Domain name – Domain name dispute resolution – Contract to develop website – Domain Name Assignment Agreement – Identical – Domain name for business purpose – No rights or legitimate interests – No dispute – Bad faith – No transfer of domain to rightful owner – Domain moved to new server.

Complainant had state registration for its trade mark PURE COLOR and a federal registration pending.  Complainant contracted with Respondent to have a website with the domain name PURECOLOR.com designed. Complainant wanted domain name transferred to their possession and contacted Respondent to have documents notarized for transfer.  Respondent disconnected site and moved it to another server. 

Held, Name Transferred

Domain name is identical to Complainant’s registered trademark. Domain name was chosen by Complainant as part of website design contract with Respondent for Complainant’s business.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent did not dispute this allegation.  Complainant had a contract and Domain Name Assignment Agreement, which gave Complainant rights in the domain name and removed those rights or legitimate interests from Respondent. 
The domain name is being used in bad faith because Respondent is not transferring the domain name as agreed to with Complainant, and then moved the domain site to a new server without Complainant’s permission.

Policies referred to

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

Cases referred to

Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000)
 

Panel Decision referred to
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Carmody, Panelist: -
 

PARTIES
The Complainant is Pure Color, Laguna Beach, CA, USA ("Complainant"). The Respondent is Sabin and Associates, Ontario, CA, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is “PURECOLOR.COM”, registered with Network Solutions, Inc. (“NSI”).
PANELIST
Hon. James A. Carmody, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on June 13, 2000; The Forum received a hard copy of the Complaint on June 13, 2000. 
On June 15, 2000, NSI confirmed by e-mail to The Forum that the domain name “PURECOLOR.COM” 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 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On June 19, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 10, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email. 
On July 10, 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 12, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody 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, 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 (Complainant’s web site developer) has highjacked the domain name in question after both parties signed and agreed to a Domain Name Assignment Agreement.  The Complainant contends that the domain name is identical to its mark in use by the Complainant.  The Complainant further 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 has submitted no response in this matter and, accordingly, all reasonable inferences of fact in the allegations of the Complainant will be deemed to be true.
FINDINGS
On June 25, 1998, the Complainant contacted the Respondent regarding the purchase and design of a website, PURECOLOR.COM.  The Complainant paid the Respondent $7,500.00.  After the project was started, the Respondent provided the Complainant with a contract that formalized the details and technical support of the website.  The Respondent gave the Complainant a signed Domain Name Assignment Agreement. 
The Complainant contacted the domain registrar and requested that the domain name be registered in the Complainant’s name.  The Registrar refused to complete the transfer without the agreement being notarized. 
When the Complainant attempted to contact the Respondent to secure his execution of  the document in front of a Notary, the Complainant discovered that the Respondent had disappeared.  The Respondent’s phone has been disconnected and mail is unanswered. 
The website, PURECOLOR.COM was on the Internet (in an incomplete form) until July 28, 1999.  On this date, the Respondent disconnected the domain and moved it to another server. 
The Complainant was forced to obtain another domain name to maintain an Internet presence for its business. 
The Complainant filed suit in Orange County Superior Court and a default judgment was issued against the Respondent. 
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 in order to demonstrate claims 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; and
(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
The Complainant has rights in the domain name PURECOLOR.COM. The Complainant does business under the name “PURE COLOR,” a State of California registration of the mark has been obtained and federal registration is pending following application. The domain name at issue is identical to the Complainant’s mark, “Pure Color.”  For this reason, the Complainant contracted with the Respondent to purchase and design the website associated with this domain name. 
Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the domain names in question.  The Respondent has not denied that assertion.
ICANN Policy provides means by which the Respondent could show legitimate interest:
(i)                  use of the domain name in connection with a bona fide offering of goods or services;
(ii)                that he is commonly known by the domain name; or
(iii)               that he is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Policy  4(c)(i)-(iii).
The Respondent has not demonstrated any such facts.
The Complainant possesses a signed contract and Domain Name Assignment Agreement, which create Complainant’s rights in the domain name.  When the Respondent signed this agreement, he relinquished all rights or legitimate interests in the domain name. 
For these reasons, the panel concludes that the Respondent has no rights or legitimate interest in the domain name in question.
Bad Faith
The Complainant asserts that the Respondent registered and used the domain name in bad faith by failing to consummate the agreed assignment and thereafter by moving the host site for the domain to a new server without permission of Complainant..  The Respondent has not denied these assertions. 
The Respondent contracted with the Complainant to provide web design services and register the corresponding domain name on the Complainant’s behalf.  The examples of behavior outlined by Policy  4(b) as indicating bad faith are non-exclusive.  See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in  4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith).  The Respondent’s conduct in this matter gives rise to a reasonable inference of bad faith registration and use. 
The panel concludes that the Respondent registered and used 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, “PURECOLOR.COM”, be transferred from the Respondent to the Complainant.