Domain Name - Domain name dispute resolution policy - U.S. trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Legitimate interest - Bona fide offering of services. 

Complainant owns the trademark, "Shack," which is licensed to RadioShack, a division of Complainant corporation.  Respondent formed a website company named "Design Shack" in 1996 and purchased the domain name, shack.com, from a third party.  The name of the company was chosen in part because of its association to its creator, whose nickname is Shack.  Since 1997 the domain name has remained dormant but Respondent has future plans to use it.    The future plans do not involve competing with Complainant.  Respondent has refused numerous offers to purchase the domain name. 

Held, Name Not Transferred to Complainant.

Respondent conceded that the names are confusingly similar.

Respondent has a right or a legitimate interest in the domain name as evidenced by the fact that he has been commonly known by the name "Shack" for his entire life.  As well, before this dispute began, Respondent used the domain name in connection with a bona fide offering of services. 

There is no evidence that Respondent registered or used the domain name in bad faith.  Respondent repeatedly rejected offers to sell the name and although he offered it to Complainant for a price in excess of what was paid for it, it was after Complainant approached Respondent to purchase it, and there is no evidence that this was Respondent's purpose in acquiring the domain name. There is also no evidence that Respondent intended or tried to get people to associate "shack.com" with RadioShack or to mistake it for a website sponsored, endorsed or affiliated in any way with RadioShack
 

Policies referred to
ICANN Uniform Domain Name Dispute Policy

Registration Agreements referred to
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Panel Decisions referred to
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Cases referred to
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 Panelist: Daniel B.Banks Jr., James Carmody, Louis Condon
 

This is a domain name dispute and will be decided on the record provided by counsel for the parties.  A three arbitrator panel was appointed, namely Daniel B. Banks, Jr., as the Chair, along with Honorable James Carmody and Honorable Louis Condon as panelists.
The panel certifies that they have acted independently and have no known conflict of interests to serve as the arbitrators in this proceeding.  Having been duly selected, and being impartial, the panel makes the following findings and conclusions.

PROCEDURAL FINDINGS
Domain Name at issue: shack.com
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Design Shack
Date of Domain Registration: November 14, 1996.
Date Complaint Filed: May 11, 2000.
Date of Commencement of Administrative Proceeding: May 19, 2000.
Due Date for a Response: June 8, 2000.
Remedy Requested: Transfer of Domain Name to Complainant.

FACTUAL FINDINGS
            The Complainant Technology Properties, Inc. is a wholly owned subsidiary of Tandy Corporation and owns the trademark "Shack".  This trademark is licensed to RadioShack, a division of Tandy Corporation.  RadioShack and its predecessors have used the mark "Shack" since 1977. 
            The Respondent, Design Shack, David Shackleton, Administrative Contact, is an entrepreneur who is involved in the design of web-based companies and business models.  He formed a web-based company named DesignShack in 1996.  DesignShack offered visual guides to product information on the web.  It showed thumbnail pictures of products such as mountain bikes and automobiles and provided links to manufacturer information.  The name of the company was chosen in part because of its association to its creator, Shackleton, whose nickname is Shack.  Although he had registered the domain name designshack.com, he decided that this was not memorable enough and sought to shorten the name to shack.com.  He discovered that this domain name was registered to an individual named Adam Solesby and in 1996, Shackleton purchased the name from Solesby for the sum of $1,000.
            Since purchasing the domain name shack.com, Shackleton has used that site as a method of providing product information on the web.  In 1997, that website won numerous awards, including Yahoo Site of The Day.  In 1997, Shackleton started another company and closed the shack.com because he did not have the time or resources to maintain both websites.  The domain name shack.com has remained dormant since 1997.
            Shackleton states that he intends to launch a series of web-based companies in the coming years and has plans for using shack.com.  None of these plans involve competing with the Complainant.  Shackleton states the he has never sold or intended to sell products that would compete with RadioShack under the domain name shack.com.  He says he has never intended or tried to get people to associate shack.com with RadioShack or to mistake shack.com for a website sponsored, endorsed or affiliated in any way with RadioShack.  There is no evidence before the panel to dispute these assertions.
            It appears to be undisputed that in 1998, Shackleton was contacted by an attorney for RadioShack seeking to obtain a transfer of the domain name shack.com to RadioShack.  Shackleton informed the attorney that he was not interested in transferring the name and was then offered $100 by RadioShack.  That offer was rejected.  RadioShack then filed a complaint and the name was put on hold for year.  During that period of time, RadioShack offered $500 for the name.  After further consideration and discussion with his attorney, Shackleton offered to transfer the name for $20,000.  That offer was rejected.
            It appears from the evidence that there are 258 trademarks using the word "shack" registered with the United States Patent and Trademark Office.  And, over the past few years, several people have expressed interest in acquiring the name from Shackleton.  Shackleton has told all of them that he was not interested in selling the name.
            RadioShack has registered twenty-six domain names including RADIOSHACK.COM.  RadioShack's web site is located at http://www.radioshack.com.

DISCUSSION
            On October 24, 1999, the Internet Corporation for Assigned Names and Numbers ("ICANN") adopted the Uniform Domain Name Dispute Resolution Policy which sets forth the elements that a complainant must prove to show that a respondent has registered and used a domain name in bad faith.  Specifically, the complainant must prove each of the following:
i)                   Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
ii)                  Respondent has no rights or legitimate interests in respect of the domain name;
iii)                 Respondent has registered and is using the domain name in bad faith.
It is the opinion of this panel that the Complainant has not met the burden of proof with respect to each of the above elements.  Although the Respondent concedes that the domain name is identical to Complainant's registered trademark, the evidence in this case does not prove that the Respondent has no right or legitimate interest in the domain name nor that the Respondent used the name in bad faith. 
            The panel finds that the Respondent has a right or a legitimate interest in the domain name shack.com as evidenced by the fact that he has been commonly known by the name "Shack" for his entire life.  And, before any notice of this dispute, he used the domain name in connection with a bona fide offering of services through his company DesignShack.
            Also, the panel finds that the Respondent has not registered or used the name in bad faith.  Section 4(b) of the ICANN Uniform Domain Name Dispute Policy provides that evidence of bad faith registration and use can consist of the following circumstances:
i)                    circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
ii)                  the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
iii)                 the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv)                by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's web site or location of a product of service on the respondents web site or location.
There is no evidence before this panel that satisfies any of the above circumstances.  Although the respondent did offer to sell the domain name for a price in excess of what he paid, there is no evidence to support a finding that this was his purpose in registering or acquiring the name.  To the contrary, the respondent has repeatedly rejected offers to sell the name.  And, the complainant never offered to pay the respondent's documented out-of-pocket expenses to acquire the name. 

CONCLUSION
            It is the unanimous conclusion of the panel that the Complainant has not met it's burden of proof and that the domain name shack.com should not be transferred to the Complainant.

  Daniel B. Banks, Jr., Chairman of Panel
  Dated:  June 30, 3000