Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Integrity Systems, Inc. , Richardson, TX, USA ("Complainant"). The Respondent is Integrity Systems, McLean, VA, USA ("Respondent").

The domain name at issue is "integritysystems.net", registered with Network Solutions.

The undersigned (or 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 Irving Perluss (Retired) is the Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on August 28, 2000; The Forum received a hard copy of the Complaint on August 30, 2000.

On September 5, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "integritysystems.net" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Dispute Resolution Policy ("Policy").

On September 5, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 25, 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@integritysystems.net by e-mail.

On September 27, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

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

A. Complainant

1. The domain name "integritysystems.net" is identical and confusingly similar to Complainant’s famous and distinctive mark. It has used the mark in commerce since 1994. Complainant has registered its mark with the United States Patent and Trademark Office on November 14, 1995, and on July 29, 1997. It has spent substantial sums developing goodwill in its mark.

2. Respondent has no rights or legitimate interest in the domain name in issue because the domain name consists predominantly of Complainant’s famous and distinctive mark.

3. Respondent has registered and is preparing to use the domain name in issue in bad faith because it intentionally will attempt to attract Internet users to its website by creating a likelihood of confusion with Complainant’s marks, as to the source, sponsorship, affiliation and/or endorsement of Respondent’s website. Such registration and use of the domain name constitutes a false designation of origin, and a false description or representation as to a relationship between Complainant and Respondent.

B. Respondent

1. Respondent has rights and a legitimate interest in the domain name "integritysystems.net" because it has used the name with a bona fide offering of goods or services demonstrated by the operation of a company organized on June 25, 1998, and e-mail use.

2. Respondent registered the domain name in good faith and for use in its business. It did not register the name for the purpose of selling it.

1. Complainant is the owner of two registrations with the United States Patent and Trademark Office. The mark was first used in commerce in 1994, and the mark registrations are dated November 14, 1995, and July 29, 1997.

2. Complainant uses its mark, inter alia, in educational services related to conducting seminars dealing with sales techniques. It has graduated more than 1.5 million students in its operations in more than sixty countries and seven languages.

3. Complainant’s mark, accordingly, has become famous and distinctive and, thus, is entitled to the higher protection afforded it by law.

4. Respondent, however, registered the domain name "integritysystems.net" on August 27, 1998, prior to any attempted registration by Complainant.

5. Respondent was incorporated on June 25, 1998, as a limited liability company.

6. Respondent has not yet established a website using the domain name in issue. It proposes to do so, and, although it is not completely clear, the evidence indicates it has and will engage in recruiting executive staff personnel. This activity is close to Complainant’s activities in educating and motivating personnel.

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 domain name in issue and Complainant’s mark are identical and confusingly similar. It has been held that when comparing a trademark with a domain name, normally the presence of ".com," or as here, ".net" is of little importance because they are so common and generic. (See Brookfield Communications, Inc. v. West Coast Entertainment Corp. (9^th Cir., 1999) [1999] USCA9 225; 174 F.3d 1036, 1055, 50 U.S.P.Q. 1545, 1558.)

Because Complainant’s mark was registered with the United States patent and Trademark Office long before Respondent registered the domain name in issue, Respondent would have rights and a legitimate interest in the domain name only if its registration and use of the domain name was not in bad faith.

It is of interest to note that the Anticybersquatting Consumer Protection Act, ("ACPA") [15 U.S.C. §1125(d)] protects owners of a famous mark (as here) from a person who registers or uses a domain name that is confusingly similar to the mark or dilutive of the mark, if such person has a bad faith intent.

As will be seen hereafter, the Panelist necessarily has determined that such bad faith is present.

Respondent did not demonstrate, in the Panelist’s opinion, that he has rights and a legitimate interest in the domain name, as set forth in §4c of the Policy or otherwise.

It was difficult for the Panelist to ascertain exactly what activity Respondent sought to engage. In Respondent’s Exhibit 1, however, there was e-mail correspondence relating to the recruitment of executive level employees. To the Panelist, this activity is one in which Respondent’s Internet viewers would assume is a part of the worldwide and well-known activities of Complainant. Respondent must have known, or reasonably should have known, of Complainant’s mark and activities when it registered the domain name in issue.

It follows that it is objectively reasonable to determine that Respondent falls within Paragraph 4(b)(iv) of the Policy:

The Panelist, thus, has concluded that the domain name in issue was registered in bad faith. But, is the domain name being used in bad faith, because Respondent has not created a website to date. It has not activated a website, although it displays on the Internet "Web Site on the way . . ." and "website coming soon. . ." using the domain name.

The Panelist heretofore has determined that Respondent has no rights or legitimate interest in the domain name. It makes no sense whatever to wait until it actually "uses" the name," when inevitably, when there is such use, it will create the confusion described in the Policy.

Under this circumstance, a preliminary mandatory injunction was granted by a federal court requiring the transfer of a domain name even though a website had not yet been opened. (Green Products Co. v. Independence By-Products Co. (N.D. Iowa 1997) 992 F.Supp.1070.) The threatened harm is "use."

The Panelist, thus, has determined that there is bad faith use by Respondent even though a website has not been activated.

Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided that the domain name, "integritysystems.net" registered by Respondent Integrity Systems shall be transferred to Complainant Integrity Systems, Inc.