Domain name – Domain name dispute resolution policy – Service Mark – Confusingly similar – Identical – Legitimate interest - Bad faith registration – Bad faith use.

Complainant was registered owner of service mark.  Respondent registered the domain name <netgrocer.org>.  Complainant alleged that its service mark and its web address, <netgrocer.com>, were identical to Respondent’s registered domain name and that Respondent had no legitimate interest in the domain name.

HELD, Name Not Transferred.

Complainant is the owner of the United States service mark NETGROCER, used in commerce since 1997 and registered in 1999.  In addition, Complainant registered the domain name <netgrocer.com> in 1995 and has widely used this domain name on the Internet. The domain name <netgorcer.org>, registered by Respondent in 1999, is identical to and confusingly similar to Complainant’s registered service mark.  The distinction between .org and .com is not significant in determining similarity.

Despite the limited evidence, the Panel believes that it is reasonable to infer that Respondent has no rights or legitimate interest in the domain name in question.
However, Complainant has not met its burden of proof on the issue of bad faith registration and use.  There is no evidence of an attempt by Registrant to sell the domain name for profit.  There is no evidence that Respondent engages in a pattern of registering the trademarks of others as domain names.  There is no evidence that Respondent registered the domain name for the purpose of disrupting the business of a competitor.   Finally, there is no evidence that Respondent intentionally attempted to create a likelihood of confusion by registering the domain name <netgrocer.org>

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

Registration Agreements referred to

Registration Agreement with Register.com, Inc., effective December 31, 1999

Panel Decision referred to
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Diaz, Panelist: -

1. The Parties

Complainant is NetGrocer, Inc., located at 1112 Corporate Road, North
Brunswick, N.J. 08902 ("Complainant"). Respondent is Anchor, located at
7131 West Yarmouth Ct., West Bloomfield, MI 48322 ("Respondent").

2. The Domain Name(s) and Registrar(s)

The domain name at issue is <netgrocer.org>. The registrar is Register.com,
Inc. (the "Registrar"), 575 Eighth Ave., 11th Floor, New York, NY 10018.
 

3. Procedural History

The National Arbitration Forum (the "Forum") received the complaint on February
25, 2000. The Forum verified that the complaint satisfies the formal requirements of
the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the
Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the
"Supplemental Rules"). The Forum thereafter sent the Respondent a notification of
the administrative proceeding together with copies of the complaint. This
notification was sent by the methods required under paragraph 2(a) of the Rules.
The formal date of the commencement of this administrative proceeding is February
29, 2000. 

On March 7, 2000, the Registrar verified to the Forum that:

        1.The domain name at issue was registered with Register.com; and 
        2.That the registration for the disputed domain name was on "Hold"
          status. 

Respondent did not submit a response to the complaint within twenty (20) days as
required by Rule 5(a). The Administrative Panel issues its decision below based
upon the complaint, the filed documents, the Policy, the Rules, and the
Supplemental Rules without the benefit of any response from Respondent.

Complainant first used the NETGROCER mark in commerce on May 4,
1997. Complainant is currently the owner of the registered United States
service mark NETGROCER (Registration No. 2,217,548) which was
issued on January 12, 1999 for computerized on-line ordering services
featuring consumer goods, namely groceries, in class 42 (U.S. CLS.100 and
101). Complainant also has two pending trademark applications for
NetGrocer (App. Nos. 75/508,254 and 75/480,948). 

In addition, Complainant registered the domain name <netgrocer.com> in
1995 and has widely used this domain name on the Internet.

Respondent registered the domain name <netgrocer.org> on December
31,1999. No evidence was presented suggesting that there is an active web
site associated with the <netgrocer.org> domain name.

5.  Parties’ Contentions

A.  Complainant contends that Registrant’s domain name <netgrocer.org> is
      identical to or substantially similar to Complainant’s NETGROCER service
      mark. 
B. Complainant contends that Respondent has no rights or legitimate interest in
      the disputed domain name. 
 
C. Complainant contends that Respondent registered and is using the domain
      names in bad faith. 

D Respondent has not contested that the domain name is identical to or
      confusingly similar to Complainant’s service mark. 
 
E. Respondent has not contested that it has no rights or legitimate interest in the
      disputed domain name. 
 
F. Respondent has not contested that it has acted in bad faith in registering and
      using the domain name. 

To obtain relief under paragraph 4(a) of the Policy, the Complainant must prove
each of the following:

        1.That 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.That the Respondent has no rights or legitimate interest in the domain
          name; and 
        3.That the domain name has been registered and used in bad faith. 

 A.  Similarity Between Registrant’s Domain Name and Complainant’s Service
       Mark. 

      In this case, it is clear that the domain name registered by Respondent is
      identical to the registered service mark owned by Complainant. The
      distinction between .org and .com is not significant in determining similarity.
      The panel finds that the domain name is identical to and confusingly similar to
      Complainant’s registered service mark.

  A.  Respondent’s Rights or Legitimate Interest in the Domain Name.

Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate
interest in the domain name includes:

         1.Demonstrable preparations to use the domain name in connection
           with a bona fide offering of goods or services prior to the dispute; 
         2.An indication that the registrant has been commonly known by the
           domain name even if it has acquired no trademark rights; or 
         3.Legitimate noncommercial or fair use of the domain name without
           intent to divert consumers or to tarnish the trademark. 

Respondent has made no showing with respect to any of the above factors.
Similarly, Complainant has asserted, without providing any affirmative evidence,
that Respondent has no rights or legitimate interest in the domain name. Despite the
limited evidence, the Panel believes that it is reasonable to infer that Respondent
has no rights or legitimate interest in the domain name which is essentially identical
to Complainant’s registered service mark, NETGROCER. 

B. Respondent’s Bad Faith Registration and Use of the Domain Name. 

Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith
registration and use includes:

        1. Circumstances indicating the domain name was registered for the
           purpose of resale to the trademark owner or competitor for profit; 
        2. A pattern of conduct showing an attempt to prevent others from
           obtaining a domain name corresponding to their trademarks; 
        3. Registration of the domain name for the purpose of disrupting the
           business of competitor; or 
        4. Using the domain name to attract, for commercial gain, Internet users
           to Respondent’s web site by creating a likelihood of confusion with
           the trademark owner’s mark. 

The Panel finds that the Complainant has not met its burden of proof on the issue of
bad faith registration and use. There is no evidence of an attempt by Registrant to
sell the domain name for profit. There is no evidence that Respondent engages in a
pattern of registering the trademarks of others as domain names. There is no
evidence that Respondent registered the domain name for the purpose of disrupting
the business of a competitor. Indeed, there is no evidence of any use, much less
bad faith use, of the contested domain name. Finally, the record contains insufficient
evidence to establish that Respondent intentionally attempted to create a likelihood
of confusion with Complainant’s mark which, after all, was not registered with the
U.S. PTO until after Respondent had registered the domain name in question.

Accordingly, the Panel finds that Complainant has failed to meet its burden of proof
on a prima facie issue: Registrant’s bad faith in the registration and use of the
contested domain name. Accordingly, under the standards applicable to this
proceeding, the Panel concludes that Complainant is not entitled to relief on the
record presented. 

7.Decision

 We find in favor of Respondent and deny Complainant’s request for relief under
paragraph 4 (i) of the Policy.

Date: April 7, 2000 Nelson A. Diaz

Presiding Panelist

     AMENDMENT TO ADMINISTRATIVE PANEL DECISION 
                        No.: FA0002000094207 

 
             THE NATIONAL ARBITRATION FORUM
                         P.O. BOX 50191
             MINNEAPOLIS, MINNESOTA 55405 USA

NETGROCER, INC.
1112 Corporate Road
North Brunswick, N.J. 08902 

COMPLAINANT, 

vs.

ANCHOR
7131 West Yarmouth Ct.
West Bloomfield, MI 48322

RESPONDENT.

File No.: FA0002000094207 

This is an Amendment to the Administrative Panel Decision with regard to the
domain name dispute between the parties. The last sentence in the second to last
paragraph in 6. Discussion and Findings above should read as follows: "Finally,
the record contains insufficient evidence to establish that Respondent intentionally
attempted to create a likelihood of confusion with Complainant’s mark by
registering the domain name <netgrocer.org>."

The remainder of 6. Discussion and Findings remains unchanged.

Having considered the above revision, the Panel reiterates its finding that
Complainant has not met its burden of proof on the issue of bad faith registration
and use of the contested domain name. Accordingly, the Panel reaffirms its decision
in favor of Respondent and denies Complainant’s request for relief under
paragraph 4(i) of the Policy.

Date: April 11, 2000 Nelson A. Diaz
Presiding Panelist