Generic Top Level Domain Name (gTLD) Decisions

CPR Institute for Dispute Resolution

Before M. Scott Donahey, Chair; Hon. Sherman G. Finesilver; G. Gervaise Davis, III, Arbitrators

PROCEDURAL HISTORY

The Complaint was filed with CPR on September 25, 2000.It was deemed in compliance on September 27, 2000. The Respondent filed a Response on October 18, 2000, in which the Respondent requested a three-person panel. Following a period in which the panel selection process was followed a Panel was appointed consisting of G. Gervaise Davis, III, M. Scott Donahey, and the Hon. Sherman G. Finesilver, with M. Scott Donahey to serve as chair. The panel was appointed on November 17, 2000, pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP") and Rules promulgated by the Internet Corporation for Assigned Names and Numbers (ICANN). Upon the written submitted record including the Complaint, the Response, and the Annexes thereto, the Panel finds as follows:

FINDINGS

Respondent’s registered domain name, <ebuilder.com>, was registered with Network Solutions, Inc. on March 25, 1997. In registering the name, Respondent agreed to submit to the dispute resolution policy of Network Solutions, Inc., as it was then and as it may thereafter be modified, and thus Respondent has agreed to this forum to resolve any dispute concerning the domain names, pursuant to the modified dispute resolution policy of Network Solutions, Inc and the UDRP.

The UDRP provides, at Paragraph 4(a), that each of three findings must be made in order for a Complainant to prevail:

i. Respondent’s domain name must be identical or confusingly similar to a trademark or service mark in which complainant has rights; and

ii. Respondent has no rights or legitimate interests in respect of the domain name; and

iii. Respondent’s domain name has been registered and is being used in bad faith.

IDENTITY/CONFUSING SIMILARITY: Complainant alleges that the domain names at issue are identical or confusingly similar to E-BUILDER, a common law trademark for which Complainant allegedly began to use only three weeks prior to Respondent’s registration. Complainant has produced no evidence that Respondent was aware of such use, and Respondent has denied that it was aware of any such use. Complainant produced evidence that it had applied with the United States Patent and Trademark Office (the "USPTO") for registration of the mark E-BUILDER. This application was filed on August 8, 1997. However, while the Complaint is brought in the name of E-builder, Inc., the trademark is being prosecuted on behalf of Mercury Productions, Inc. Complaint, Annex 1. No explanation for this discrepancy is given. Morever, the Respondent has produced evidence that an opposition has been filed to the issuance of the trademark for which application has been made. Response, Annex A. Thus, the Panel is of the opinion that presently there is insufficient evidence at the present time to establish that the Complainant has rights in the trademark claimed. Readygo, Inc. v. Michael Lerner Productions, ICANN Case No. D2000-0298; EFG Bank European Financial Group SA v. Jacob Foundation, ICANN Case No. D2000-0036 (as to that part of the opinion, set out in Section 4, Factual Background, in which it was held that as the Complainant had not shown itself to be the successor to the identified owner of the trademarks, those trademarks would not be considered in reaching the decision).

Accordingly, as Complainant cannot presently establish one of the necessary three prongs for which it is plaintiff’s burden to establish, the Panel dismisses the Complaint for lack of proof, without prejudice to its reinstitution following the termination of the proceedings in the USPTO and upon proof that Complainant is the owner of the trademark for which application has been made.

The Panel is reluctant to determine any issues that are not required for a final determination of this matter. However, since the Panel’s decision does not foreclose all possibility that this complaint could be brought at some time in the future, the Panel believes that it should provide to the parties some indication of a probable ultimate resolution. Without deciding the issue of bad faith registration and use, the Panel is of the opinion that based on the evidence presently before it, the Complainant could not establish bad faith registration and use on the part of the Respondent.

CONCLUSION

In light of the findings above that Complainant has failed to establish rights in the trademark claimed, this matter is hereby dismissed without prejudice to its being recommenced following a termination of the proceedings in the USPTO and proof establishing that Complainant is the owner of the registered mark

December 5, 2000

M. Scott Donahey, Chair
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