Generic Top Level Domain Name (gTLD) Decisions

Complainant is Teleplace, Inc. , Boca Raton, FL ("Complainant") represented by Elizabeth L. Churchwell, Dorsey & Whitney LLP. Respondent is Eileen de Oliveira, Pembroke Pines, FL, USA ("Respondent").

The domain names at issue are teleplace.org, tele-place.com and theteleplace.com registered with Network Solutions.

The Panelist certifies that she has acted independently and impartially and to the best of 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 October 23, 2000; The Forum received a hard copy of the Complaint on October 25, 2000.

On October 20, 2000, Network Solutions confirmed by e-mail to the Forum that the domain names teleplace.org, tele-place.com and theteleplace.com are registered with Network Solutions and that 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 ICANNís UDRP.

On October 26, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 15, 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@teleplace.org, postmaster@tele-place.com, and postmaster@theteleplace.com 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 November 20, 2000, pursuant to Complainantís 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 Forumís Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from Respondent.

Complainant requests that the domain names be transferred from Respondent to Complainant.

A. Complainant alleges the following:

B. Respondent did not submit a response in this matter.

Complainant is a corporation organized under the laws of the State of Delaware, with its principle place of business in Boca Raton, Florida. Complainant has used the TELEPLACE mark in association with a variety of telecommunications and Internet infrastructure services since March 1, 1999.

Respondent registered the three domain names at issue on September 27, 2000--the same day Respondent received notice of a separate complaint filed against it by Complainant for the bad faith registration of teleplace.com and teleplace.net.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that a 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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.

Complainantís rights are evidenced by its pending trademark application with the United States Patent and Trademark Office for TELEPLACE. 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).

In addition, Complainantís rights are amplified by extensive use, advertising and publicity of the TELEPLACE mark since March 1, 1999. See Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the Complainant has common law rights in the mark "fishtech" which it has used since 1982).

The domain names at issue, teleplace.org, tele-place.com and theteleplace.com are, except for minor changes, identical to Complainantís TELEPLACE mark. Each domain name entirely incorporates Complainantís TELEPLACE mark, adding only a hyphen and the word ëthe.í Such minor changes are inconsequential to a finding that the domain names are indentical or confusingly similar. See e.g. 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 the Complainantís LOAN MART mark).

Therefore, the Panel concludes that the domain names at issue are identical to Complainantís mark.

Under the UDRP, Respondent bears the burden of proving that it has rights or a legitimate interest in the domain names at issue. Respondent has failed to demonstrate any such rights. Therefore, the Panel must determine whether Respondent has any such rights based on the evidence presented. Here, the evidence indicates that Respondent is not authorized to use the TELEPLACE mark, and is not known by the domain names at issue. Further, Respondent is not using the domain names in connection with a bona fide offering of goods or services and is using the domain names at all, either in connection with a noncommercial use or other fair use. Therefore, the Panel concludes that Respondent has no rights or legitimate interest in the domain names at issue.

Since May 1999, Respondent has registered 5 domain names, entirely incorporating Complainantís TELEPLACE mark in all of them. The three domain names at issue were registered the very day Respondent received notice of the first complaint involving the teleplace.com and teleplace.net domain names.

Under ICANN Policy, bad faith is evidenced by circumstances demonstrating that:

Here, the evidence indicates that Respondent registered the three domain names at issue in apparent retaliation to Complainantís filing of its first complaint. Such actions demonstrate a pattern of preventing Complainant from reflecting its TELEPLACE mark in corresponding domain names. See e.g. The Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that where the Respondent registered many domain names, held them hostage, and prevented the owners from using them constituted bad faith).

Therefore, the Panel concludes that Respondent registered and used the domain names at issue in bad faith.

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be granted.

Accordingly, it is ordered that the domain names teleplace.org, tele-place.com and theteleplace.com be transferred from Respondent to Complainant.