Generic Top Level Domain Name (gTLD) Decisions

The Complainant is DJF Associates, Inc. , Duluth, GA, USA ("Complainant"). The Respondent is AIB Communications , Milltown, NJ, USA ("Respondent").

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

The Panelist 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.

Panelist is Judge Karl V. Fink (Retired).

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 15, 2000; The Forum received a hard copy of the Complaint on September 18, 2000.

On September 19, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name teleconfusionremoval.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 22, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 12, 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@teleconfusionremoval.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.

Respondent did submit a tardy Response which was received by the Forum on October 17, 2000 and forwarded to the Panel. The Panel has determined that Respondent’s reasons for the tardy response are sufficient and therefore the response has been considered.

On October 19, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Karl V. Fink (Retired) as Panelist.

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

A. Complainant

The Complainant contends that the marks are extremely similar in sounds, meaning, appearance, and connotation. The Complainant contends that the Respondent improperly interfered with its trademark and business relations. The Complainant contends that the Respondent has no rights or legitimate interests in the domain name. The Complainant contends that use of the domain name in question will attract users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion with the Complainant’s services and trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

B. Respondent

Respondent began use of its Teleconfusion Removal service mark at least as early as 1995, and in any event prior to November 17, 1998 without either actual or constructive knowledge of Complainant’s Teleconfusion mark. Complainant’s registered mark Teleconfusion registration was canceled. That canceled registration did not provide Respondent with constructive knowledge of Complainant’s alleged rights in the Teleconfusion mark when Respondent began use of its Teleconfusion Removal service mark and obtained registration of its Teleconfusionremoval.com domain name on February 21, 1997.

The domain name is not identical or similar to Complainant’s alleged Teleconfusion service mark.

Complainant’s use of the Teleconfusion mark infringes Respondent’s right in its Teleconfusionremoval service mark

Respondent has rights or legitimate interests in the domain name and the domain name was not registered and used in bad faith.

The Complainant has used the TELECONFUSION mark since 1986. The Complainant is the owner of the U.S. Federal Trademark Registration No. 1,682,018 (now abandoned) and 3,229,785 (issued April 11, 2000) for the trademark TELECONFUSION for use in connection with technical consultation services in the field of telecommunications. The Complainant’s registration No. 1,682,018 was in full effect when the Respondent became the owner of the domain name "teleconfusionremoval.com" on February 21, 1997. Thereafter, the original trademark was canceled. The Complainant also has had common law rights in the mark.

The Complainant and Respondent are involved in similar businesses that offer telecommunication services.

On November 17, 1998, the Complainant’s counsel sent a communication to the Respondent concerning its use of the Complainant’s trademark and demanding that the Respondent refrain from all further use of the mark. In response, the Respondent refused to discontinue its use of the mark and offered to settle the matter only if the Respondent maintained some use of the mark. The Complainant rejected the settlement offer because it allowed for the Respondent’s continuance of the mark.

On October 13, 2000 Respondent filed a Petition for Cancellation of Complainant’s present US trademark registration.

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.

The domain name in question is confusingly similar to the Complainant’s mark. The Respondent’s domain name adds the term "REMOVAL" to the Complainant’s registered mark. Adding a generic term to another’s registered mark does not deprive the mark owner of rights in the mark nor does it avoid confusing similarity. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word "shop" with the Complainant’s registered mark "llbean" does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy). See General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term "direct" to the Complainant’s marks (GE CAPITAL and GECAL) does not alter the underlying mark held by the Complainant, and thus the Respondent’s domain names are confusingly similar).

Complainant has proven this element.

Paragraph 4(a)(ii) of the ICANN Policy asks whether the respondent has any rights or legitimate interests in the domain name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (1) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (2) the fact that the respondent has commonly been known by the domain name; and (3) legitimate non-commercial or fair use of the domain name.

Respondent has shown that it has legitimate interests in the use of the name. The time for determination as to whether there is a legitimate interest is when the Complaint is filed, which was 5 years after Respondent began using the name, 3 years after the domain name was registered and almost 2 years after Complainant contacted Respondent about the use of the name containing Complainant’s mark.

Respondent claims that Complainant’s canceled US Registration No. 1,682,018 did not provide Respondent with constructive knowledge of Complainant’s alleged rights in the Teleconfusion identification when Respondent began use of its Teleconfusion Removal service mark and obtained registration of its teleconfusionremoval.com domain name on February 21, 1997. Action Temporary Services, Inc. v, Labor Force, Inc., [1989] USCAFED 176; 870 F.2D 1563 (Fed.Cir.1989)

Respondent asserts that it selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of this dispute. See Policy ¶ 4(c)(i). It is acknowledged in Complainant’s exhibits that Respondent has made use of Teleconfusion Removal Inc. as a service name and tradename in connection with end-to-end networking (letter from Folly and Mardner, November 17, 1998). This use apparently continued and was present when the Complaint was filed.

Respondent has shown that it has a legitimate interest in the domain name.

Complainant has not met its burden on this issue.

The Complainant contends that use of the mark in the domain name will attract many users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s services and trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Policy ¶ 4.b.(iv).

The Complainant contends that the Respondent’s improper acquisition of a competitor’s trademark is one method available to interfere with a competitor’s business relations. Registering a domain name in order to disrupt the business of a competitor is evidence of bad faith. Policy ¶ 4.b.(iii). The Respondent has registered a domain name that infringes on the Complainant’s registered mark. The Complainant and the Respondent are competitors and offer similar services. The Panel is not able to determine from the pleadings whether the domain name has been used. If it has been used, utilizing the Complainant’s mark in a domain name that links to a website that offers competing services is disrupting the Complainant’s business. This evidence is sufficient to meet the provisions of Policy ¶ 4.b.(iii). See Puckett, Individually and d/b/a Nature’s Window v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from the Complainant to a competitor’s website in violation of Policy 4(b)(iii)).

If the name containing Complainant’s mark has not been used (after 2 years) this is proof of registration and use in bad faith.

The Panel concludes that the domain name was registered and used in bad faith.