[Indexed as: National Moving Network v. American Van Lines]
[Indexed as: nationalmoving.com et al.]
National Arbitration Forum
Domain Name Dispute Administrative Decision
Case No.: FA#94872
Commenced: 22 May 2000
Judgement: 26 June 2000
Arbitrator: Louis E. Condon
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 Complaints
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 DiSorbos (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 ICANNS 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 ICANNs 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 Respondents registration as technical, administrative
and billing contacts by e-mail.
On June 21, 2000, pursuant to Complainants 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 Forums 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 Respondents
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 Complainants 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 Complainants 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 Generals 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 Complainants 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 Respondents domain name is identical to the Complainants registered
marks except for the addition of the domain name level designations. When
potential clients seek the Complainants services on the Internet, the
Complainants 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 Respondents
name nor anything else submitted reflects any connection with
the domain names. The only logical connection would appear to come through
the Respondents 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 Complainants use of the trademark
in a corresponding domain name or for the purpose of disrupting the Complainants
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.
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