Generic Top Level Domain Name (gTLD) Decisions

The Complainant is the National Council of the Young Men’s Christian Associations of the United States of America, Chicago, Illinois, USA ("Complainant"). The Respondent is Duerr Business Solutions, Pittsburgh, PA, USA ("Respondent").

The domain names at issue, registered with Tucows.com, are "E-YMCAGEORGE.COM", "USAYMCA.COM", "USAYMCA.NET", and "USAYMCA.ORG".

The domain names at issue, registered with CORE Internet Council of Registrars ("CORE"), are "GEORGEYMCA.COM" and "GEORGEYMCA.ORG".

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.

Judge Harold Kalina (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/16/2000; The Forum received a hard copy of the Complaint on 08/14/2000.

On 08/16/2000 confirmed by e-mail to The Forum that the domain names "E-YMCAGEORGE.COM", "USAYMCA.COM", "USAYMCA.NET", and "USAYMCA.ORG" are registered with Tucows.com and that the Respondent is the current registrant of the name.

On 08/23/2000 confirmed by e-mail to The Forum that the domain names "GEORGEYMCA.COM" and "GEORGEYMCA.ORG" are registered with CORE and that the Respondent is the current registrant of the name.

On 08/24/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 09/13/2000 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@usaymca.com, postmaster@usaymca.net, postmaster@usaymca.org, postmaster@e-ymcageorge.com, postmaster@georgeymca.com and postmaster@georgeymca.org 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 Judge Harold Kalina (Ret.) 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 names be transferred from the Respondent to the Complainant.

The Complainant’s contentions are:

B. Respondent

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 registered marks YMCA and YMCA OF THE USA, as well as rights in the pending trademark GEORGE. The domain names are sufficiently similar to these marks as to cause a likelihood of confusion between the relevant users of the Complainant’s services and those who were to view a web site provided by the Respondent accessed through the contested domain names. None of the domain names incorporate any other matter than the Complainant’s marks. As such, the Panel finds that sufficient similarity exists under paragraph 4(a)(i) of the Policy. See Blue Cross and Blue Shield Association and Trigon Insurance Company, Inc. d/b/a Trigon Blue Cross Blue Shield v. InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000).

While the burden of proof is on the Complainant, ¶ 4.c of the Policy advises a Respondent how to demonstrate its rights to and legitimate interests in the Domain Name. The paragraph sets out a non-exclusive list of circumstances which will establish the relevant rights and/or legitimate interests of the Respondent. The Respondent has not responded to the Complainant’s allegations. See America Online, Inc. v. AOL International, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests).

Respondent is not using the Domain Names in connection with a bona fide offering of goods or services. See Policy, Paragraph 4(c)(i).

Respondent is not commonly known by any of the Domain Names, either as a business, individual, or other organization. See Policy Paragraph 4(c)(ii). Rather, the Respondent is known as Duerr Business Solutions.

Respondent is not making a legitimate noncommercial or fair use of the Domain Names. See Policy, Paragraph 4(c)(iii).

As such, the Panel determines that the Respondent has no rights or legitimate interests in the domain names in question.

The Complainant contends that the domain name was registered in bad faith. The Respondent has not denied the Complainant’s assertion.

ICANN Policy ¶ 4.b. requires that the domain names have been registered and being used in bad faith. Policy ¶ 4.b. See World Wrestling Fed. Entertainment, Inc. v. Bosman, D0099-0001 (WIPO Jan. 14, 2000).

In a telephone conversation, the Respondent indicated that he was willing to sell the domain names to the Complainant upon mutually agreeable terms. Policy ¶ 4.b.(i) states, "You have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name." While this is not an outright offer to sell the domain names for excess of out of pocket costs, the Panel concludes that the Respondent’s notion of "mutually agreeable terms" was a price in excess of the out of pocket costs of registering the domain name. Offering a domain name for sale for valuable consideration in excess of out of pocket costs is evidence of registration and use in bad faith.

Further, because the Respondent was the Complainant’s former employee, it is obvious that the Respondent was aware of the Complainant’s tradename and trademark registrations. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that Respondent had actual or constructive knowledge of the commonly known mark SAMSONITE). The Respondent’s registration of the said domain names was intentional, purposeful, done with the purpose to encroach the Complainant’s marks and, therefore, in bad faith.

As such, the Panel determines that the Respondent registered and used the domain name 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 names, "E-MYCAGEORGE.COM", "USAYMCA.COM", "USAYMCA.NET", "USAYMCA.ORG", "GEORGEYMCA.COM", and "GEORGEYMCA.ORG" be transferred from the Respondent to the Complainant.