Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Houlberg Development , Tualatin, OR, USA ("Complainant"). The Respondent is Adnet International, Atlanta, GA, USA ("Respondent").

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

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.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 25, 2000; The Forum received a hard copy of the Complaint on September 25, 2000.

On September 28, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name retailengine.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 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 28, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 18, 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@retailengine.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 24, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody 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 name be transferred from the Respondent to the Complainant.

B. Respondent

Respondent did not submit a response.

Complainant holds a federal trademark registration for "Retail Engine" in connection with a software product designed for owners of retail stores. This software product has been sold under the "Retail Engine" mark since 1986. Respondent originally registered the domain name on September 16, 1998. For some time, the domain name retailengine.com was directing Internet traffic to the web site of Service Tech Direct, a heating and air conditioning installer based in Michigan. It appears that Neither Service Tech Direct, nor Respondent was aware that the domain name was being used in this manner until Complainant made the discovery in June of 1999.

After Complainant contacted Respondent regarding the domain name, Respondent terminated the link to Service Tech Direct and placed an "under construction" notice on the corresponding web page. No further use has been made of the domain name.

Recently, after being contacted by Complainant and apprised of Complainant’s asserted rights in the "Retail Engine" mark, Respondent renewed the domain name registration for an additional two years.

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 retailengine.com is virtually identical to Complainant’s federally registered "Retail Engine" trademark. The only difference between the Complainant’s trademark and Respondent’s domain name is the addition of ‘.com’ and the deletion of a space between ‘retail’ and ‘engine.’ Therefore, Complainant has satisfied the first ICANN Policy element.

Under the ICANN Policy, Respondent is given 20 days from the date of commencement in which to submit a response. A submitted response affords Respondent the opportunity to demonstrate its rights or legitimate interests in the domain name. See ICANN Policy ¶ 4(c).

Respondent has not submitted a response and therefore has failed to demonstrate any rights or legitimate interest in respect of the domain name retailengine.com. Therefore, this panel concludes that Respondent has no such rights.

Respondent has registered, renewed and used the domain name in bad faith. Complainant admits that there is little evidence indicating that Respondent’s original registration of the domain name in was in bad faith. However, Complainant does point to the fact that Respondent has done very little other than passively hold the name for over two years. Under other UDRP cases, passive holding of a domain name for an extensive period of time can be evidence of registration and use in bad faith. 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); ("[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"). See also 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).

In addition, Respondent had actual knowledge of Complainant’s asserted rights in "Retail Engine" as a trademark before it renewed the domain name. Therefore, the domain name was renewed in violation of ICANN Policy ¶ 2(b). In such a case, Respondent’s renewal can be considered to be in bad faith. See e.g. Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).

Finally, the evidence indicates that Respondent renewed 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 services mark for valuable consideration." See Educational Testing Service v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).

Having established all three elements 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 retailengine.com be transferred from the Respondent to the Complainant.