[Indexed as: Pure Color v. Sabin]
[INDEXED AS: PURECOLOUR.COM]
National Arbitration Forum
Domain Name Dispute Administrative Decision
File No.: FA0006000095009
Commenced: 19 June 2000
Judgement: 15 July 2000
Arbitrator: James A. Carmody
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 Complainants registered trademark. Domain
name was chosen by Complainant as part of website design contract with
Respondent for Complainants 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 Complainants 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 ICANNs 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 Respondents 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 Complainants 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 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 (Complainants 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 Complainants 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 Respondents
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 Complainants
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 Complainants 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 Complainants
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 Respondents 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 Respondents
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.
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