Generic Top Level Domain Name (gTLD) Decisions

The Complainant is William O. Thompson/Bill Thompson, Inc. , New Berlin, WI, USA ("Complainant") represented by Elizabeth A. Neary, 20800 Swenson Drive. The Respondent is PC Depot, Inc., Midland Park, NJ, USA ("Respondent").

The domain name at issue is "safetymart.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.

Judge Ralph Yachnin, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 4, 2000; The Forum received a hard copy of the Complaint on October 4, 2000.

On October 9, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name "safetymart.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 October 11, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 31, 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@safetymart.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 November 3, 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.

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

The Complainant contends that all three factors of ICANN Policy ¶ 4.a. have been satisfied by its complaint:

The Complainant further asserts that the Respondent is guilty of cybersquatting and has no legitimate business or other use for the domain name in question.

Respondent did not reply to the Complainant’s contentions, or make any submission in this proceeding.

The Complainant owns a U.S. registered trademark for the mark SAFETY MART (No. 2,283,949; registered on Oct. 5, 1999 for use in retail store services featuring hard hats, respirators, ear muffs, and safety shoes and vests). The Complainant has been using this mark in connection with its retail stores since 1998.

The Respondent has made no use of the infringing domain name. Respondent neither owns nor operates a Safety Mart store nor has any business connected to the sale of safety products.

The Respondent has listed the domain name for sale on a website owned and operated by the Respondent, <everybodyloves.com>, for a price of $40,000.

According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and/or principles of law that it deems applicable. Given the Respondent’s failure to submit any documents with the Panel, the decision in this case will be based solely on the Complaint, ICANN Rules, Policy and precedent, and principles of law.

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 Complainant has rights in the registered trademark SAFETY MART. The Respondent has registered the domain name "safetymart.com." This domain name is identical to the Complainant’s mark. See Anne of Green Gables Licensing Authority, Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the domain name <anneofgreengables.com> is virtually identical to the Complainant’s mark ANNE OF GREEN GABLES).

The Complainant asserts that the Respondent has no rights in the domain name in question. The Respondent has not denied this assertion.

The Respondent has made no use of the domain name in question. In addition, the Respondent has not submitted any documents to the Panel that would indicate rights or legitimate interests in the domain name. The Panel concludes that the Respondent has not met any circumstance set forth in Policy ¶ 4.c. The Respondent has not made any actual use or demonstrable preparations to use the domain name in question; therefore, the Respondent cannot claim to be using the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial use. Policy ¶ 4.c.(i). (iii). Further, the Respondent is not commonly known by the domain name, which is identical to the Complainant’s mark. Policy ¶ 4.c.(ii). Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name.

The Complainant asserts that the Respondent has registered and used the domain name in bad faith. The Respondent has not denied this assertion.

Policy ¶ 4.b.(i) states "[C]ircumstances indicating that you have registered or you have acquired 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 service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name." ICANN Policy ¶ 4.b.(i). There is nothing wrong with selling generic domain names. However, selling domain names that infringe upon other’s marks is evidence of bad faith use and registration. See CBS Broadcasting Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) ("There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.").

The Respondent posted the domain name in question for sale for $40,000 at its website <everybodyloves.com>. The Panel concludes that the Respondent has registered and used the domain name in question in bad faith. See Randstad General Partnet, LLC v. Domains For Sale For You, D2000-0051 (WIPO Mar. 24, 2000) (finding bad faith where the Respondent offered the domain name for sale on its website <internetdomains4u.com> for $24,000).

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 "safetymart.com" be transferred from the Respondent to the Complainant.