorbo was barred from the moving industry in 1997 by the Attorney General of the State of Florida. On February 10, 2000 the Attorney General’s office filed a motion for indirect criminal contempt of court for violating this court order.
            In an effort to resolve the matter, Complainant offered to purchase the domain names for $1,000.00 but received no response from the Respondent.
            Complainant is the owner of pending US Federal Trademark Application 75-794339 for the mark “NATIONAL MOVING NETWORK” for brokering services in the moving industry filed on May 14, 1999. 
            The Respondent is a national moving company which registered the domain names as part of a process of setting up a network between other national moving companies to facilitate finding themselves return tonnage, as well as attracting customers for Respondent. Respondent maintains that Aldo DiSorbo has nothing to do with American Van Lines, Inc. Further, any problems which exist are between Aldo DiSorbo and Randy Goldberg and have nothing to do with the domain name issue. Although nothing was offered in support of the statement, Respondent claims he has “ spent a lot of time & money promoting my website using these names”. 
            Respondent denies receiving Complainant’s offer to purchase the domain names. However, Respondent says the offer is ridiculously low and he would not have considered it even if he had received it. Respondent says the names are worth at least ten times as much  considering the amount of advertising and promotion he has done. 
DISCUSSION
            Paragraph 4(a) of the ICANN Uniform Domain Names Dispute Policy (Policy) directs that the Complainant must prove each of the following three elements in order to demonstrate claims that a domain name should be canceled 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;
      and
(2)   the respondent has no legitimate interests in respect of the domain name;
                  and
(3)  the domain name has been registered and is being used in bad faith.
            The Complainant has offered a number of  exhibits in support of its claims, whereas the Respondent has submitted what might be categorized as a general denial.
Identical and/or Confusingly Similar -
            The Respondent’s domain name is identical to the Complainant’s registered marks except for the addition of the domain name level designations. When potential clients seek the Complainant’s services on the Internet, the Complainant’s marks are most probably the first domain name entered. In this case that would lead prospective customers directly to a competitor.

Rights or Legitimate Interests -
            The Respondent is not commonly known by the domain names; and, is not making a fair or legitimate use of the domain names. Policy Paragraph 4(c).Rather the Respondent is using the domain names with intent for commercial gain to misleadingly divert consumers from the Complainant. Neither the Respondent’s name nor anything else submitted reflects  any  connection with the domain names. The only logical connection would appear to come through the Respondent’s brother as the Complainant implies.  Therefore the Respondent has no rights or legitimate interests in the domain names.

Bad Faith -
            On the basis of the documentation, I find that the Respondent registered and used the domain names to prevent The Complainant’s use of the trademark in a corresponding domain name or for the purpose of disrupting the Complainant’s business. See Paragraph 4(b)(ii and (iii)  of the ICANN Policy. 

DECISION
            The Complainant having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the arbitrator that the relief requested be granted. Accordingly, for all the foregoing reasons, it is ordered that the domain names, “Nationalmoving.com” and “Nationalmovingnetwork.com” are transferred from the Respondent to the Complainant.