Generic Top Level Domain Name (gTLD) Decisions

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

The undersigned 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.

The Honorable Paul A. Dorf (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 19, 2000; The Forum received a hard copy of the Complaint on September 19, 2000.

On September 21, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name effectivenesscenter.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has veri fied 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 21, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 11, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Re spondent 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@effectivenesscenter.com by e-mail.

On October 16, 2000, the Complainant filed a Rebuttal to the Respondent’s Response. This Rebuttal was reviewed and considered in this Arbitrator’s Decision.

On October 18, 2000, the Respondent submitted an additional Response. This was also reviewed and considered in the Arbitrator’s Decision.

On October 19, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

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

A. Complainant

The Complainant states that the Respondent worked as an independent contractor for Complainant, was aware that the Complainant had chosen and begun using "Effectiveness Center" as the servicemark under which its on-line retail stores operated. It is th eir contention that the Respondent registered the domain name knowing that it was identical or confusingly similar to their servicemark, had no rights or legitimate interests in the domain name, and registered the domain name in bad faith.

B. Respondent

The Respondent states that while working as an independent contractor for the Complainant, the project now referred to as the Franklin Covey Effectiveness Center underwent many name changes. The Respondent also contends that the term "Effectiveness Cen ter" was not a famous mark and that he did not register the domain name in bad faith.

As stated above, the Respondent worked as an independent contractor for the Complainant in several capacities. He worked on a team that was developing "intra" stores for the Complainant, and attended meetings and focus groups on the construction an d use of these "intra" stores. One of the topics covered by the focus groups was the selection of a designation or name under which these stores would be operated. One of the marks considered was "Effectiveness Center" and as an assistant to the team Resp ondent was aware that this designation could conceivably become the Complainant’s servicemark for these "intra" stores.

In July, 1999, the team had adopted the designation "Effectiveness Center" to identify the "intra" stores. The Complainant began preparing advertising and other material featuring the servicemark and by late July, 1999, the Complainant began to offer r etail services using the servicemark and icon on at least one of their intranet websites.

The Respondent registered the domain name on September 27, 1999, approximately two months after the Complainant placed the servicemark in use. At that time, the Respondent was aware of the Complainant’s use of "Effectiveness Center" as its servicemark.

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 registered by the Respondent "effectivenesscenter.com" is identical to the Complainant’s servicemark "Effectiveness Center" with the exception of the ".com." It is not unreasonable to assume that this would create confusion if a con sumer were looking for the Complainant’s web site. See Dollar Financial Group, Inc. v. Advanced Legal Systems, Inc., FA 95102 (Nat. Arb. Forum Aug. 14, 2000) (finding that the domain name <loan-mart.com> is confusingly similar to t he Complainant’s mark).

The Complainant began using the mark in commerce prior to the Respondent's domain name registration. Further, Complainant applied for trademark registration for the "Effectiveness Center" mark. See Symplicity Corporation v. Bob Gately, D2000 -0425 (WIPO July 12, 2000) (finding that the domain name at issue <symplicity.com> is identical to the mark in which the Complainant has common law rights acquired through use and for which Complainant has applied for registration with the Un ited States Patent and Trademark Office).

The Respondent was aware that the Complainant intended to use the servicemark "Effectiveness Center" as he was working as an independent contractor for the Complainant on the "Effectiveness Center" team. See 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).