Domain name - Domain name dispute resolution policy - U.S. Trademark – U.S. Service Mark - Confusingly similar - Bad faith registration - Bad faith use – Legitimate Interests – Administrative Discretion – Late submission.

The Complainant is the owner of a service or trade mark "You Asked For It".   Respondent has subsequently registered as a domain name "youaskedforit.com".

Respondent alleges that the domain name was registered as a name for a legal 'question and answer' service in connection with the web site, www.lawstreet.com which is in the process of development. 

Held, Name Not Transferred to Complainant

Although the response was submitted beyond the deadline, the Panelist used administrative discretion to permit the submission.

The Complainant to secure relief must prove the following: 1. The domain name 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 interest in respect to the domain name; 3.The Complainant has registered and used the domain name in bad faith.

The first element is clearly present since the domain name is identical to the trade or service mark owned by the complainant. 

The second element is arguably present since the Respondent makes merely a naked allegation that the web site is being developed without showing a use, or the existence of demonstrable preparations to use the site. 

The Complainant , however, has failed to produce any proof as to the third element.  There is no claim that the Respondent is unfairly dealing in domain names or registering domain names to prevent the owners of trade or service marks from using them as a domain names. There is no evidence that the Respondent is confusing the name of the domain site to the detriment of the Complainant or that the Complainant’s service mark "You Asked For It".  This third element of bad faith was not established. 

Policies referred to

Uniform Domain Name Dispute Resolution Policy

Panel Decision referred to
--

Cave, Panelist: -

The above entitled matter came on for an administrative hearing on April 1, 2000
on the Complaint of Sandy Frank Entertainment, Inc, the Complainant, represented
by Ira S. Epstein, Esq., 9665 Wilshire Boulevard, Suite 900, Beverly Hills, CA
90212 against Law Street, Inc. aka Wall Street, Inc, the Respondent, represented
by Ralph Zita, 379 Thornall Street, Fourth Floor, Edison, N.J. 08837 having filed a
response to the Complaint.

PROCEDURAL FINDINGS

Domain Name: YOUR ASKED FOR IT.COM

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: LAW STREET, INC. aka WALL STREET, INC.

Date Complaint Filed: February 7, 2000

Date of Commencement of Administrative Proceeding: February 25, 2000

Due date for a Response: March 20, 2000

Response to Complaint was submitted on March 23, 2000. Panelist will allow
response although filed beyond due date in the exercise of administrative discretion

FINDINGS OF FACT

  1.The correct name of the Respondent is Law Street, Inc. (not Wall Street,
    Inc as set forth in Complaint) 
  2.The Complainant is the owner of a service or trade mark "You Asked For
    It" registered May 11, 1982 in the United States Patent and Trademark
    Office. 
  3.Respondent has subsequently registered as a domain name "you asked for
    it.com" which is identical to the service or trade mark of the Complainant. 
  4.Respondent alleges that the domain name was registered as a name for a
    legal question and answer service in connection with the website
    www.lawstreet.com which is in the process of development No operative
    facts have been set forth to establish this assertion. 
  5.Complainant’s asserts that that the domain name was registered in bad faith
    by the Respondent because the name "has been in television distribution
    for over 25 years and it is well known that Complainant is the owner of
    the registered trade name in question. In fact, new programs based on
    ‘You Asked For It’ were originally aired by NBC". This is insufficient to
    establish bad faith. 

CONCLUSIONS

The Complainant to secure relief must prove that the three elements set forth in
Paragraph 4a of the Uniform Domain Name Resolution Policy are present. These
are: 1. The domain name 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 interest in respect to the domain name. 3.The Complainant has registered
and used the domain name in bad faith. .

The first element is clearly present since the domain name is identical to the trade or
service mark owned by the complainant. The second element is arguably present
since the Respondent makes merely a naked allegation that the website is being
developed without showing a use, or the existence of demonstrable preparations to
use the site. 

The Complainant , however, has failed to produce any proof as to the third element
that the Respondent registered or is using the domain name in bad faith. There is no
claim that the Respondent is unfairly dealing in domain names or registering domain
names to prevent the owners of trade or service marks from using them as a
domain names. There is no evidence that the Respondent is confusing the name of
the domain site to the detriment of the Complainant or that the Complainant’s
service mark "You Asked For It" for a television series is diminished or tarnished
by the proposed use of the phrase for a legal question and answer service. This
third element of bad faith must be established before relief can be granted.

DECISION

Based upon the above findings and conclusions it is decided as follows:

THE UNDERSIGNED DIRECTS THAT RELIEF BE DENIED TO THE
COMPLAINANT.
      
Dated: April 1, 2000, Judge Gilbert T. Cave (Ret.), Arbitrator
 

Gilbert T. Cave