Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Gutterbolt, Inc., Port Washington, NY, USA ("Complainant") represented by John G. Tutunjian, Keusey & Tutunjian, PC. The Respondent is NYI Building Products, Inc., Great Neck, NY, USA ("Respondent").

The domain name at issue is "gutterbolt.com" registered with Register.com.

On December 21, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist. The Panelist certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 15, 2000; The Forum received a hard copy of the Complaint on November 17, 2000.

On November 11, 2000 , Register.com confirmed by e-mail to the Forum that the domain name "gutterbolt.com" is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On November 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 18, 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@gutterbolt.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.

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 the 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

1). Respondentís domain name "gutterbolt.com" is substantially identical and confusingly similar to Complainantís U.S. registered Trademark with the exception of the hyphen "-" between the words "gutter" and "bolt".

2). Respondent has no legitimate interests in the domain name given the failed product agreement between the parties.

3). It is apparent that the subject domain name "gutterbolt.com" was registered by Respondent in an effort to prevent Complainant from registering the same, and in an effort to leverage a deal whereby Complainant would be forced to buy back inventory purchased by Respondent under an unrelated contract. The letters exchanged between Complainant and Respondent clearly indicates Respondentís intention to hold Complainantís domain name in bad faith and further in an effort interfere with and disrupt Complainantís ability to do business and to use it as a tool to recoup the money they spent under a previous sales arrangement. As such, it is believed that these actions by Respondent satisfy the evidentiary requirements of Paragraphs 4(b)(i) & 4(b)(iii) of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy").

B. Respondent

The Respondent has not disputed the contentions addressed in the Complaint.

2). Complainant has been actively marketing his product with the "gutterbolt" name for the past several years.

3). Complainant filed its trademark application on April 1, 1999, and Respondentís domain name registration was created on August 9, 1999.

4). In early 1999, Respondent and Complainant had entered into a contractual sales arrangement that required Respondent to purchase minimum amounts of Complainantís gutter-bolt product on a weekly basis. The purchase of minimum weekly amounts provided the Respondent with the exclusive right to distribute the Gutter-bolt product. The contractual agreement further included a provision by which Respondentís failure to meet these minimum purchases would result in the loss of exclusivity to the Respondent. Shortly after the execution of such agreement, Respondent failed to meet the minimum purchase requirements, resulting in their loss of exclusivity and the agreement being voided. Thereafter, Respondent registered the subject domain name "gutterbolt.com" in August 1999.

5.) Based on copies of telephone and written correspondence provided to the Panel, it is clear that Complainantís representative made several attempts by mail and in person to amicably resolve this matter with Respondent, to no avail. In this correspondence, Complainant offered to reimburse Respondent for its out of pocket expenses in obtaining the registration of the subject domain name. Respondent responded to Complainantís Representative by a letter dated October 2, 2000 indicating its willingness to execute a domain name transfer if Complainant re-purchased the previously sold product to Respondent. The Respondent has requested approximately $49,000.00 dollars from Complainant for the Respondentís existing inventory previously purchased from Complainant under the aforementioned contract. Subsequent attempts by Complainantís representative to discuss and resolve this matter with Respondent were made to no avail.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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." The Respondent has not submitted any answer to the Panel. Based on Rule 15(a), the Panel will decide this dispute based solely upon the Complainantís submission, ICANN Rules and Policy, and other applicable principles of law.

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.

Respondentís domain name "gutterbolt.com" is substantially identical to Complainantís registered trademark with the exception of the hyphen between the words "gutter" and "bolt". Otherwise, Respondentís domain name is confusingly similar to Complainantís registered trademark. The domain name is phonetically identical to Complainantís registered trademark, and as such, could easily confuse the consumer public when they seek the Complainantís Internet website in an effort to purchase Complainantís Gutter-bolt product. See The Ritz-Carlton Hotel Co. v. Club Car Executive Transportation and Dennis Rooney, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark).

Complainant asserts that Respondent has no rights or legitimate interests in the domain name. Respondent does not deny this assertion.

Given the purchase agreement between Complainant and Respondent, Respondent was clearly aware of Complainantís prior use of the product name "gutter-bolt" at the time of this domain registration.

Respondent is not commonly known by the domain name in question nor is the Respondent using the domain name in a commercial or non-commercial endeavor. Policy  4.c. In fact, it is clear that the Respondent registered the domain name with no legitimate plans to use the domain name. Rather, the Respondent registered the domain name purposefully, with knowledge of the Complainantís mark, to use the domain name as a bargaining tool to recover lost expenses associated with a failed business attempt. This is not a legitimate interest in the domain name nor does the failed contract between the parties give the Respondent rights in the domain name. See Cruzeiro Licenciamentos Ltda v. Sallen and Sallen Enterprises, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).

Complainant asserts that Respondent registered and used the domain name in bad faith. The Respondent has not denied this assertion.

It is apparent to the Panel that the Respondent registered the domain name in order to retaliate against the Complainant for the failed purchase agreement between the Complainant and Respondent.

Bad faith is revealed in the Respondentís offer to transfer the domain name in return for reimbursement of the cost of the merchandise that was purchased by the Respondent according to the purchase agreement with the Complainant. The Respondent purchased approximately $49,000 worth of material from the Complainant. Registering a domain name in order to extract valuable consideration (that is in excess of out of pocket costs associated with the domain name) from the Complainant in return for the domain name is evidence of bad faith registration and use under Policy  4.b.(i). The demanded consideration does not have to be monetary in nature but can be anything of value that exceeds the amount spent in registering and maintaining the domain name. See Metallica v. Schnieder, FA 95636 (Nat. Arb. Forum Oct. 18, 2000) (finding bad faith based on Policy  4.b.(i) where the Respondent offered to transfer the domain name if the Complainant met with the Respondent, called two of his friends, and granted the Respondent on interview). The Respondentís attempt to use the domain name as a bargaining tool in order to receive compensation for a failed business attempt is evidence of bad faith registration and use. See Labrada Bodybuilding Nutrition, Inc. v. Garrett, FA 94293 (Nat. Arb. Forum Apr. 27, 2000) (finding bad faith where Respondent registered the domain names six months after Respondentís distributor agreement with Complainant was terminated).

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 name, "gutterbolt.com", be transferred from the Respondent to the Complainant.