Generic Top Level Domain Name (gTLD) Decisions

P. O. Box 50191
Minneapolis, Minnesota 55405 USA

CAMCO, INC.,

Complainant,

-vs-

PAWNBROKERS SUPER-STORE,

Respondent.

DECISION
Forum File No.: FA0002000094189

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The above entitled matter was submitted to the undersigned, as arbitrator, for decision by letter dated March 27, 2000, on the Complaint of Camco, Inc. (ACamco@ or AComplainant@) against Pawnbrokers Super-Store (APawnbrokers@ or ARespondent@). Upon the written submitted record, the following DECISION is made:

PROCEDURAL HISTORY

Domain Name:Superpawn.com

Domain Name Registrar:Network Solutions, Inc.

Domain Name Registrant:Pawnbrokers

Date of Name Registration:February 1, 1996

Date Complaint Filed:February 17, 2000

Date of Commencement of Administrative

Proceeding in Accordance with Rule 2(a)

and Rule 4(c):February 25, 2000

Due Date for a Response:March 20, 2000. Respondent submitted a Response to the Complaint.

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum notified Network Solutions, Inc. (ANetwork Solutions@), the entity that is the Registrar of the Domain Name, and the Complainant that the administrative proceeding had commenced.

On February 25, 2000, Network Solutions verified that Respondent is the Registrant for the Domain Name, and that further by registering its Domain Name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name through ICANN=s Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy, pursuant to Network Solutions= Service Agreement Version 4.0.

THE COMPLAINT

1. The Complaint alleges that Camco registered the service mark ASuperpawn@ with the United States patent and Trademark Office of the United States Department of Commerce on March 9, 1999. A copy of the registration is attached to the Complaint. The copy indicates that the mark was first used in commerce on March 17, 1992 and is for APawn Shop Services in Class 36". Although Camco=s address is stated to be located in Las Vegas, Nevada, the Complaint does not state whether Camco operates a pawn shop.

2. Camco asserts that Pawnbrokers has not been commonly known as ASuperpawn@ and registration of the Domain Name was primarily for the purpose of disrupting Camco=s lawful use of the mark in a domain name and intentionally attempted, for commercial gain, to attract internet users to the web site by creating a likelihood of confusion with Camco=s mark.

THE RESPONSE

3. Pawnbrokers denies any intention to utilize it to compete with Camco, particularly in competition with Express Superpawn (the name Camco uses in trade). It further states that it will honor reasonable requests to avoid confusion. It notes that the Domain Name was registered three years prior to registration of the mark. Pawnbrokers is located in Reno, Nevada.

THE ELEMENTS OF PROOF

4. Section 4(a) of the ICANN Uniform Domain Name Dispute Policy requires the Complainant to prove each of the following three elements in order to sustain a claim that a domain name should be cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the registrant has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Section 4(b) provides:

Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] 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 [the Respondent=s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent=s] web site or other on-line location, by creating a likelihood of confusion with the complainant=s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent=s] web site or location or of a product or service on [the Respondent=s] web site or location.

REASONS FOR DECISION

5. The evidence establishes that Camco has rights in Asuper pawn@ as a service mark and that it used that mark commercially prior to registration of the Domain Name Asuperpawn.org@ by Pawnbrokers. As to Pawnbrokers= rights or legitimate interests in the Domain Name, Camco=s pleading that the Domain Name bears little or no relation to Pawnbrokers Super-Store is not specifically contested by Pawnbrokers.

6. Thus, the issue is whether the Domain Name has been registered and is being used in bad faith. There is no evidence satisfying Section 4(b)(i) of the ICANN Uniform Domain Name Dispute Policy. As to Section 4(b)(ii), there might be an inference from use of the name of an intention to prevent Camco from using the name, but the registration prior to the registration of the mark and the absence of a pattern precludes application of that section.

7. With respect to Section 4(b)(iii), there is no evidence of direct competition, and the only inference of wrongful purpose comes from registration of the Domain Name itself. Section 4(b), however, requires more. Were Section 4(b)(iii) to be interpreted to permit an inference or presumption of wrongful motive from registration of a domain name that is similar or identical to a mark, it would swallow up the other sub-parts of Section 4(b).

8. With respect to Section 4(b)(iv), there is no evidence of any attempt to attract internet users through confusion. Indeed, Camco=s over three year delay in seeking resolution of the dispute indicates that such has not occurred.

Accordingly, it is decided that the Complaint should be, and hereby is, dismissed on the merits.

Dated:New York, New York

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