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Weekley Homes, L.P. v. Wilsher & Company [2000] GENDND 1007 (2 September 2000)

National Arbitration Forum

THE NATIONAL ARBITRATION FORUM

P.0. BOX 50191

MINNEAPOLIS, MINNESOTA 55405 USA

Weekley Homes, L.P. )

Houston, TX, USA )

Complainant ) DOMAIN NAME DISPUTE

) ADMINISTRATIVE PANEL DECISION

)

)

Vs )

) Forum File Number: FA0008000095331

Wilsher & Company, )

Katy, TX, USA )

Respondent )

)

)

REGISTRAR AND DISPUTED DOMAIN NAME:

The domain name at issue is "DAVIDWEEKLEY.COM", registered with Network Solutions Inc. ("NSI").

PANELIST:

The panelist, Louis E. Condon, certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

PROCEDURAL HISTORY:

Complainant submitted a complaint to the National Arbitration Forum ("The Forum") electronically on 08/02/2000; The Forum received a hard copy of the Complaint on 08/02/2000.

On 08/02/2000, NSI confirmed by e-mail to The Forum that the domain name "DAVIDWEEKLEY.COM" is 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 5.0 and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANNíS UDRP.

On 08/02/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/22/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts by e-mail. It was also e-mailed to HYPERLINK mailto:postmaster@davidweekley.com; and postmaster@davidweekley.com. Having received no Response from 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 August 29, 2000, pursuant to Complainantís request to have the dispute decided by a Single Member panel, The Forum appointed Louis E. Condon as Panelist.

Having reviewed the communications records, 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 Forumís Supplemental Rules and any rules and principals of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT:

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES CONTENTION:

1. Complainant

The Complainant asserts that the domain name in question is nearly identical or confusingly similar to the Complainantís trademarks, that the Respondent has no rights or legitimate interest in the domain name and the Respondent registered and used the domain name in bad faith.

2. Respondent

The Respondent has not filed any Response to the Complaint.

The Respondentís failure to submit a response does not relieve the Complainant of its burden of proof to prove the elements in Policy Paragraph 4.a.(i)-(iii). However, the Respondentís failure to deny any of the Complainantís assertions permits the Panel to take the Complainantís assertions as true and to draw appropriate inferences. ICANN Rule 14(b). Based on Respondentís failure to respond the Panel concludes that the Respondent does not deny the facts stated in the Complainant nor the conclusions drawn there from.

FINDINGS:

The Complainant is a privately held company principally owned by David Weekley. The company was founded in 1976 and today is a nationally known home builder throughout the United States. Complainant has federal and state trademark rights in the marks DAVID WEEKLEY, DAVID WEEKLEY HOMES and WEEKLEY HOMES.

The Respondent is apparently the alter ego of Ronald E. Wilsher, who worked as an employee of the Complainant from August 30, 1999 until approximately February 3, 2000. In December 1999, while Mr. Wilsher was employed by the Complainant, he registered the domain name in question. At the time that Mr. Wilsher was terminated in February 2000, Complainant did not know that Wilsher had registered the domain name DAVIDWEEKLEY.COM. When Mr. Wilsher was contacted by telephone about transferring the domain name, he advised his former manager, Mr. Anderson, that he wanted "at least six figures" for the domain name.

In response to this demand, Complainant sent a "cease and desist" letter to the Respondent. In subsequent telephone conversations Mr. Wilsher explained that he registered the domain name as a "business investment" and that he would sell it to the Complainant or anyone else who was willing to pay an acceptable price. Mr. Wilsher also acknowledged that he had registered and sold domain names in the past to make a profit. Mr. Wilsher admitted that he had no plans to use the name for a business on line.

DISCUSSION:

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be canceled 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;
2. the Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and used in bad faith.

Identical and/or Confusingly Similar:

The Respondentís domain name is identical to the Complainantís registered mark. The elimination of the spaces between the words and the addition of the suffix ë.com" does not affect the domain name for determining if it is confusingly similar.

Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not provided evidence of any circumstances giving rise to a right to or legitimate interest in the domain name. Complainant has rights in the mark DAVID WEEKLEY. Not only is this name used in connection with the name of his business, it is the Complainantís name. An individual has common law rights in his or her name. In addition, the Complainantís federal and state trademarks establish rights in the mark DAVID WEEKLEY.

The Respondent is not named DAVID WEEKLEY and is not commonly known by the name ëDAVIDWEEKLEY.COMí. Policy Paragraph 4.c.(ii).

The Respondent has not used the domain name in connection with a bona fide offering of goods and services. Policy Paragraph 4.c.(i). Instead, the Respondent is admittedly using the domain name as a bargaining tool to make a profit. Neither has the Respondent used the domain name in connection with a fair or legitimate noncommercial use. Policy Paragraph 4.c.(iii).

For these reasons, I conclude that the Respondent has no rights or legitimate interest in the domain name in question.

Registration and Use in Bad Faith

The Complainant contends that the Respondent has registered and used the domain name in bad faith. The Respondent has not submitted any evidence disproving this allegation.

Since the he was employed by the Complainant at the time Respondent registered the domain name, he obviously knew of the Complainantís business name and marks.

The Respondent registered the domain name as a means of extracting money from the Complainant by selling it to the Complainant or one of the Complainantís competitors. The Respondent admitted that he has no plan to use the domain name but rather that he registered it as a "business investment" and placed a six figure price tag on it. Registering a domain name in order to sell it for valuable consideration in excess of costs is evidence of bad faith. Policy Paragraph 4.b.(i).

Based on these findings, I conclude and determine that the Respondent registered and used the domain name in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted . Accordingly, for all the fore-going reasons, IT IS ORDERED that the domain name "DAVIDWEEKLEY.COM " be transferred from the Respondent to the Complainant.

Louis E. Condon

September 2 , 2000

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