Generic Top Level Domain Name (gTLD) Decisions

Safway Steel Products, Inc.
COMPLAINANT,

vs.

Café Au Lait
RESPONDENT.

DECISION
Forum File No: FA94631

This is a domain name dispute. Administrative proceedings were conducted pursuant to the ICANN Uniform Name Dispute Resolution Policy (Policy) and Rules for Uniform Domain Name Dispute Resolution Policy (Rules). James A. Crary was selected to serve as the sole administrative panelist.

PROCEDURAL FINDINGS

Domain Name: safway.net

Domain Name Registrar: Network Solutions, Inc.

Date of Domain Name Registration: March 13, 2000

Date Administrative Proceeding Commenced: April 21, 2000

Date Response Due: May 11, 2000. (No Response Filed.)

Relief Requested by Complainant; transfer of safeway.net to the Complainant

THE COMPLAINT

       Respondent maintained that registration of safway.net domain name, was an abusive registration under the Policy. The safway.net domain name is identical to the SAFWAY trademark. Respondent chose to use the same unique spelling as was adopted in the trademark omitting the “e” normally found in the word “safe”.

       Safway is a company, which engages in the manufacture and installation of scaffolding, rolling towers, bleachers, outrigger systems and mechanical lifts. The Safway mark has been in use in commerce since the mid 1930’s. Complainant is one of the largest companies in its field. In addition to its trademark, SAFWAY, Complainant owns numerous patents for products it offers under the Safway mark. Annually the Complainant spends three to five million dollars on advertising and other media in connection with its business. The SAFWAY mark has become a

well known nationwide mark.

            The Complainant asserts that the Respondent is using the safway.net domain name in connection with a pornographic website, thereby tarnishing it’s trademark and causing confusion among Safway customers seeking to find Safway products and services.

          The Complainant owns and uses the domain name safway.com in connection with its business on the internet. Complainant believed it was likely that customers would query the safway.net domain name in an attempt to search for the Safway website and thus be misdirected to Respondent’s pornography website.

          The Complainant maintained that Respondent did not offer goods or services under the Safway name and as such could not claim a legitimate trademark right in the domain name. Respondent’s website contains other copyrighted notices but nowhere contains any indication or use of Safway as a mark or trademark.

          As a result, Respondent cannot claim a legitimate right to the domain name. Even if Respondent began using safway.net as a mark or trade name, whatever rights Respondent might have would be subservient to the legitimate trademark rights of Complainant under Federal Law.

          The Complainant maintained the registration was in bad faith. The Respondent was a party to a prior domain name dispute resolution proceeding with the Complainant. Complainant invoked the then existing domain dame dispute resolution procedures with regard to the use of safway.net. As a result of that proceeding, the safway.net domain name was placed on hold.

In connection with the implementation of ICANN’s Uniform Domain Name Dispute Resolution Policy, Network Solutions, Inc. removed the hold status from safway.net domain name at which time Respondent reregistered the domain name on March 13, 2000.

          Complainant attempted to contact Respondent after the second registration of safway.net. Through it’s attorneys correspondence was sent by Federal Express to the addresses listed by Respondent. Federal Express was unable to deliver the correspondence to the addresses listed by the Respondent. Complainant assumed that Respondent had either refused delivery of Safway’s correspondent or had provided incorrect address information to Network Solutions, Inc. in violation of Network Solutions, Inc. service agreement. It was also maintained Respondent violated the service agreement because of the prior proceedings which put safway.net on hold. Respondent was not in a position to represent or warrant that the disputed domain name would not infringe on the legal intellectual property rights of Complainant.

          The Complainant asked that the safway.net domain name be transferred to Complainant.

DISCUSSION

The Panel was satisfied that the Forum took all steps necessary to notify Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Forum. The Complainant was served by mail, ­E-mail, and fax on the party designated as administrative contact for the Respondent. It was concluded Respondent had notice of the complaint and the commencement of proceedings.

            According to the Policy section 4(a), to be entitled to cancellation or transfer of a domain name, the Complainant must prove the disputed domain name:

(1) Is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

(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.

          In those cases where there is no response filed to the complaint, the Rules at 5(e) and 14(a) provide that the Panel may proceed to decision based on the complaint, except in cases where there are exceptional circumstances.

          Rule 14(b), that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. There were no exceptional circumstances which are known to exist in this case and therefore the Panel proceeded to decision based upon the complaint.

FINDINGS OF FACT

1. That Complainant is the owner of the SAFWAY trademark, which it has used nationally and continuously since the mid 1930’s. Complainant owns numerous patents for the products it offers under the SAFWAY mark.

2. That the Complainant has invested substantial sums of money in connection with the development of its mark and business enterprises.

3. The Respondent registered the domain name safway.net and has no rights or legitimate interests in respect to said domain name.

4. The Respondent is not engaged in the scaffolding shoring or concrete form business nor does it manufacture scaffolding, rolling towers bleachers, or outrigger systems.

5. The Respondent uses the safeway.net domain name in connection with a pornographic website.

6. A prior domain name dispute between the parties was resolved in the Complainant’s favor and the disputed domain name was placed on hold, by Network Solutions, Inc.

7. The Respondent reregistered the domain name in March 13, 2000.

CONCLUSIONS

          The undersigned certified that he has acted independently and has no known conflict of interest to serve as the administrative panelist in this proceeding.

          Having reviewed the complaint and supporting documentation, and after noting that there was no response to the complaint, the undersigned makes the following conclusions:

1. The domain name safway.net registered by Respondent is identical and confusingly similar to the mark in which Complainant has rights and to which the Respondent has no right or legitimate interests.

2. By using the domain name safway.net the Respondent attempted to attract for commercial gain, internet users by creating a likelihood of confusion with the Complainant’s mark as the source, sponsorship, affiliation or endorsement of the website.

DECISION/ORDER

            Based on the above findings and conclusions and pursuant to Rule 4(i), it is found that the Respondent has engaged in abusive registration of domain name safway.net within the meaning of paragraph 4(a) of the Policy, therefore the Panel orders that the domain name safway.net be transferred to the Complainant.

Dated: May ­27, 2000                                    James Alan Crary, Arbitrator