v.
xtra-Net Internet Service GmbH
[Indexed as: Pueblo International v. xtra-Net Internet Service]
[Indexed as: XTRA.NET]
National Arbitration Forum
Administrative Panel Decision
Claim Number: FA0006000094975
Date Commenced: 8 June 2000
Judgment: 17 July 2000
Presiding Panelist: Judge Harold Kalina (Ret.)
Domain name - Domain name dispute resolution policy - U.S. service mark - Identical or confusingly similar - Legitimate interests - Failure to respond to Complaint - Failure to provide good or service - Mark not commonly known - Bad faith registration - Bad faith use - Failure to develop web site - Nonuse of domain name - Incomplete and inaccurate information in WHOIS directory.
Complainant owns the U.S. service mark XTRA for retail grocery store services and private food product labels. Complainant has 50 supermarket locations and has used the mark for over 17 years. Respondent registered the domain name XTRA.NET. Respondent has not promoted or marketed goods or services or developed a website in connection with the domain name at issue.
HELD, Name transferred to Complainant.
Respondents domain name is identical to Complainants registered
mark except for the addition of the domain name level designation "net".
Respondent has no rights or legitimate interest in the domain name
in question. This is evidenced by Respondents failure to respond
to the Complaint and Complainants communication attempts, failure to provide
a good or service in connection with the domain name and the fact that
the domain name is not a mark by which Respondent is commonly known.
Respondent registered the domain name in bad faith as demonstrated
by its failure to develop a web site within two years of registration and
nonuse of the domain name over a period of time. In addition, Respondent
provided incomplete and inaccurate information in the WHOIS directory and
did not respond to Complainant.
Policies Referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Registration Agreements referred to
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Cases referred to
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Panel Decisions referred to
America Online, Inc. v. QTR Corp., Case No. FA 92016 (Nat. Arb. Forum
May 9, 2000).
American Vintage Wine Biscuits, Inc. v. Brown, Case No. D2000-0004
(WIPO Feb. 18, 2000).
Home Interior & Gifts, Inc. v. Home Interiors, Case No. D2000-0010
(WIPO Mar. 7, 2000).
Telstra Corp. v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb.
18, 2000).
Ziegenfelder Co. v. VMH Enterprises, Inc., Case No. D2000-0039 (WIPO
Mar. 14, 2000).
Kalina, Panelist: -
PARTIES
The Complainant is Pueblo International, Inc., San Juan, Puerto Rico,
("Complainant"). The Respondent is xtra-Net Internet Service GmbH, Germany,
("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "XTRA.NET", registered with Network Solutions
Inc ("NSI").
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
("The Forum") electronically on 06/07/2000; The Forum received a hard copy
of the Complaint on 06/07/2000.
On 06/08/2000, NSI confirmed by e-mail to The Forum that the domain
name "XTRA.NET" 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 ICANNs UDRP.
On 06/08/2000, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of 06/28/2000
by which Respondent could file a Response to the Complaint, was transmitted
to 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 06/28/2000, having received no Response from Respondent, using the
same contact details and methods as were used for the Commencement Notification,
The Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2000, pursuant to Complainants request to have the dispute
decided by a Single Member panel, The Forum appointed Judge Harold Kalina
(Ret.) as Panelist.
Having reviewed the communications records, 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, without
the benefit of any Response from the Respondent.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the
Respondent to the Complainant.
PARTIES CONTENTIONS
A. 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 domain name in bad faith.
B. Respondent
The Respondent submitted no response in this matter.
FINDINGS
Complainant owns the U.S. service mark XTRA (filed 04/09/1992; registered
09/17/1996; No. 2,001,716) for retail grocery store services and private
food product labels. The Complainant has 50 supermarket locations.
On January 5, 1998, Respondent registered XTRA.NET.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy")
requires that the complainant must prove each of the following three elements
to obtain an order 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
Complainant has rights in the mark, XTRA, as evidenced through its
service mark registration.
The Respondents domain name is identical to the Complainants registered
mark except for the addition of the domain name level designation "net".
Rights or Legitimate Interests
Complainant asserts that the Respondent has no rights or legitimate
interests in the domain name in question. The Respondent has not denied
that assertion.
The Complainant attempted to communicate with the Respondent regarding
Respondents use of the domain name; however, the Complainant received
no response from the Respondent. This, in addition to a failure to respond
to
the Complainants Complaint, suggests that the Respondent has no rights
or legitimate interests in the domain name at issue. See Home Interior
& Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000).
There is also no evidence that the Respondent has promoted or marketed
goods or services in connection with the no domain in question. Failure
to provide a good or service in connection with the site demonstrates that
the Respondent does not have rights or a legitimate interest in the domain
name. Policy ¶ 4(c)(i). See Ziegenfelder Co. v. VMH Enterprises, Inc.,
D2000-0039 (WIPO Mar. 14, 2000). In addition, there is no evidence that
the Respondent is making a legitimate noncommercial or fair use of the
domain name. Policy ¶ 4(c)(iii).
Neither is the domain name a mark by which the Respondent is commonly
known. Policy ¶ 4(c)(ii). The mark, XTRA, has been used by the Complainant
for over 17 years.
For the above reasons, the panel concludes that the Respondent has
no right rights or legitimate interest in the domain name at issue.
Registration and Use in Bad Faith
Complainant asserts Respondent acted and is acting in bad faith. The
Respondent has not denied that assertion.
The Respondent has failed to develop the site within a two-year period
since registering the domain name. This raises the inference that the domain
name was registered in bad faith. See American Vintage Wine Biscuits, Inc.
v. Brown, D2000-0004 (WIPO Feb. 18, 2000) (finding that a failure to develop
the site in a two-year period creates an inference that the domain name
was registered without a bona fide intent to use the name in good faith).
Evidence of nonuse of a domain name for a period of time demonstrates use
of the domain name in bad faith. See Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (finding that passive holding of a domain
name is evidence of use in bad faith).
The Respondent has also provided incomplete and inaccurate information
in the WHOIS directory. For example, when the Complainant attempted to
send e-mail to the Respondent, the Complainant received an error message.
This, in addition to the Respondents failure to respond to the Complainants
communication attempts, is evidence of bad faith. See America Online, Inc.
v. QTR Corp., FA 92016 (Nat. Arb. Forum May 9, 2000) (holding that providing
incomplete and/or false information in the WHOIS directory is evidence
of bad faith).
The panel concludes that the Respondent registered and is using the
domain name in bad faith.
DECISION
Having established all three elements required by the ICANN Policy
Rule 4(a), it is the decision of the panel that the requested relief be
granted.
Accordingly, for all of the foregoing reasons, it is ordered that the
domain name, "XTRA.NET" be transferred from the Respondent to the Complainant.
Domain Name Transferred