Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Gordon Rush & Co., Ltd. , San Diego, CA, USA ("Complainant"). The Respondent is Ramon Rono, Marina Del Rey, CA, USA ("Respondent").

The domain name at issue is "gordonrush.com" registered with Register.com.

The Panelist certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as the panelist in this proceeding.

Honorable Carolyn Marks Johnson sits as 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 28, 2000.

On August 31, 2000, Register.com confirmed by e-mail to the Forum that the domain name "gordonrush.com" is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 6, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 26, 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@gordonrush.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 October 6, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carolyn Marks Johnson 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.

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

A. Complainant

Complainant alleges the following:

B. Respondent

Respondent did not respond to the complaint.

Complainant received its trademark registration for GORDON RUSH on August 24, 2000. Respondent registered "gordonrush.com" on August 18, 1999. Complainant’s evidence indicates that Respondent has neither an active web site associated with the domain name, nor is Respondent known by the domain name, nor does Respondent conduct business under the domain name.

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.

Complainant’s evidence indicates that it has rights in the GORDON RUSH mark. Complainant’s federal trademark registration lists November 8, 1998 as the date of first use in commerce and a registration date of August 24, 1999.

The domain name "gordonrush.com" entirely embodies Complainant’s GORDON RUSH mark. Respondent’s registration of "gordonrush.com" is identical to the substantive portion of Complainant’s mark and substantially similar in its entirety. Complainant had satisfied the requirements of ICANN Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as "net" or "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Complainant alleges that Respondent does not have any rights or legitimate interest in respect of the domain name. Respondent has not contested these allegations in this proceeding. Because Respondent has the burden of proof on this issue, and Respondent failed to comply with evidence to counter Complainant’s proof to establish this requirement, the Panel is entitled to infer that the Respondent has no such rights or interests. See ICANN Policy Rules ¶ 14.

This Panel also finds the evidence sufficient to determine that Respondent registered and is using the domain name in bad faith. In making such a determination, this panel is not bound to look only for circumstances such as those specifically listed in the ICANN Policy ¶ 4(b). See Educational Testing Service v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy "[I]ndicates that its listing of bad faith factors is without limitation").

In this case, the Panel finds that the circumstances indicate that Respondent’s registration of the domain name was in bad faith and that Respondent is passively holding the domain name. The fact that Respondent provided no evidence indicating that Respondent has any rights in the domain name leads the Panel to infer that Respondent’s registration of the domain name was in bad faith. The only other reason to register the domain name would be to profit from its resale or trade off the goodwill of the mark. See Hewlett-Packard Company v. Greg Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that the Respondent registered and uses the domain name in bad faith).

Further, even though Respondent has never ‘used’ the domain name as an active web address, his passive holding of the domain name is sufficient to constitute bad faith under the ICANN Policy. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that passive holding of a domain name is use of the domain name in bad faith).

Therefore, in light of the lack of contrary evidence, this Panel finds that Respondent’s registration and use of the domain name is in bad faith. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to provide any evidence to controvert Complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with the Complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present).

Having established all three elements as required by the ICANN Policy, it is the decision of this Panel that the requested relief be granted.

Accordingly, it is ordered that the domain name "gordonrush.com" be transferred from Respondent to Complainant.

Honorable Carolyn Marks Johnson, Panelist
Dated: October 20, 2000