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Naterra International v. Carl Dincesen [2000] GENDND 1314 (19 October 2000)


National Arbitration Forum

DECISION

Naterra International, Inc. v. Carl Dincesen

Claim Number: FA0009000095571

PARTIES

The Complainant is Naterra International, Dallas, USA ("Complainant"). The Respondent is Carl Dincesen, Garden City, NY, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is timeblock.com, registered with Network Solutions.

PANELIST

The undersigned, Nelson A. Diaz, certifies that he 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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 13, 2000.

On September 13, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name timeblock.com 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 4.0 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 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@timeblock.com by e-mail. A timely response was filed by Respondent.

On October 6, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Nelson A. Diaz, as Panelist.

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 are substantially similar to Complainant’s TIME BLOCK 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

Since October 1997, Complainant has been using the mark TIMEBLOCK in commerce in connection with cosmetics and skin care preparations, namely skin moisturizers and similar products. The mark was registered by Complainant on June 27, 2000. No evidence was presented regarding the extent of use or the amount of time, effort and resources expended to develop goodwill in the mark.

On November 14, 1999, Respondent registered the domain name <timeblock.com>. Currently, the domain name does not resolve to an active web site. Respondent claims to have plans to develop and market, via the web, a handheld electronic for personal organizer device. No evidence was presented regarding demonstrable preparations to use the domain name in question.

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.

Similarity Between Respondent’s Domain Name and Complainant’s Trademarks.

Under paragraph 4(a) of the Policy, it is facially evident that the domain name registered by Respondent, <timeblock.com> is identical and therefore confusingly similar to Complainant’s mark. Complainant has met its burden of proof with respect to the first element of its cause of action.

Respondent’s Rights or Legitimate Interest in the Domain Name.

omplainant has asserted that Respondent has no rights or legitimate interest in the domain names: Respondent has never done business or traded under the domain names; Respondent does not have any trademark or intellectual property rights in the domain names; Respondent has never been known by the domain names 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:

  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.

To establish it rights or legitimate interest in the domain names, Respondent relies on its potential future use of the domain names for legitimate commercial purposes, namely for the marketing of a consumer electronic device. Respondent however has provided no evidence of any demonstrable preparations to use the domain name in question in such a manner.

Accordingly, the Panel finds that the Complainant has satisfied the second prong under paragraph 4(a).

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 a competitor; or
  4. Using the domain name to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the trademark owner’s mark.

Complainant has not proven that Respondent registered and used the domain name in bad faith. There is no evidence Respondent was registered for the purpose of resale to Complainant or to a competitor of Complainant. Similarly, there is no evidence that Respondent has engaged in a "pattern of conduct" of requesting domain names corresponding to another’s trademark. Likewise, there is no evidence that Respondent registered the domain name primarily for the purpose of disrupting a competitor’s business. Complainant and Respondent are not competitors. Finally, there is no evidence that Respondent is using its domain names to intentionally attempt to attract Internet users to its web site by creating a likelihood of confusion with Complainant’s mark. There is presently no active web site.

The Panel hereby finds that Complainant has not met its burden under the Policy of showing that Respondent has registered and used the domain name in bad faith.

DECISION

ccordingly, under the standards applicable to this proceeding, the Panel concludes that Complainant is not entitled to relief on the record presented. Specifically, the Panel concludes that Complainant has failed to meet its burden of proof on showing that Respondent registered and used the domain name in bad faith.

Nelson A. Diaz

Presiding Panelist

Date: October 19, 2000

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