Domain name - Domain name dispute resolution policy - U.S. service mark - U.S. service mark infringement - Identical - Confusingly similar - Cybersquatting - Bad faith domain name registrations - Abusive domain name registrations - Elements for complaint relief - Application of Uniform Dispute Resolution Policy.

Complainant was owner of United States service mark, “Technicard”.  Respondent registered domain name, “TECHNICARD.COM”. On its TECHNICARD.COM web site, Respondent markets electronic software to be sold to businesses for promotional purposes which is described on the web site as "technicards" and as "business cards that are never thrown away.”  Respondent appears to have made every effort to address any concern of the Complainant and in a telephone conversation with the Complainant’s attorney even indicated that she would remove the term "business card" if that would placate Complainant.

HELD, Name Not Transferred to Complainant.

To be granted relief, the Complainant must establish all three elements under Paragraph 4 of the Uniform Domain Dispute Resolution Policy, namely, (1) the domain name and the trade or service mark are identical, (2) the Respondent has no rights or legitimate interest in the domain name, and (3) the Respondent has registered and is using the domain name in bad faith.

In this case, only the first element was established.  The mere fact that the domain name is identical to the trade or service mark is not enough to establish the second element.  The third element implies the conscious doing of a wrong because of dishonest purpose or moral obliquity.  There is no evidence of the Respondent acting in such a manner.  

Because these three elements must be made out, the Uniform Dispute Resolution Policy therefore applies only to bad faith/abusive domain names registrations (cybersquatting).  It is not the vehicle to resolve trade or service mark disputes and does not preclude the parties’ ability to litigate such disputes in a court of law.  

Policies referred to

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

Cave, Panelist: - 

The above entitled matter came on for an administrative hearing on April 17, 2000 on the Complaint of Taylor Corporation, the Complainant, represented by Ann K. Bloodhart, of Gray, Plant, Mooty, Mooty & Bennett, P.A., 33 S. 6th Street, 3400 City Center, Minneapolis, MN 55402 against TechniCard, the Respondent , represented by Nancy Lie-Winters, 18880 Marsh Lane #405, Dallas, TX 75287, who has filed a Response on behalf of TechniCard. Each party has also filed a
supplemental reply.

PROCEDURAL FINDINGS

Domain Name:TECHNICARD.COM

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: TechniCard

Date of Domain Name Registration: December 23, 1997

Date Complaint Filed: March 13, 2000

Date of Commencement of Administrative Proceeding: March 14, 2000

Due Date for Response: April 6, 2000

Response to Compliant was submitted timely

After reviewing the Complaint and determining it to be in administrative compliance, the National Arbitration Forum ("Forum") forwarded the Complaint to the Respondent on March 14, 2000 in compliance with Rule 2(a) of ICANN’s Rules for Uniform Domain Name Resolution Policy commencing the administrative procedure pursuant to Rule 4( c). In Compliance with Rule 4(d) the Forum immediately notified Network Solutions, Inc. that the administrative proceeding had been
commenced. The Complaint and the Response were docketed and forwarded to this arbitrator for decision.

FINDINGS OF FACT

1. The Complainant or its predecessor first used the name Technicard in commerce on May 10, 1971 and registered it as a service mark in the United States Patent and Trademark Office on July 25, 1972 and subsequently renewed the service mark on July 25, 1992.
2. The Complainant or its predecessor has been using the service mark TECHNICARD in connection with its business of printing business cards since 1971.
3. Respondent registered the domain name TECHNICARD.COM on December 23, 1997.
4. Respondent on its TECHNICARD.COM web site markets electronic software to be sold to businesses for promotional purposes which is described on the web site as "technicards" and as "business cards that are never thrown away". The Respondent is not in the printing business.
5. The domain name registered to the Respondent and the service mark of the Complainant are identical or confusingly similar.
6. The Respondent registered the domain name and developed the web site in connection with a bona fide offering of goods and services before any notice of this dispute, which did not occur until Complainant’s cease and desist letter to the Respondent dated January 18, 2000.
7. There is no evidence that the Respondent had acted in bad faith in acquiring the domain name or is using the domain name to attract Complainant’s customers by intentionally creating a likelihood of confusion with Complainant’s service mark. Respondent appears to have made every effort to address any concern of the Complainant and in a telephone conversation with the Complainant’s attorney even indicated that she would remove the term "business card" if that would placate Complainant.

CONCLUSIONS

The undersigned certifies that he has acted independently and has no known conflict of interest as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following conclusions:

1. Under Paragraph 4 of the Uniform Domain Dispute Resolution Policy the Complainant must prove that all three elements set forth in the Paragraph are present before relief can be granted.  Only the first element that the domain name and the trade or service mark are identical has been established.
2. The second element that the Respondent has no rights or legitimate interest in the domain name can not be established in this venue by the mere fact that it is identical to a trade or service mark.  The Respondent registered the domain name in late 1997 and used it in connection with a bona fide business and was not aware that the use of the name was being disputed until she received the letter from Complainant’s attorney dated January 18, 2000.
3. Lastly the third element required is that the Respondent has registered and is using the domain name in bad faith.  Bad faith implies the conscious doing of a wrong because of dishonest purpose or moral obliquity.
4. In simplest form, the Uniform Dispute Resolution Policy applies only to bad faith/abusive domain names registrations (cybersquatting) and provides an efficient alternative mechanism to resolve such disputes. It is not the vehicle to resolve trade or service mark disputes and does not preclude the parties’ ability to litigate such disputes in a court of law. The decision in this proceeding is based solely on the Rules and Policy previously set forth to which the parties contractually agreed to submit themselves and does not purport to decide the issue of service mark infringement. 

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4 (I) of ICANN’s Rules for Uniform Domain Dispute Resolution Policy, it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "TECHNICARD.COM" REGISTERED BY RESPONDENT NOT BE TRANSFERRED TO COMPLAINANT, TAYLOR CORPORATION.

Signed and dated this 17th day of April, 2000
by Judge Gilbert T. Cave (Retired),
arbitrator.