Generic Top Level Domain Name (gTLD) Decisions

The Complainant is DJF Associates, Inc., Duluth, GA, USA ("Complainant") represented by Carl M Davis II, Dorian B. Kennedy, Esq. The Respondent is Kieren McCobb, Milltown, NJ, USA ("Respondent").

The domain name at issue is teleconfusionremoval.net 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 Harold Kalina (Ret.) as Panelist.

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.net 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 3, 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@teleconfusionremoval.net 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 October 31, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Harold Kalina (Ret.) 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.

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 did not reply to Complainant’s contentions.

This is the companion case to FA 95612, DJF Associates, Inc. v. AIB Communications. It is believed by the Panel that the Respondent in this case is affiliated with AIB Communications, the Respondent in FA 95612.

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. The Complainant also has had common law rights in the above mark.

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

On November 17, 1998, the Complainant’s counsel sent 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 use of the mark. The Complainant rejected the settlement offer because it allowed for the Respondent’s continuance of the mark.

As a result of the Respondent’s failure to comply with the aspects of ICANN Policy, the Panel will make reasonable assumptions based on the Complaint. Rules ¶ 14, 15.

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 contends that the violating domain name is confusingly similar with 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). The domain name in question is confusingly similar with the Complainant’s mark. See General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term "direct" on to the Complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the Complainant, and thus the Respondent’s domain names are confusingly similar).

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.

The Respondent has not denied the Complainant’s assertion that the Respondent has no rights in the violating domain name. This Panel holds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has rights or legitimate interests in the contested domain name. The Respondent is not commonly known by the domain name and has not used the domain name in connection with a bona fide offering of noncommercial or commercial goods and services. Policy ¶ 4.c. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess).

The Complainant contends that use of the mark in the violating 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). It is clear to the Panel that the Respondent chose the domain name in question in order to confuse internet users and attract them to its competing website for its commercial gain. See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users through to Respondent’s competing business). The Respondent’s failure to respond only enhances the Panel’s determination that the Respondent knew it was attracting internet users to its site in bad faith.

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 identical services. 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, in the Panel’s view, 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)). The Panel concludes that the domain name was registered and used in bad faith as a result of the above arguments.

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, "TELECONFUSIONREMOVAL.NET", be transferred from the Respondent to the Complainant.