Generic Top Level Domain Name (gTLD) Decisions

The Complainant is ITH GmbH, GERMANY ("Complainant"). The Respondent is First American, Fullerton, CA, USA ("Respondent").

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

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on August 2, 2000; The Forum received a hard copy of the Complaint on August 2, 2000.

On August 3, 2000, NSI confirmed by e-mail to The Forum that the domain name "ITH.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 ICANN’s UDRP.

On August 9, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 29, 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 Respondent’s registration as technical, administrative and billing contacts by e-mail. It was also e-mailed to postmaster@ith.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 September 6, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody 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 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.

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

A. Complainant

The Complainant contends:

B. Respondent

The Respondent submitted no response in this matter. Accordingly, all reasonable inferences of fact in the allegations of the Complaint will be deemed to be true.

The Complainant’s pending trademark registration, ITH, is based on the initials of this company, Industry-Technology-Hohmann. It is responsible for the design, manufacturing, and sales of hydraulic tooling.

On March 23, 1998, the Complainant entered into a contract with Anthony Mesaros of First American to transfer the domain name to the Complainant for $7,500. The transfer of the domain name was to be initiated on the first business day after the funds had been transferred to the Respondent’s bank account. On March 25, 1998 the Complainant transferred the money to the Respondent in accordance with the contract. On the day of the filing of this Complaint, the Respondent still has not fulfilled its part of the contract. Mesaros and the Respondent are in breach of the contract signed on March 23, 1998.

After being notified of the Complaint, the Respondent failed to submit a response. As a result, the Panel concludes that all reasonable inferences claimed in the Complaint are deemed true. ICANN Uniform Rule 14(b).

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 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;

(2) the Respondent has no rights or 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 rights in the common law mark and pending trademark application for the mark ITH. The Complainant has been using this mark since its inception 23 years ago. The Respondent’s domain name is identical to the Complainant’s mark. See Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to the Complainant’s trademark TOSHIBA).

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name in question. The Respondent has not denied this claim.

The Respondent is not commonly known by the Complainant’s famous mark, ITH. Policy ¶ 4.c.(ii). The Respondent has not used the domain name in connection with a bona fide offering of goods and services nor for a legitimate, noncommercial use. Policy ¶ 4.c.(i), (iii).

The Panel concludes that the Respondent has no rights or legitimate interests in the domain name in question.

The Complainant asserts that the Respondent has registered the domain name in bad faith. The Respondent has not denied this claim.

The Complainant must show registration and use in bad faith in order to satisfy the requirements of Policy ¶ 4.a. See World Wrestling Fed. Entertainment, Inc. v. Bosman, D0099-0001 (WIPO Jan. 14, 2000).

The Respondent and Complainant completed a contract, transferring the domain name in question in return for $7,500. The Respondent assured the Complainant that the domain name would be transferred; however, 2 years later, the Respondent has still failed to transfer the domain name.

Because the Respondent engaged in a contract to sell the domain name, the Panel finds that the Respondent registered the domain name for the purpose of transferring it to the Complainant for a sum in excess of the documented out of pocket costs. Policy ¶ 4.b.(i). This is evidence of registration and use in bad faith. See World Wrestling Fed. Entertainment, Inc. v. Bosman, D0099-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs); General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent registered and used the domain name in bad faith by using the domain name to direct users to a general site offering the domain name for sale); Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding Respondent’s offer to sell the domain name for $100,000 constitutes bad faith). In this case, the Respondent did more than simply offer the domain name for sale; the Respondent negotiated a sale price and completed a contract with the Complainant to sell the domain name. The price that was agreed upon, $7,500, is in excess of out of pocket costs associated with the domain name. The Respondent’s failure to transfer the domain name after receiving the money is further evidence of bad faith registration and use of a domain name.

The Panel concludes that the domain name was registered and used in bad faith.

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 of the foregoing reasons, it is ordered that the domain name, "ITH.COM", be transferred from the Respondent to the Complainant.