Domain name – Domain name dispute resolution policy – Identical – Confusingly similar – No rights or legitimate interests – Bad faith registration – Bad faith use – No bona fide offering of goods or services – History of acquiring names for sale to Trademark holders – Offer to sell for amount in excess.

Complainant  owns the site SAPPI.COM, has filed trademark applications for the trademarks SAPPI and SAPPI LTD and has registered its mark in many other countries.  Complainant has used the mark in commerce since 1962 in connection with goods and services provided by Complainant. 

Respondent, a business operator, registered the domain names in issue, SAPPI.NET and SAPPI.ORG. Complainant rejected Respondent’s offer to sell the domain name and Complainant’s counteroffer, for an amount equalling the out of pocket expenses in acquiring the domain names, was rejected by Respondent. 

Held, Names transferred to Complainant

Respondent’s domain name is identical to Complainant’s registered marks except for the addition of the domain name level designations “net” and “org”. Complainant’s potential clients will most probably enter Complainant’s marks when searching for their service on the internet. 

Respondent has not used the site in connection with a bona fide offering of goods and services; is not commonly known by the domain names; and, is not making a fair or legitimate use of the domain names. Therefore Respondent has no rights or legitimate interests in the domain names.

Evidence of bad faith includes Respondent’s admittance that he acquired the names in order to resell them to Complainant.  As well, the sum requested by Respondent was in excess of the out of pocket expenses in buying the site and Respondent has established a pattern of conduct of purchasing well known trademark domain names in order to prevent the mark owner from utilizing the domain name. 

Policies referred to
Uniform Dispute Resolution Policy

Panel Decision referred to
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Louis E. Condon, Panelist: - 

The above styled matter came on for an administrative hearing on June 26, 2000 
before the undersigned arbitrator in accordance with ICANN’S Uniform Domain Name Dispute Resolution Policy and Rules. The arbitrator certifies that he has no conflict of interest in this matter. After due consideration of the written record as submitted, the following decision was made:

Disputed Domain Name(s): “SAPPI.NET” and “SAPPI.ORG” 

Domain Registrant: MARIUS CROESER

Domain Registrar: NETWORK SOLUTIONS, INC.

PROCEDURAL HISTORY

Complainant, Sappi, Ltd., submitted a Complaint to the National Arbitration Forum (The Forum) electronically on May 25, 2000; The Forum received a hard copy of the Complaint on May 24, 2000.

On May 30, 2000, NSI confirmed by e-mail to The Forum that the domain names “SAPPI.NET” and “SAPPI.ORG” are 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 May 25, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 14, 2000, by which Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail. 

On June 14, 2000, having received no Response from the 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 June 21, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Louis E. Condon 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 names be transferred from the Respondent to the Complaint.

PARTIES CONTENTIONS

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 name in bad faith.

RESPONDENT

The Respondent submitted no response in this matter and is, therefore , in default.

FINDINGS

The Complainant has filed trademark applications for the trademarks SAPPI (filed on May 18, 1999; No. 75-708778) and SAPPI LTD (filed on May 18, 1999; No 75-708777). In addition, the Complainant has registered its mark in many other countries (Austria, Benelux, Denmark, France, Germany, Italy, Spain, Switzerland, United Kingdom). The Complainant has used the mark in commerce since 1962. The mark is used for goods and services provided by the Complainant: paper; cardboard and goods made from these materials, and chemicals used in the manufacture of pulp and paper. The Complainant already owns the site SAPPI.COM. 

The Respondent registered the domain names at issue to resell them to the Complainant. The Respondent operates a business known as Protea Imports. The Respondent offered to sell the domain names to the Complainant for $1,500.00 each. The Complainant rejected the offer and countered with an offer to reimburse the Respondent for the amount of the out of pocket expenses in acquiring the domain names. The Respondent rejected the counteroffer. The Respondent also owns many other domain names which correspond to well known trademarks.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Names Dispute Policy (Policy) directs 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 legitimate interests in respect of the domain name;
and

(3) the domain name has been registered and is being used in bad faith.
The Complainant has offered numerous exhibits in support of its claims, whereas the Respondent has submitted no response in the matter. In accordance with general law, by defaulting the Respondent admits the allegations of the Complaint. Applying ICANN Policy to the issue in this case furthers the inferences arising out of the default.

Identical and/or Confusingly Similar –

The Respondent’s domain name is identical to the Complainant’s registered marks except for the addition of the domain name level designations “net” and “org”. When potential clients seek the Complainant’s services on the Internet, the Complainant’s marks are most probably the first domain name entered. This association is vital in maintaining a business in today’s e-commerce society.

Rights or Legitimate Interests –

The Respondent has not used the site in connection with a bona fide offering of goods and services; is not commonly known by the domain names; and, is not making a fair or legitimate use of the domain names. Policy Paragraph 4(c). Therefore the Respondent has no rights or legitimate interests in the domain names.
The Respondent has made no use of the sites at issue. Instead, the domains link users to a page developed by the registrar indicating that the website is under construction. The Respondent’s business (Protea Imports) is in no way connected with the domain names.

Bad Faith –

The Respondent admits that he acquired the names in order to resell them to the Complainant. The sum requested by the Respondent was in excess of the out of pocket expenses in buying the site. This is evidence of bad faith as defined in Paragraph 4(b)(i) of the ICANN Policy. 
In addition, The Respondent has established a pattern of conduct of purchasing well known trademark domain names in order to prevent the mark owner from utilizing the domain name. This is also evidence of bad faith. Policy Paragraph 4(b)(ii). 

DECISION

The Complainant having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the arbitrator that the relief requested be granted. Accordingly, for all the foregoing reasons, it is ordered that the domain names, “SAPPI.NET” and “SAPPI.ORG” are transferred from the Respondent to the Complainant.
Dated: June 26, 2000 Louis E. Condon, Arbitrator