Generic Top Level Domain Name (gTLD) Decisions

The Complainant is iBiomatics LLC, Cary, NC, USA ("Complainant"). The Respondent is The Domain Name You Have Entered Is For Sale, Las Vegas, NV, USA ("Respondent").

The domain name at issue is "I-BIOMATICS.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 17, 2000; The Forum received a hard copy of the Complaint on August 17, 2000.

On August 21, 2000, NSI confirmed by e-mail to The Forum that the domain name "I-BIOMATICS.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 21, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 11, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@i-biomatics.com by e-mail.

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 18, 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 failed to submit a response in this matter. As a result, all reasonable inferences of fact in the Complaint will be deemed true. ICANN Rule 14(b).

The Complainant is a wholly owned subsidiary of SAS Institute Inc. On May 26, 2000, SAS Institute Inc. announced the spin-off of iBiomatics LLC, a business to business pharmaceutical technology company. SAS Institute Inc. posted a press release on its own website, <sas.com>, and forwarded the press release to numerous news agencies and reporters. Prior to the formal announcement of its spin off, the Complainant launched the website <ibiomatics.com>.

The Complainant owns several pending U.S. trademark applications for the mark IBIOMATICS (filing date: May 22, 2000; Nos. 76/054758, 76/054759, 76/054760, 76/054761, 76/054762, 76/054763).

On May 29, 2000, B. Evans sent an email to the Complainant stating, "Someone emailed me about a domain name I own: <i-biomatics.com>. Yes this domain name is for sale." No one from the Complainant’s business or SAS Institute Inc. contacted the Respondent or B.Evans. B. Evans is the president of Entredomains, Inc., which is the administrative contact listed for the domain name. When the Complainant rejected this offer and demanded transfer, the Respondent offered to sell the domain name for $5,000.

The Respondent registered the domain name on May 26, 2000. The Respondent then linked the domain name to a website sponsored by Entredomains, Inc. This site stated, "The domain name that brought you here is for sale." The site indicated that offers below $1,000 would not be accepted.

On June 7, 2000, counsel for the Complainant sent a letter to Entredomains, Inc. explaining the Complainant’s rights in its mark "IBIOMATICS" and demanding the transfer of the domain name to the Complainant.

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 mark "IBIOMATICS." The Complainant is seeking U.S. trademark registration of its mark. For purposes of UDRP disputes, pending trademark applications establish rights in a mark.

The Respondent’s domain name is identical to the Complainant’s mark, except for the addition of a hyphen between the letters "i" and "b" and the addition of the ".com" suffix. The presence or absence of punctuation and the addition of ".com" are of no consequence when establishing the identity of mariks. See Barney’s Inc. v. BNY Bulletin Board, D2000-0059 (WIPO Apr. 2, 2000); General Electric Co. v. Bakhit, D2000-0386 (WIPO June 22, 2000) (finding that placing a hyphen in domain name between "General" and "Electric" is confusingly similar to Complainant’s mark).

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

The evidence indicates that the Respondent has never used the domain name. Therefore, the Respondent cannot satisfy Policy ¶ 4.c.(i), using the domain name in connection with a bona fide offering of goods and services, or Policy ¶ 4.c.(iii), using the domain name in connection with a legitimate noncommercial use. The Respondent also cannot satisfy Policy ¶ 4.c.(ii) because the Respondent is not commonly known by the domain name, "i-biomatics.com."

Based on the preceding, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name. See Compangnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from the Complainant to use the trademarked name).

The Complainant asserts that the Respondent has registered and is using the domain name in bad faith. The Respondent has not denied this assertion.

The Respondent registered the domain name on May 26, 2000, the same day that the Complainant released the announcement of its spin off from SAS Institute Inc. The Respondent has registered other domain names of merging or expanding companies or domain names that infringe on others’ marks. See Cree, Inc. v. The Domain Name You Have Entered is For Sale, FA 94790 (Nat. Arb. Forum May 24, 2000) (finding bad faith where the Respondent purchased the domain names on the date of the Complainant’s press release regarding a merger and business expansion); Marconi Commerce Sys., Inc v. B. Evans, FA 93560 (Nat. Arb. Forum Mar. 15, 2000); Astro-Med, Inc. v. Merry Christmas Everyone! and B. Evans, D2000-0072 (WIPO Mar. 27, 2000); Creo Products Inc & anor v. Website in Development, D2000-0160 (WIPO May 1, 2000). Registering domain names in order to prevent the mark holder from using its mark in a domain name is evidence of bad faith, as long as the Respondent has engaged in a pattern of conduct. Policy ¶ 4.b.(ii). See The Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that where the Respondent registered many domain names, held them hostage, and prevented the owners from using them constituted bad faith).

The Respondent registered the domain name primarily for the purpose of selling it to the Complainant, who is the owner of the service mark, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the domain name. Policy ¶ 4.b.(i). This is also evidence of 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).

Based on the preceding, 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, "I-BIOMATICS.COM", be transferred from the Respondent to the Complainant.