Generic Top Level Domain Name (gTLD) Decisions

P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com

The Universal Gift Certificate Company, LLC

COMPLAINANT,

Vs.

Alexico Healthcare Resources, Inc.

RESPONDENT.

DECISION
Forum File No.: FA0003000094318

__________________________________

The above entitled matter came on for an administrative hearing on April 25, 2000 before the undersigned on the Complaint of The Universal Gift Certificate Company, LLC, hereinafter referred to as "Complainant", against Alexico Healthcare Resources, Inc., hereinafter referred to as "Respondent". Complainant was represented by The Silicon Valley Law Group, Robert M. Vantress, Esq. And Sheila M. Leunig, Esq., 152 North Third Street, Suite 900, San Jose, California, 95112. There was no representation on behalf of the Respondent. Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name: UniversalGiftCertificate.com

Domain Name Registrar: Internet Domain Registrars

Domain Name Registrant: Alexico Healthcare Resources, Inc.

Date of Domain Name Registration: December 24, 1999

Date Complaint Filed: March 13, 2000

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a) and Rule 4(c): March 17, 2000

Due date for a Response: April 10, 2000. Respondent did not submit a Response to the Complaint.

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on March 17, 2000 in compliance with 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), the Forum immediately notified Internet Domain Registrars, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent did not submit a response to The Forum within twenty (20) days pursuant to Rule 5(a).

On December 24, 1999, Respondent registered the domain name "UniversalGiftCertificate.com" with Internet Domain Registrars, the entity that is the Registrar of the domain name. By registering its domain name with Internet Domain Registrars, Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution and the Uniform Domain Name Dispute Resolution Policy.

Any reference to "Rule" or "Rules" are to ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy as supplemented by the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy.

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

FINDINGS OF FACT

Complainant is the owner of the common law trademark and servicemark, "Universal GiftCertificate". This trademark/servicemark has been in continuous interstate commercial use since July of 1999 and an application for federal servicemark registration of the mark was made on June 11, 1999. That application is pending before the United States Patent and Trademark Office.

Complainant uses the mark in connection with the sale of a credit card sized gift certificate that can be used for purchasing on and off line with regard to goods or services by any entity that accepts the American Express card. Complainant has invested substantial time and resources into the development of its business since its inception in May of 1999.

Complainant has promoted its goods and services through a website, www.universalgiftcert.com. Complainant also owns several domain names that relate to its current business and which are similar to the domain name at issue. They include:

UniversalGiftCerts.com

UniversalGCertificate.com

UniversalGCertificates.com

UniversalGiftCertificate.net

UniversalGiftCertificates.net

UniversalGiftCertificate.org

UniversalGiftCertificates.org

TheUniversalGiftCertificate.com

UniversalGiftCertificates.com

Sometime prior to January 25, 2000 the number of characters allowed for domain name registrations was extended and Complainant attempted to register its servicemark as a domain name taking advantage of the extended number of characters permitted and became aware that Respondent had registered the domain name in controversy on December 24, 1999 through IDR.

Complainant, through its counsel, attempted to contact Respondent using the names and telephone number provided in the contact information provided during the domain name registration and were unsuccessful because the telephone number was unlisted and no new telephone number could be determined through the 411 operator. In addition the administrative contacts, A. Melvin Alexander and Janet Sloane were unable to be located.

On February 1, 2000 a letter was sent to Respondent on Complainant’s behalf advising of the conflict. On February 8, 2000 a second letter was sent to Respondent.

On or about February 10, 2000 one Dr. A. Melvin Alexander contacted by telephone the Silicon Valley Law Group. He was informed of Complainant’s claim and advised that he was unsure in what manner the domain name would be utilized by Respondent and that no website was under development by Respondent for use of the domain name.

On February 17, 2000 Dr. Alexander left a voice mail indicating that he had contacted counsel and would respond in writing. On February 23, 2000 a third letter was sent to Respondent on Complainant’s behalf and on February 24, 2000 a written response was received in which Respondent advised it was willing to sell the disputed domain name for $62,500.

Complainant now owns the following domain names that are relevant to its trade and servicemark:

www.UniversalGiftCertificate.net

www.UniversalGiftCertificates.net

www.UniversalGiftCertificate.org

www.UniversalGiftCertificates.org

www.TheUniversalGiftCertificate.com

www.UniversalGiftCertificates.com

CONCLUSIONS

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions.

1. The domain name UniversalGiftCertificate.com is substantially identical to Complainant’s trade and service mark, Universal GiftCertificate. It is nearly identical to domain names registered to Complainant. Respondent has no right or legitimate interest to the domain name UniversalGiftCertificate.com.

2. Respondent registered and used the domain name UniversalGiftCertificate.com in bad faith. Evidence of the registration of the domain name in bad faith is as follows:

a. Respondent’s contact information provided during the domain name registration was incorrect.

b. Respondent has not made any effort to establish a website utilizing the domain name.

c. Respondent has not evidenced any intent to use the domain name in a commercial manner that would not be competitive with Complainant’s business.

d. Respondent attempted the sale of the domain name to Complainant for a price of $62,000, a price well above any out-of-pocket costs Respondent expended to register the domain name. Respondent has failed to substantiate a basis for the asking price.

DECISION

Based upon the findings and conclusions, it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME UNIVERSALGIFTCERTIFICATE.COM REGISTERED BY RESPONDENT, ALEXICO HEALTHCARE RESOURCES, INC. BE TRANSFERRED TO COMPLAINANT, THE UNIVERSAL GIFT CERTIFICATE COMPANY, LLC.

Dated: April 25, 2000, Edmund P. Karem, (Ret. Ky. Circuit Court Judge), Arbitrator

______________________________

Honorable Edmund P. Karem