Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Cass Information Systems, Inc., Bridgeton, MO, USA ("Complainant") represented by Daniel R. Woodruff, Armstrong, Teasdale LLP. The Respondent is S. Anthony Sizemore, Suwanee, GA, USA ("Respondent").

The domain name at issue is "ratemaker.com" registered with Network Solutions.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

The Panelist is The Honorable Richard DiSalle.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on November 1, 2000; the Forum received a hard copy of the Complaint on November 2, 2000.

On November 2, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name "ratemaker.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On November 2, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 22, 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@ratemaker.com by e-mail.

On November 30, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed The Honorable Richard DiSalle as Panelist.

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

A. Complainant

On February 24, 1998, Complainant registered the trademark "Ratemaker" with the United States Patent and Trademark Office. The Complainant has continuously used the mark "Ratemaker" in connection with its products and services since 1979, and over the years, this mark has acquired substantial goodwill and recognition in connection with Complainant’s freight bill payment, audit and rating services.

On January 19, 1999, Respondent registered with Network Solutions for the domain name "www.ratemaker.com." Although Respondent claims that he intended to use the domain name for financial services in the mortgage lending area, Respondent does not have a site at this URL and has not used this site since its registration in January of 1999.

The domain name is identical to Complainant’s trademark "Ratemaker" and the Respondent has no legitimate interest in the domain name.

Counsel for Complainant wrote to Respondent on March 21, 2000, demanding that Respondent immediately transfer all rights and ownership in the domain name ratemaker.com to Complainant. At that time, Complainant offered to compensate Respondent for reasonable, documented out-of-pocket costs related directly to the transfer and replacement of the domain name, up to $200.

Respondent replied, stating, inter alia, that his "intended" use of the domain name was in a completely different industry and commercial use — mortgage lending. Respondent also replied that his business model "has been under planning and construction for several years now." Respondent indicated that he wished to resolve the matter amicably and quickly and suggested that "perhaps we should determine to whom the domain name is most valuable and should your client be willing to make a purchase offer that reflects such value, I will certainly entertain it."

By letter dated May 3, 2000, Respondent stated to Complainant’s counsel that "this letter should not be construed as a solicitation to purchase any domain name." Nonetheless, Respondent attached to that letter a list of domain name registered sales that had occurred recently, reflecting selling prices as high as $7,500,000, $5,000,000, and $2,000,000.

Several months later, on June 21, 2000, Respondent had a telephone conversation with Complainant’s counsel in which Respondent offered to sell the domain name to the Complainant for $144,000, which offer was rejected by the Complainant as an absurd and "brazen attempt to exact an unreasonable sum of money for a domain name which is rightfully owned by Cass."

Respondent maintains that he was engaging in preparations, research, development and conceptual and business model planning for the creation of the ratemaker.com web site "even before Respondent registered the domain name." Prior to receiving the letter from Complainant’s counsel dated March 21, 2000, Respondent had no knowledge of Cass Information Systems, its trademarks, customers and use of the term "Ratemaker," and therefore cannot be liabel for bad faith.

Respondent claims that he has never offered to sell or transfer for other valuable consideration the domain name to Complainant, and that Complainant’s counsel contacted him between March and June of 2000 in an attempt to harass and frighten him into selling the domain name.

Respondent provided a list of domain name sales to Complainant’s counsel simply as a "courtesy communication" to assist the Complainant in determining the general value of domain names. Accordingly, there is no basis for Complainant’s allegation of bad faith.

The Respondent’s use of the domain name ratemaker.com will not cause confusion, mistake or deception, since Respondent is in a completely different business than the Complainant and Respondent’s customers would have no connection with the Complainant.

The domain name ratemaker.com is identical and confusingly similar to Complainant’s previously registered trademark [see Discussion, infra].

The Respondent does not maintain an active website associated with the domain name and has not used or developed this site since its registration in January of 1999. Accordingly, the Respondent has no rights or legitimate interests in the domain name [see Discussion, infra].

The domain name has been registered and is being used in bad faith. Upon learning of the existence of Complainant’s previously registered trademark, information which was readily available to Respondent when he registered the domain name, the Respondent proceeded to engage in a pattern of attempts to offer the domain name for sale for valuable consideration in excess of out-of-pocket costs connected with the domain name. Policy ¶ 4.b.(i) [see Discussion, infra].

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:

(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 domain name ratemaker.com is identical and confusingly similar to Complainant’s previously registered trademark. Respondent does not dispute that the domain name is identical to Complainant’s trademark. See Hormel Foods Corp. and Hormel Foods, LLC v. Spotted Cow Media, FA 95067 (Nat. Arb. Forum July 31, 2000) (finding that the domain name "kidskitchen.com" is identical to the complainant’s trademark KIDSKITCHEN).

The Respondent does not maintain an active website associated with the domain name and has not used or developed this site since its registration in January of 1999. Passive holding of a domain name is evidence of no rights in the domain name and bad faith registration and use. See Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that the Respondents have not established any rights or legitimate interests in the said domain name); Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith").

Once Respondent learned that Complainant held a duly registered trademark in the "Ratemaker" name, the Respondent engaged in a pattern of offering the domain name for sale for valuable consideration in excess of out-of-pocket costs connected with the domain name. Policy ¶ 4.b.(i). Respondent proposed, in effect, that the domain name go to the highest bidder when he told Complainant’s counsel that "perhaps we should determine to whom the domain name is most valuable. . . ." He even sent Complainant’s counsel a listing of domain name sales which reflected sale prices as high as $7,500,000. These actions create a strong impression that this domain name was for sale and justifies a finding of bad faith on the part of the Respondent. See The Avenue, Inc. & United Retail Inc. v. Guirguis, D2000-0013 (WIPO Mar. 19, 2000) (finding bad faith where the Respondent informed the Complainant of the intent to form a business in the same field as the Complainant, but at the same time, offered the domain name for sale to the Complainant); Southern Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (finding that the Respondent violated Policy ¶ 4(b)(i), by indicating to Complainant that he would "consider a cash offer", invited Complainant to "submit an opening cash or stock offer", and failed to reply to Complainant’s offer); Cruzeiro Licenciamentos Ltda v. Sallen and Sallen Enterprises, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).

In addition, it is not disputed that Complainant registered the Trademark "Ratemaker" with the United States Patent and Trademark Office on February 24, 1998, nearly one year before Respondent registered the domain name. Complainant’s Trademark registration was publicly filed and readily available for inspection by Respondent at the time he registered the domain name. In fact, when Respondent registered the domain name with Network Solutions and agreed to be bound by ICANN’s Uniform Domain Name Dispute Resolution Policy, Respondent represented and warranted that, to his knowledge, the registration of the domain name "will not infringe upon or otherwise violate the rights of any third party." (Policy ¶ 2) The Policy also provides that it is the responsibility of the registrant "to determine whether your domain name registration infringes or violates someone else’s rights."

(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.

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows: THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "ratemaker.com," registered by Respondent, be transferred to Complainant.