Generic Top Level Domain Name (gTLD) Decisions

Since as early as January 10, 1985, Complainant was the owner of a United States registered trademark, TELEMARSHAL, for "computer programs recorded on a magnetic medium." The mark is now incontestable.

On May 26, 2000, Respondent registered the domain names <telemarshal.com>.

Currently, the domain name resolves to an active web site advertising e-commerce and telecommunications services. The site does not mention telemarshal.com and Respondent does not otherwise use the mark.

On June 30, 2000, Complainant sent Respondent an e-mail asking whether Respondent would be interested in purchasing the domain name, <telemar.com>. This domain name is not in dispute. On July 5, 2000, Complainant sent Respondent another e-mail asking Respondent to explain why it had registered <telemarshal.com>. On July 7, Respondent asked Complainant the price of <telemar.com>. On July 7 and July 13, Complainant again inquired about Respondent’s reasons for registering <telemarshal.com>. On July 14, Respondent replied as follows: "The domain name telemarshal.com was registered because we are starting with a new service called SHAL, and telemarshal was free and registrable. The service is now under constructions [sic], but I hope to post it as soon as possible, but not before the end of the summer – begin [sic] of autumn. SHAL will be an eCommerce service for Italian companies that want to sell their products in global market, USA included."

In registering the domain names with the Registrar, Respondent agreed to resolve any dispute regarding its domain names pursuant to the Rules and the Policy

To obtain the requested relief, paragraph 4(a) of the Policy requires Complainant to prove each of the following:

As discussed below, under the standards applicable to this proceeding, the Panel concludes that Complainant is entitled to relief on the record presented.

Complainant has provided evidence that Respondent has no rights or legitimate interest in the domain name: Respondent has never done business or traded under the domain name; Respondent does not have any trademark or intellectual property rights in the domain name; Respondent has never been known by the domain name in question.

Under Paragraph 4(c) of the Policy, Respondent may rebut Complainant’s allegations by demonstrating its rights or legitimate interest in the domain name. If proven, the following non-exclusive circumstances may serve as evidence of Respondent’s rights or legitimate interest in the domain name:

Respondent has presented no reliable evidence that it has any rights or legitimate interest in the disputed domain name. Based on these uncontested facts, it is clear that Respondent has not yet made "demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute." Likewise, it is certain that Respondent has never been commonly known by the domain name. Finally, Respondent’s own agent indicates that it intends to make commercial use of the domain name in the United States despite the fact that it knows that such use is likely to divert consumers or to cause confusion as to the source of goods or services associated with Complainant’s trademark.

Complainant has met its burden of proof with regard to the second prong under paragraph 4(a).

Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith registration and use includes:

While the Complaint is not very specific, it would appear that Complainant is alleging bad faith under paragraph 4(b)(iv) of the Policy, i.e. Respondent’s intentional use of the domain name <telemarshal> to attract, for commercial gain, internet users to Respondent’s own web site by creating a likelihood of confusion with the trademark owner’s mark. Here, Respondent’s own words of July 14 bear out such a claim: "The domain name telemarshal.com was registered because we are starting with a new service called SHAL, and telemarshal was free and registrable. The service is now under constructions [sic], but I hope to post it as soon as possible, but not before the end of the summer – begin [sic] of autumn. SHAL will be an eCommerce service for Italian companies that want to sell their products in global market, USA included." (emphasis added). The Panel finds that such U.S. sales would create confusion as to the source of goods and services under the TELEMARSHAL Mark and thus allow Respondent to trade on the goodwill in Complainant’s mark. Accordingly, the Panel concludes that Complainant has met its burden of showing that Respondent registered and used the domain name in bad faith.

Accordingly, under the standards applicable to this proceeding, the Panel concludes that Complainant is entitled to relief on the record presented. The Panel concludes: (a) that the domain name <telemarshal.com> is identical to Complainant’s mark; (b) that Respondent has no rights or legitimate interest in the domain name; and (c) that Respondent registered and used the domain names in bad faith. Therefore, pursuant to the Policy and the Rules, the Panel orders that the domain names be transferred to Complainant.