Generic Top Level Domain Name (gTLD) Decisions

Complainant is Out2.com, Inc. , West Palm Beach, FL, USA ("Complainant"). Respondent is Rustom Corporation, Tripoli, Lebanon ("Respondent").

The domain names at issue are "out2travel.com" and "out2themovies.com" registered with NameSecure, Inc.

The Panelist certifies that she has acted independently and impartially and that to the best of her knowledge she 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 30, 2000; The Forum received a hard copy of the Complaint on October 30, 2000.

On November 10, 2000, NameSecure, Inc. confirmed by e-mail to the Forum that the domain names "out2travel.com", "out2themovies.com" are registered with NameSecure, Inc. and that Respondent is the current registrant of the name. NameSecure, Inc. has verified that Respondent is bound by the NameSecure, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On November 10, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 30, 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@out2travel.com, out2themovies.com by e-mail.

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 December 6, 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.

Although Respondent contacted the Forum, after the deadline for filing a response, and asserted lack of notice, Complainant replied with documents showing such notice. Although Complainant attempted to file an Amended Complaint, the Panel finds that the parties are limited to the record that was timely before the Panel. The record permits inferences that appropriate effort was made to give notice to Respondent at the addresses provided by Respondent. Respondent is required to provide correct addresses to the Registrar and if Respondent failed to do so, that does not place a higher burden on those dealing with Respondent to find it where it really is rather than where Respondent notified those dealing with it that it was located. Moreover, even if Respondent’s late-filed Response were considered, the Panel finds that Respondent failed to show in that Response that Complainant would not be entitled to the requested relief.

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

A. Complainant alleges the following:

B. Respondent failed to submit a timely response in this matter.

Complainant, Out2.com, Inc., is a Delaware corporation with its principal place of business in Florida. The OUT2 trademark was originally owned and registered by Source Information, Inc., which transferred the federally registered trademark to Complainant. Complainant’s trademark was filed with the United States Patent and Trademark Office on December 22, 1998. The OUT2 trademark has been used in the United States in interstate commerce since January of 1998. Complainant has invested substantial resources in advertising and promoting its OUT2 trademark along with a multitude of services under the trademark.

Respondent, Rustom Corporation, is located in Tripoli, Lebanon with a contact office in Delray Florida. The domain names at issue were registered January of 2000 with Name Secure.com, an agent of Rustom Corporation.

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 to 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.

Complainant established its rights to and legitimate interests in the "Out2" portion of the domain names in issue in this case. Complainant holds the registered trademark, OUT2. The Domain names in question are virtually identical to and confusingly similar to the Complainant’s mark. Policy ¶ 4.a.(i). The addition of generic words to a mark does not create a distinct new domain name and the domain names at issue are confusingly similar to Complainant’s mark because they consist of Complainant’s mark plus generic words. See Space Imaging LLC v. Brownell, AF 0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark).

The Panel finds that the domain names in issue are identical to or confusingly similar to Complainant’s registered mark.

Complainant also established its rights to and legitimate interest in the registered mark that was utilized to create the domain names in issue here. Respondent did not timely assert rights or legitimate interests in the domain names at issue. The domain names do not reflect a name by which Respondent is commonly known and Respondent has not used the domain names in connection with a bona fide offering of goods or services and has not made a legitimate noncommercial or fair use of the domain names. Policy ¶ 4(c)(i)-(iii). Conversely, the record permits the inference that Respondent has attempted to use Complainant’s registered mark for its own financial benefit by attempting to sell or rent the domain names in issue to Complainant.

The Panel concludes that Complainant had rights to and legitimate interests in the mark that was used in the domain names in issue and that Respondent has no such rights or legitimate interests with regard to the domain names. See The Boeing Company v. Nicola Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the Respondent advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and where no proper use of the domain names has been proved).

The record permits the inference that Respondent has acted in bad faith. Circumstances indicate that the domain names in question were acquired primarily for the purpose of selling, renting, or otherwise transferring the domain names to Complainant, or to a competitor of Complainant, for valuable consideration in excess of out-of-pocket expenses directly related to registration of the domain names at issue. This is evidence of bad faith. Policy ¶ 4.b.(i).

The evidence further permits the inference that Respondent acquired the domain names at issue in order to prevent Complainant from using Complainant’s mark in corresponding domain names. Some evidence exists that Respondent has engaged in a pattern of registering others’ trademarks for the purpose of financial gain for Respondent. This is evidence of bad faith. See Armstrong Holdings, Inc. v. JAZ Associates, FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4.b.(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks).

The Panel finds that Respondent registered and attempted to use the domain names in issue in bad faith.

Having established all three elements required under the ICANN Policy, the Panel concludes that Complainant is entitled to the requested relief and that it should be granted.

Accordingly, it is therefore ordered that the domain names out2travel.com and out2themovies.com be transferred from Respondent to Complainant.