Generic Top Level Domain Name (gTLD) Decisions

The Complainant is TeachMeNow, Inc., Seattle, WA, USA ("Complainant") represented by Robert Tichelman. The Respondent is General Physics Corporation, Columbia, MD ("Respondent") represented by Janice W. Housey, Piper Marbury Rudnick & Wolfe.

The domain names at issue are "showmenow.com" and "teachmenow.com", registered with Network Solutions.

The undersigned 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 Paul A. Dorf (Ret.) as Panelist.

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

A. Complainant

The Complainant contends that the domain names that are the subject of this Complaint are identical or confusingly similar to the Complainant's trademarks; that the Complainant or its former employee Robert Ferguson had any rights or legitimate interest in the Domain names; and that the Domain Names were registered/transferred in bad faith.

B. Respondent

The Respondent contends that the Complainant's president and founder, Robert Tichelman, was an employee of the Respondent at the time the domain names were registered; that at the time of Mr. Tichelman's termination of employment, he was obligated to assign any IP rights to General Physics. It is also the Respondent's contention that the Complainant is using this proceeding to convert General Physics' property for its own use.

The Complainant is an internet startup company whose President is Robert Tichelman.

The Respondent is one of the world's largest workforce development companies and a global leader in technical and soft skills training. They are engaged in the business of developing training programs for their clients.

Mr. Tichelman and Robert Ferguson were employed by the Respondent's subsidiary, General Physics Canada, Ltd., along with Bruce Hewer, who is now employed by Complainant’s company. These gentlemen were responsible for development of an e-training/e-learning initiative as part of their duties.

Mr. Ferguson terminated his employment with the Respondent in June, 1999. Mr. Tichelman terminated his employment effective January 31, 2000. As evidenced by Respondent's Employment Agreement, all employees were obligated to assign any IP rights to the Respondent.

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 Respondent does not offer any evidence to dispute this element.

In July, 1998, while employed by the Respondent, Mr. Ferguson registered the disputed domain names on Respondent's behalf as part of an initiative that Mr. Ferguson, Mr. Tichelman and Mr. Hewer were working on. See DFJ Associates, Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of dispute).

As a matter of convenience, he registered the domain names and paid for the registration using his personal credit card on-line. The Respondent's host services were noted on the NSI registration forms. He was reimbursed for these charges by the Respondent.

The Complainant’s founder, Mr. Tichelman, was also employed by the Respondent at the time of the registration, and was aware of the registration, as he was the one who approved Mr. Ferguson's reimbursement request.

At the time of Mr. Ferguson's termination, Mr. Tichelman demanded that Mr. Ferguson transfer the domain names to him. Mr. Ferguson did not do so, and in fact transferred the domain names to the Respondent in October, 2000.

According to the Respondent's Confidential Information and Property Agreement, Complainant would have no rights to the disputed domain names, since they were created as part of his duties while employed by the Respondent.

Even though the Complainant has filed trademark applications for TeachMeNow and ShowMeNow, these applications were filed almost two years after the domain names were registered on behalf of the Respondent, and the Complainant had knowledge that these names were being used by the Respondent.

As the domain names were registered on behalf of the Respondent by one of its employees, for their use, they are not deemed to have been registered in bad faith.

As Complainant held no trademarks reflecting the domain names at the time of their registration, the Complainant has not been deprived of its right to reflect that mark in a domain name. See Loris Azzaro BV, SARL v. Asterix and Mr De Vasconcellos, D2000-0608 (WIPO Sept. 8, 2000) (refusing to transfer the domain name where "Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence)