Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Wombat Enterprises, Inc., d/b/a Domain-It! , Cincinnati, OH, USA ("Complainant") represented by Alan S. Fershtman, Keating, Muething & Klekamp, P.L.L. The Respondent is Advanced Network Technologies, Salem, OR, USA ("Respondent").

The domain name at issue is 123-domainit.com registered with Tucows.

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.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 17, 2000; The Forum received a hard copy of the Complaint on October 13, 2000.

On October 20, 2000, Tucows confirmed by e-mail to the Forum that the domain name 123-domainit.com is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On October 20, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 9, 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 Respondentís registration as technical, administrative and billing contacts, and to postmaster@123-domainit.com by e-mail. Respondent submitted a Response on November 13, 2000, four days late and without an explanation for the delay or a request for extension of time. Accordingly, the Response is not in compliance with ICANN Rule #5 and will not be considered.

Having received no timely 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 14, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody 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 timely submitted and in accordance with the ICANN Policy, ICANN Rules, the Forumís Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of reference to any Response from the Respondent.

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

A. Complainant

Complainant alleges the following:

B. Respondent

Respondent did not submit a timely response in this matter.

Complainant, doing business as DOMAIN-IT!, holds a federal service mark registration for DOMAIN IT, and operates several web sites associated with its domain name registration service. Complainant began doing business as DOMAIN-IT! in 1996. Respondent registered the domain name 123-domainit.com on February 23, 2000. Complainant received its federal service mark registration on August 22, 2000. Both Respondent and Complainant are in the domain name registration business.

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.

Complainant holds a federal service mark registration for DOMAIN IT!, and has continually done business under the DOMAIN IT! mark since 1996. Complainant has rights within the meaning of the ICANN Policy. See Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-00400 (WIPO Mar. 23, 2000) (finding that the domain name was identical or confusingly similar to the complainantís pending service mark application).

The domain name 123-domainit.com is confusingly similar to Complainantís DOMAIN IT! mark. Respondent has registered a domain which entirely incorporates Complainantís mark, adding a hyphen and the numbers "123." These additions will not defeat a finding of confusing similarity. See InfoSpace.com v. Tenenbaum Ofer, WIPO Case No. D2000-0075 ("The domain name "info-space.com" is identical to Complainantís INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features").

The ICANN Policy affords Respondent ample opportunity to demonstrate rights or legitimate interest in the domain name 123-domainit.com. Respondent has failed to do so; therefore this panel may conclude that Respondent has no such rights. See Hewlett Packard Co. v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondentís failure to offer any evidence permits the inference that the use of the Complainantís mark in connection with the Respondentís website is misleading and Respondent is intentionally diverting business from the Complainant).

Notably, Respondent is not commonly known by the domain name in question. Instead, Respondentís domain name registration services are commonly known as "A-Nett" and a-nett.com. However, Respondent uses Complainantís DOMAIN IT! mark to link to its own competing web site. Respondent is using Complainantís mark and the goodwill associated with the DOMAIN IT! mark to reap unsown benefits. Such action is inconsistent with a finding that Respondent has rights or a legitimate interest in the domain name 123-domainit.com.

Respondentís registration of the domain name 123-domainit.com long after Complainant began doing business under the DOMAIN IT! mark indicates registration in bad faith. See Dr. Karl Albrecht v. Eric Natale FA 95465 (Nat. Arb. Forum Sept. 16, 2000) ("The Respondent intentionally registered a domain name which uses the Complainantís name. There is no reasonable possibility that the name karlalbrecht.com was selected at random.")

Additionally, Respondentís use of Complainantís mark to compete with Complainantís business indicates use in bad faith. See America Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, D2000-0809 (WIPO Sept. 6, 2000) (finding that "gameicq.com" and "gameicq.net" are obviously connected with services provided with the world-wide business of ICQ and the very use by someone with no connection with the product suggests opportunistic bad faith).

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 123-domainit.com be transferred from the Respondent to the Complainant.