Generic Top Level Domain Name (gTLD) Decisions

The Complainant is TelePlace, Inc. , Boca Raton, FL, USA ("Complainant") represented by Elizabeth L Churchwell, Dorsey & Whitney LLP. The Respondent is TriStar Marketing Group Inc., Pembroke Pines, FL, USA ("Respondent").

The domain names at issue are teleplace.com and teleplace.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.

Honorable Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 26, 2000; The Forum received a hard copy of the Complaint on September 25, 2000.

On September 27, 2000, Network Solutions confirmed by e-mail to the Forum that the domain names teleplace.com and teleplace.net are 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 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 17, 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@teleplace.com and postmaster@teleplace.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 24, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carolyn Marks Johnson 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 names be transferred from the Respondent to the Complainant.

A. Complainant

B. Respondent

Respondent did not submit a response in this matter.

Complainant is the owner of a federally registered service mark for "TelePlace." Complainant has used the mark in commerce continuously since December 1999. On May 10, 1999, pursuant to Complainant’s request, Respondent registered the domain names at issue. However, instead of registering the domain names in Complainant’s name, Respondent registered the domain names under his own company name, TriStar Marketing Group, Inc. Respondent has refused to transfer the domain names to Complainant, except for fee which Complainant claims to be exorbitant.

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 names teleplace.com and teleplace.net are identical to Complainant’s federally registered "TelePlace" service 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 United States Patent and Trademark Office).

While Complainant’s trademark rights in "TelePlace" are relatively new, the UDRP does not require longstanding rights in order to state a valid claim. All that is required is that "your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights." ICANN Policy ¶ 4(a)(i). (emphasis added). Clearly, the ICANN dispute resolution policy is "broad in scope" in that "the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice" to support a domain name complaint under the policy. McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000) (emphasis in original).

Here, Complainant, has a registered service mark. In addition, the fact that Complainant’s rights in the registered mark arose after Respondent registered the domain name is not necessarily fatal to Complainant’s claim. The ICANN Policy does not require that a Complainant’s rights be in existence before Respondent’s registration, it merely requires a Complainant to demonstrate that it ‘has rights.’ See ICANN Policy ¶ 4(a)(i). Therefore, this panel finds that Complainant has satisfied the first element under the ICANN POLICY.

Paragraph 4(c) of the Policy informs a Respondent that, without limitation, he may demonstrate that he has rights to and a legitimate interest in a domain name for purposes of Paragraph 4(a)(ii), as follows:

Respondent has made no such showing.

The evidence indicates that Respondent was retained by Complainant to register the domain names for a fee. While Respondent did in fact register the domain names, he registered the domain names in his own name and then afterward attempted to transfer the names to Complainant for a fee. See Cree, Inc. v. The Domain Name You Have Entered is For Sale, FA 94790 (Nat. Arb. Forum May 24, 2000) (finding bad faith where the Respondent purchased the domain names on the date of the Complainant’s press release regarding a merger and business expansion and offered them for sale to Complainant). Therefore, this panel finds that the domain names were registered and are being used in bad faith.

Having established all three elements required by the ICANN Policy, it is the decision of this panel that the requested relief be granted.

Accordingly, it is ordered that the domain names teleplace.com and teleplace.net be transferred from the Respondent to the Complainant.