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CIMCities LLC v. None aka Hamid Shojaee [2000] GENDND 1313 (19 October 2000)


National Arbitration Forum

DECISION

CIMCities LLC v. None aka Hamid Shojaee

Claim Number: FA0009000095606

PARTIES

The Complainant is CIMCities LLC, Atlanta, GA, USA ("Complainant"). The Respondent is None aka Hamid Shojaee, Tempe, AZ, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is <accessaz.com>, registered with tucows.com.

PANELIST

The undersigned, Nelson A. Diaz, certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 14, 2000; The Forum received a hard copy of the Complaint on September 13, 2000.

On September 18, 2000, tucows.com confirmed by e-mail to The Forum that the domain name <accessaz.com> is registered with tucows.com and that the Respondent is the current registrant of the name. tucows.com has verified that Respondent is bound by the tucows.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 19, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Res pondent 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@accessaz.com by e-mail.

On October 11, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Nelson A. Diaz as Panelist.

The Panel received information that was not submitted in accordance with the Rules and did consider that material.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

  1. Complainant contends that the domain name in question is substantially similar to Complainant’s ACCESSARIZONA.COM mark.
  2. Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name.
  3. Complainant contends that Respondent registered and is using the domain names in bad faith.
  4. Respondent admits substantial similarity but otherwise contests these contentions and asserts that it has violated neither the Rules nor the Policy.

FINDINGS

Complainant has operated a web site located at www.acessarizona.com since March 1998. As of October 19, 1999, Complainant was the owner of a federally registered service mark ACCESSARIZONA.COM. Complainant has invested substantial time and resources to promote its web site and mark. In the year 2000, Complainant anticipates spending three million dollars on marketing expenditures for its ACCESSARIZONA.COM web site.

On April 14, 1998, after Complainant had launched its web site and filed its federal service mark applications, Respondent, a resident of Tempe, Arizona, registered the domain name <accessaz.com>. Respondent avers that the domain name was registe red with the intent to start a web site marketing everything A to Z. This averment is not supported out by the evidence of record. On or about July 9, 1999, Respondent launched a web site located at www.accessaz.com that provided links to various web sites that might interest Arizona residents or visitors. Subsequently, Respondent posted the <accessaz.com> domain for auction on eBay. In describing the domain name, Respondent wrote, "This incredibly HOT d omain name receives about 40,000 new visitors a month just because of AccessArizona.com’s TV and radio advertising.…" (emphasis in original). On or about January 11, 2000, Respondent e-mailed Complainant and notified it that the domain name was being auctioned. The parties subsequently engaged in a course of correspondence regarding ownership and sale of the domain name. Ultimately, Respondent offered to sell the domain name for $20,000.00. No agreement was reached and this action followed.

DISCUSSION

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.

Identical and/or Confusingly Similar

Under paragraph 4(a) of the Policy, it is clear that the domain name registered by Respondent, <accessaz.com>, is confusingly similar to Complainant’s ACCESSARIZONA.COM mark and its eponymous domain name. Respondent himself admits on several occasions that web site associated with <accessaz.com> receives 4,000 new visitors a month "just because" web users looking to visit Complainant’s web site are instead finding their way to this confusingly similar web address. The panel concludes th at Complainant has met its burden of proof on the first prong and that the domain name is confusingly similar to Complainant’s mark.

Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate interest in the domain name includes:
    1. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
    2. An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
    3. Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Respondent avers that he has rights in the domain name and that he has made a legitimate use of the disputed domain name, i.e. that he intended to create a web site selling everything from a to z. The Panel finds the Respondent’s assertions to be not c redible. Indeed, the evidence proffered by Respondent has convinced the Panel that no legitimate undertaking was ever made to use the domain name in connection with such a bona fide offering of goods or services.

First, it is simply not credible that an entrepreneur intending to set up such a web site would not have registered other similar domain names such as accessa2z.com, accessatoz.com, etc. Similarly, Respondent’s so-called business plan looks to be nothi ng more than a "make-weight," designed to deceive the gullible into believing Respondent’s averments. Indeed, the plan was prepared many months after registration of the domain name. Second, the timing of Respondent’s registration of <accessaz.c om>, approximately one month after Complainant launched it web site at www.accessarizona.com, strongly suggests that the domain name in question was registered with the intent to divert consumers from Complai nant’s similarly named web site. The fact that Respondent is a resident of Arizona and that he subsequently set up a web site listing various Arizona web sites belies any suggestion that Respondent was not aware that domain name was confusingly similar to Complainant’s own domain name and would thus allow him to trade on the goodwill of Complainant’s mark and domain name.

In sum, there is no credible evidence that the domain name in question was registered for a legitimate business purpose. Complainant has met its burden of proof with regard to the second prong under paragraph 4(a) of the Policy.

Respondent’s Bad Faith Registration and Use of the Domain Name.

Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith registration and use includes:
    1. Circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;
    2. A pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;
    3. Registration of the domain name for the purpose of disrupting the business of competitor; or
    4. Using the domain name to intentionally attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the trademark owner’s mark.

The parties are Arizona neighbors, with Respondent located in one of the cities served by Complainant’s cable and television network. As an Arizona resident then, it is all but certain that, at the time he registered the domain name, Respondent was wel l-aware that the "az" in <accessaz.com> would be widely understood by Internet users to refer to "AZ", the U.S. Postal Service abbreviation for Arizona. By using a domain name that knew to be confusingly similar to Complainant’s mark, Respondent int entionally created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of his web site. Respondent also created initial interest confusion, that is, the misleading diversion of web users trying to locate the Complainant’s actual site. Moreover, such use is likely to tarnish Complainant’s goodwill and reputation by frustrating Internet users seeking to locate Complainant’s web site located at www.accessarizona.com.

In addition, Respondent’s advertising copy in support of the auction of the domain name on eBay demonstrates Respondent’s bad faith use of the domain name in violation of paragraph 4(b) of the Policy. Likewise, Respondent’s offer to sell the domain nam e to Complainant for $20,000, an amount in excess of the out-of-pocket cost of registration is further proof of bad faith under the Policy.

The Panel hereby finds that Complainant has met its burden of showing that Respondent has registered and used the domain name in bad faith.

DECISION

Under the standards applicable to this proceeding, the Panel concludes that Complainant is entitled to relief on the record presented. Accordingly, the Panel orders that the domain name <accessaz.com> be transferred from Respondent to Complai nant.

Nelson A. Diaz

Presiding Panelist

Date: October 19, 2000

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