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PIC Design v. Advance 2000 [2000] GENDND 1391 (27 October 2000)

National Arbitration Forum

DECISION

PIC Design v. Advance 2000

Claim Number: FA0009000095683

PARTIES

The Complainant is PIC Design, Middlebury, CT, USA ("Complainant"). The Respondent is Advance 2000, Williamsville, NY, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

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

PANELIST(s)

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.

Judge Ralph Yachnin, as Panelist.

PROCEDURAL HISTORY

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 9/26/00, Network Solutions confirmed by e-mail to the Forum that the domain name "picdesign.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 October 2, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 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@picdesign.com by e-mail.

Having received no timely 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 27, 2000, pursuant to Complainant's request to have the dispute decided by a One Member panel, the Forum appointed Judge Ralph Yachnin, 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant

The Complainant contends the following:

The domain name is identical to its marks;

The Respondent has no rights or legitimate interests in the domain name;

and

The domain name was registered and used in bad faith.

B. Respondent

The Respondent has failed to submit a timely response in this matter.

FINDINGS

ICANN Uniform Rule 14(b) provides that, absent exceptional circumstances, the

Panel shall draw inferences, as it deems appropriate, from the failure of a party to comply with a provision or requirement of the Uniform Rules. As a result, all reasonable inferences asserted in the Complaint will be deemed true.

PIC DESIGN is a registered trademark of the Complainant (No. 1502802). The Complainant has been conducting business under this mark since 1972. The Respondent approached the Complainant both verbally and in writing offering to sell the domain name. The Respondent asked for $3,500 for the domain name. Registration and other expenses connected with the domain name are significantly less than this requested amount.

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 canceled 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

Domain names are not case-sensitive; upper case and lower case letters are treated as identical. Also, domain name registrars remove any blank characters in domain names. A top-level suffix, like the ".com" suffix, is required in forming a domain name. Thus, despite these changes to a

registered mark, a domain name can still be identical to the mark. The Panel concludes that the domain name <picdesign.com> is identical to the Complainant's mark PIC DESIGN. See Planned Parenthood Fed'n of Am v. Bucci,42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997) aff'd 152 F3d 920 (2nd Cir. 1998) cert. denied 525 U.S. 834 (1998) (finding plaintiff's PLANNED PARENTHOOD mark and defendant's <plannedparenthood.com> domain name nearly dentical); Harcourt,Inc. v. Jeff Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that the domain names "FIRERESCUEMAGAZINE.COM", CLINICALPSYCHIATRYNEWS.COM",

"INTERNALMEDICINENEWS.COM", "OBGYNNEWS.COM", "PEDIATRICNEWS.COM", and "SKINANDALLERGYNEWS.COM" are identical to the Complainant's marks).

Rights or Legitimate Interests

The Complainant contends that the Respondent has no legitimate interests in the domain name. There is no evidence that the Respondent is offering goods, services, or noncommercial information in connection with the domain name in question. Policy ¶ 4.c.(i), (iii). There is also no evidence that the Respondent is using the domain name as an alternative name to its current

name, Advance 2000. Policy ¶ 4.c.(ii). The Respondent has not offered any evidence contrary to the above assertions. See Woolworths plc. v. David Anderson, D2000-1113 (Oct. 10, 2000) (finding that the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests).

Based on the above, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name in question.

Registration and Use in Bad Faith

The Respondent registered the domain name with the intention of selling it to the Complainant for a price in excess of out of pocket costs. Policy ¶ 4.b.(i). This is evidenced by the Respondent's offers to sell the domain name for $3,500. Based on these offers to sell the domain name for an excessive price, the Panel determines that the Respondent registered and is using the domain name in bad faith. See World Wrestling Fed. Entertainment, Inc. v. Bosman, D0099-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs); Nabisco Brands Co. v. The Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (finding that the Respondent registered and used the domain names to profit where Respondent offered to sell the domain names for $2,300 per name).

The Respondent Response was interposed prior to the issuance of the complaint and hence was not timely served. However, even if it was timely served, no factual claim of the Complainant was effectively controverted by the purported response and this decision would result in the same relief granted to the Complainant if the untimely Response had been given full consideration. See UFCW International Union v. Union Automation, FA94665 (Nat. Arb. Forum June 8, 2000) (holding that untimely Response without Motion or Affidavit does not controvert Complainant's allegations and proof and all reasonable inferences of fact in the allegations of the complaint will be taken as true.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "PICDESIGN.COM", be transferred from the Respondent to the Complainant.

Judge Ralph Yachnin, Panelist

Dated: October 27, 2000