Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Lubbock Radio Paging Service, Inc., Lubbock, TX, USA ("Complainant") represented by George McDonald. The Respondent is Venture Tele-Messaging, Lubbock, TX, USA ("Respondent").

The domain names at issue are "lubbockradiopagingservice.com" and "lubbockradiopaging.com" registered with Network Solutions.

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

Judge Ralph Yachnin, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on November 20, 2000; The Forum received a hard copy of the Complaint on November 22, 2000.

On November 29, 2000, Network Solutions confirmed by e-mail to the Forum that the domain names "lubbockradiopagingservice.com" and "lubbockradiopaging.com" are 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 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On November 30, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 20, 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@lubbockradiopagingservice.com and postmaster@lubbockradiopaging.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 December 22, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Judge Ralph Yachin, 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 Rules for Uniform Domain Name Dispute Resolution Policy (the "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 the Respondent.

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

A. Complainant

B. Respondent

The Respondent failed to submit a response in this proceeding.

Lubbock Radio Paging Service, Inc. is the trademark mark/trade name on which this Complaint is based. The Complainant, who is incorporated under that name, provides telephone answering service, paging service and equipment as well as other two-way radio communication services and equipment in connection with its mark. The Complainant first started using the "Radio Paging Service" mark in Lubbock, Texas in connection with its business during the 1960s.

Complainant has owned the domain name "lubbock-radio-paging.com" since 1997. Respondent registered both of the contested domain names on October 25, 2000.

Complainant is using its trade name in the very same city and market in which the Respondent is located and for which the Respondent is attempting to acquire business.

The Panel has reason to believe that the Respondent, Venture Tele-Messaging, is one and the same as Venture Tele-Messaging, Inc., a Texas corporation incorporated on December 1, 1999. The domains that are the subject of this complaint are connected to a website that offers sales information for Venture Tele-Messaging, Inc. and showing that its operations are in Lubbock, Texas.

Sales and advertising information for a company identified as South Plains Communications also appears on the websites that are connected to the domain names in question. This company shows an address for operations in Lubbock, Texas. The information on these domains indicates that South Plains Communications is also in the business of pagers, paging services, two-way radios, and communications.

Sales and advertising information for a company identified as Lubbock Telephone Company, Inc. d/b/a Venture Communications also appears on the websites that are the subject of this complaint. This company shows an address for operations in Lubbock, Texas. The advertising information indicates that Lubbock Telephone Company, Inc. is also in the business of selling pagers and paging services.

Complainant learned that the Respondent was using domains similar to and infringing on the Complainantís trademark/trade name from a customer of Complainant who was attempting to log on to the Complainantís website, but mistakenly typed in one of the Respondentís domains which is subject to this complaint.

The Complainant and the Respondent are in competing lines of business in the same market area.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the 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.

Complainant has common law rights in the mark LUBBOCK RADIO PAGING SERVICE given its long-term use of the mark in connection with its radio communication services. 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). Given its use of the mark over the past 40 years it is clear to the Panel that secondary association exists between the Complainantís mark and its services. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name "Julia Roberts" has sufficient secondary association with the Complainant that common law trademark rights exist).

The domain name "lubbockradiopagingservice.com" is identical to the Complainantís common law mark LUBBOCK RADIO PAGING SERVICE. See BMW AG v. Loophole, D2000-1156 (WIPO Oct 26, 2000) (finding that there "is no doubt that the domain name [bmw.org] is identical to the Complainantís well-known and registered trademarks [BMW]"). The domain name "lubbockradiopaging.com" is confusingly similar to the Complainantís common law mark since it only has eliminated the word "service" from the Complainantís mark. See Treeforms, Inc. v. Cayne Industrial Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainantís website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist)

Both parties in this proceeding are located in the same geographical area of Lubbock, Texas. While the geographic boundaries of the Internet are endless, the geographical location of the parties is significant in this domain name dispute. Given the close geographical location of the parties and the Complainantís long term use of its mark, it is more than likely that the Respondent knew of the Complainantís business and mark when registering the domain names in question. In addition, the Respondent linked the domain names to websites that advertise businesses offering similar services to those of the Complainant in the same geographic area. It is clear that the Respondent registered the domain names in order to capitalize upon the Complainantís mark. See Tuxedos By Rose v. Hector Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding no rights or legitimate interests where the Respondent registered domain names which infringed upon the Complainantís mark and had no resemblance to the Respondentís business name where Respondentís competing business was located one and a half blocks from the Complainantís business).

Registering a domain name that infringes upon anotherís mark to capitalize on the other partyís good will associated with that mark is not a bona fide use of a domain name, no matter if the use is commercial or non-commercial.

In addition, the domain names registered by the Respondent are not similar to the names of the many businesses under which the Respondent operates. The Panel concludes that the Respondent cannot claim to be commonly known by the LUBBOCK RADIO PAGING SERVICE mark.

The Panel concludes that the Respondent cannot meet any circumstance demonstrating rights in the domain names under Policy  4.c.

Respondent has submitted no evidence to negate the Complainantís claims that the domain names were registered and being used in bad faith.

The Complainant and the Respondent are in competing lines of business in the same market area. Registering a domain name in order to disrupt the business of a competitor is evidence of bad faith registration and use. Policy  4.b.(iii). See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 21, 2000) (finding Respondent acted in bad faith by attracting Internet users to website that competes with Complainantís business); Tuxedos By Rose v. Hector Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000).

Further, by using the domain, the Respondent has intentionally attempted to attract Internet users to Respondentís website, for commercial gain, by creating a likelihood of confusion between the domains registered by Respondent and the trademark/trade name and domain rightfully owned and held by Complainant. Policy  4.b.(iv). This is also evidence of bad faith registration and use. See Luck's Music Library v. Stellar Artist Management, FA95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a website that is affiliated with Respondentís services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainantís marks). The Panel concludes that the Complainant has satisfied the burden set forth under Policy  4.a.(iii).

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain names "lubbockradiopagingservice.com" and "lubbockradiopaging.com" be transferred from the Respondent to the Complainant.