[Indexed as: Safway vs. Caféé Au Lait]
[Indexed as: SAFWAY.NET]
National Arbitration Forum
Administrative Panel Decision
Case No.: FA94631
Commenced: 21 April 2000
Judgment: 27 May 2000
Presiding Panelist: James Alan Crary
Domain name Domain name dispute resolution policy U.S. Trade mark - U.S. Domain name Identical Confusingly Similar Rights or legitimate interests Bad faith registration Bad faith use Abusive registration Prior dispute proceedings Re-registration.
Complainant is registrant of United States domain name SAFWAY.COM. Respondent is registrant of domain name SAFWAY.NET in connection with a pornographic website.
Held: Name Transferred to Complainant.
Respondent did not file a response to the complaint. In cases where there is no response filed to the complaint, the Panel may proceed to a decision based on the complaint and draw any inferences it considers appropriate.
The domain name registered by Respondent is identical and confusingly similar to the mark in which Complainant has rights. Since Respondent does not offer goods or services under the Safway name, Respondent has no rights or legitimate interests in the domain name.
The domain name was registered and used in bad faith. Respondent was a party to a prior domain name dispute resolution proceeding with the Complainant. As a result of that proceeding, the SAFWAY.NET domain name was placed on hold. In connection with the implementation of ICANNs Uniform Domain Name Dispute Resolution Policy, Network Solutions, Inc. removed the hold status from SAFWAY.NET, at which time Respondent reregistered the domain name. Respondents re-registration of the domain name was in bad faith. By using the domain name SAFWAY.NET, Respondent attempted to attract for commercial gain, internet users by creating a likelihood of confusion with the Complainants mark as the source, sponsorship, affiliation or endorsement of Respondents website. Respondent has engaged in abusive registration of the domain name SAFWAY.NET.
Policies referred to
Uniform Name Dispute Resolution Policy, adopted April 21, 2000
Service Agreements referred to
Network Solutions, Inc. Service Agreement: effective March 13, 2000
Cases referred to
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Panel Decisions referred to
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This is a domain name dispute. Administrative proceedings were conducted
pursuant to the ICANN Uniform Name Dispute Resolution Policy (Policy) and
Rules for Uniform Domain Name Dispute Resolution Policy (Rules). James
A. Crary was selected to serve as the sole administrative panelist.
PROCEDURAL FINDINGS
Domain Name: safway.net
Domain Name Registrar: Network Solutions, Inc.
Date of Domain Name Registration: March 13, 2000
Date Administrative Proceeding Commenced: April 21, 2000
Date Response Due: May 11, 2000. (No Response Filed.)
Relief Requested by Complainant: Transfer of safeway.net to the
Complainant.
THE COMPLAINT
Complainant maintained that registration of safway.net domain name,
was an abusive registration under the Policy. The safway.net domain name
is identical to the SAFWAY trademark. Respondent chose to use the same
unique spelling as was adopted in the trademark omitting the e normally
found in the word safe.
Safway is a company, which engages in the manufacture and installation
of scaffolding, rolling towers, bleachers, outrigger systems and mechanical
lifts. The Safway mark has been in use in commerce since the mid 1930s.
Complainant is one of the largest companies in its field. In addition to
its trademark, SAFWAY, Complainant owns numerous patents for products it
offers under the Safway mark. Annually the Complainant spends three to
five million dollars on advertising and other media in connection with
its business. The SAFWAY mark has become a well known nationwide mark.
The Complainant asserts that the Respondent is using the safway.net
domain name in connection with a pornographic website, thereby tarnishing
its trademark and causing confusion among Safway customers seeking to
find Safway products and services.
The Complainant owns and uses the domain name safway.com in connection
with its business on the internet. Complainant believed it was likely that
customers would query the safway.net domain name in an attempt to search
for the Safway website and thus be misdirected to Respondents pornography
website.
The Complainant maintained that Respondent did not offer goods or services
under the Safway name and as such could not claim a legitimate trademark
right in the domain name. Respondents website contains other copyrighted
notices but nowhere contains any indication or use of Safway as a mark
or trademark.
As a result, Respondent cannot claim a legitimate right to the domain
name. Even if Respondent began using safway.net as a mark or trade name,
whatever rights Respondent might have would be subservient to the legitimate
trademark rights of Complainant under Federal Law.
The Complainant maintained the registration was in bad faith. The Respondent
was a party to a prior domain name dispute resolution proceeding with the
Complainant. Complainant invoked the then existing domain dame dispute
resolution procedures with regard to the use of safway.net. As a result
of that proceeding, the safway.net domain name was placed on hold.
In connection with the implementation of ICANNs Uniform Domain Name
Dispute Resolution Policy, Network Solutions, Inc. removed the hold status
from safway.net domain name at which time Respondent reregistered the domain
name on March 13, 2000.
Complainant attempted to contact Respondent after the second registration
of safway.net. Through its attorneys correspondence was sent by Federal
Express to the addresses listed by Respondent. Federal Express was unable
to deliver the correspondence to the addresses listed by the Respondent.
Complainant assumed that Respondent had either refused delivery of Safways
correspondent or had provided incorrect address information to Network
Solutions, Inc. in violation of Network Solutions, Inc. service agreement.
It was also maintained Respondent violated the service agreement because
of the prior proceedings which put safway.net on hold. Respondent was not
in a position to represent or warrant that the disputed domain name would
not infringe on the legal intellectual property rights of Complainant.
The Complainant asked that the safway.net domain name be transferred
to Complainant.
DISCUSSION
The Panel was satisfied that the Forum took all steps necessary to notify
Respondent of the filing of the complaint and initiation of these proceedings,
and that the failure of the Respondent to furnish a reply is not due to
any omission by the Forum. The Respondent was served by mail, E-mail,
and fax on the party designated as administrative contact for the Respondent.
It was concluded Respondent had notice of the complaint and the commencement
of proceedings.
According to the Policy section 4(a), to be entitled to cancellation
or transfer of a domain name, the Complainant must prove the disputed domain
name:
(1) 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.
In those cases where there is no response filed to the complaint, the
Rules at 5(e) and 14(a) provide that the Panel may proceed to decision
based on the complaint, except in cases where there are exceptional circumstances.
Rule 14(b), that if a party, in the absence of exceptional circumstances,
does not comply with any provision of, or requirement under, these rules
or any request from the Panel, the Panel shall draw such inferences therefrom
as it considers appropriate. There were no exceptional circumstances which
are known to exist in this case and therefore the Panel proceeded to decision
based upon the complaint.
FINDINGS OF FACT
1. That Complainant is the owner of the SAFWAY trademark, which it
has used nationally and continuously since the mid 1930s. Complainant
owns numerous patents for the products it offers under the SAFWAY mark.
2. That the Complainant has invested substantial sums of money in connection
with the development of its mark and business enterprises.
3. The Respondent registered the domain name safway.net and has no
rights or legitimate interests in respect to said domain name.
4. The Respondent is not engaged in the scaffolding shoring or concrete
form business nor does it manufacture scaffolding, rolling towers bleachers,
or outrigger systems.
5. The Respondent uses the safeway.net domain name in connection with
a pornographic website.
6. A prior domain name dispute between the parties was resolved in
the Complainants favor and the disputed domain name was placed on hold,
by Network Solutions, Inc.
7. The Respondent reregistered the domain name in March 13, 2000.
CONCLUSIONS
The undersigned certified that he has acted independently and has no
known conflict of interest to serve as the administrative panelist in this
proceeding.
Having reviewed the complaint and supporting documentation, and after
noting that there was no response to the complaint, the undersigned makes
the following conclusions:
1. The domain name safway.net registered by Respondent is identical
and confusingly similar to the mark in which Complainant has rights and
to which the Respondent has no right or legitimate interests.
2. By using the domain name safway.net the Respondent attempted to
attract for commercial gain, internet users by creating a likelihood of
confusion with the Complainants mark as the source, sponsorship, affiliation
or endorsement of the website.
DECISION/ORDER
Based on the above findings and conclusions and pursuant to Rule 4(i),
it is found that the Respondent has engaged in abusive registration of
domain name safway.net within the meaning of paragraph 4(a) of the Policy,
therefore the Panel orders that the domain name safway.net be transferred
to the Complainant.
Dated: May 27, 2000
James Alan Crary, Arbitrator
Domain Name Transferred