Generic Top Level Domain Name (gTLD) Decisions

STROMBECKER CORPORATION
COMPLAINANT,

vs.

JUST SERVICE, INC.
RESPONDENT.

DECISION
Forum File No.: FA#94450

The above entitled matter came on for an administrative hearing on May 26, 2000, before the undersigned on the Complaint of Strombecker Corporation, hereafter “Complainant”, against Just Service, Inc. (“Just Service” or “Respondent”).  Respondent was represented on written submission by Peter L. Marx, Esq., Chicago, Illinois.  Complainant was represented on written submission by Charles A. Valente of Krasnow, Sanberg, Cornblath & Hobbs, Chicago, Illinois.  Upon the written submitted record, the following DECISION is made:

                                                      PROCEDURAL FINDINGS

• Domain Name: strombecker.com

• Domain Name Registrar: Network Solutions, Inc.

• Domain Name Registrant: Just Service, Inc.

• Date of Domain Name Registration: February 16, 1998

• Date of Complaint Filed: April 17, 2000

• Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a) and Rule4(c): April 25, 2000

            Due date for a Response:    May 15, 2000

• Prayer for Relief: Transfer of Domain Name from Just Service, Inc. to Complainant

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to both Just Service, Inc. and Network Solutions, Inc., in compliance with the Internet Corporation for Assigned Names and Numbers Rules for Uniform Name Dispute Resolution Policy Rule 2(a) (hereafter the “ICANN Rule” or “Rule”), and the administrative proceeding was commenced pursuant to Rule 4(c).  In compliance with Rule 4(d), the Forum notified Network Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced.  Respondent submitted a response to the Forum within twenty (20) days pursuant to Rule 5(a).  Complainant, through its counsel submitted additional information, which was received by the undersigned on May 26, 2000, and was not considered.  Under the ICANN Rule 12, such additional submissions must be considered if requested by the arbitrator or the arbitration panel.  Voluntary submissions should not be considered.

On February 16, 1998, Just Service registered the domain name “strombecker.com” with Network Solutions, the entity that is the Registrar of the domain name.  Network Solutions has verified that Just Service is the Registrant for the domain name “strombecker.com”. Further, by registering the domain name with Network Solutions, Just Service agreed to resolve any dispute regarding its domain name through ICANN’s rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

In the Response, Just Service’s counsel answered by stating that the domain name was actually owned by a partnership, American Made Electronics (“American”).  The Response goes on to offer affirmative defenses and clearly appears to have been filed on behalf of both entities.

Even though counsel asserts that American is the actual owner of the domain name, “stromberg.com” is currently registered to or by Just Service.

The Response does not comply with Rule 5.  Most importantly, the Response is not verified under Rule 5(b)(vii) and could be wholly disregarded.  The undersigned has, however, determined to consider the Response (i) in order to expeditiously resolve this matter and (ii) because this process is so very new.

                                                           FINDINGS OF FACT

1. Complainant owns the registered trademark “Strombecker” (the Mark) which

it registered as a Mark for toys including toy model cars.  It has used the Mark since 1927, and the Mark has been registered since 1957.  The Mark was last renewed for a ten year period in 1997.

2. The Response asserts that the registration of the domain name was for a

legitimate purpose, and the intent was to establish a domain at which could promote interest in Stromberg model cars, which are no longer in production.  There is no evidence that the domain has ever been used for that or any other purpose.

3. The Response states that Just Service registered the domain name

“strombecker.com” in 1998.  Except for lack of capitalization and the addition of “.com”, the Mark and the domain name are identical.

4. This decision is rendered under paragraph 4.a. of the Internet Corporation

for Assigned Names and Numbers Dispute Resolution Policy (“ICANN Policy” or “Policy”).  Paragraph 4 requires transfer of the domain name to Complainant if:

(i)  the “domain name is identical or confusingly similar to” Complainant’s Mark; and,

(ii)  Respondent “has no rights or legitimate interests in respect of the domain name; and”

(iii)  the “domain name has been registered and is being used in bad faith.”

5. Obviously, the first element of paragraph 4.a. subparagraph (i) of the ICANN

Policy is applicable.  The Mark and name are identical.  However, all three elements must be shown by the evidence.

6. Complainant has also made a clear showing that the second element, “no

rights or legitimate interest” applies.  Here, Respondent has never used the domain.  The Response states - - at Response to Complainant paragraph 2 - - that the domain name was registered “for the purpose of hosting a website for collectors items from the 1960's, which were no longer being manufactured by Strombecker and other companies.  Due to [this] . . . dispute, American . . . has yet to take further action toward establishing a working website . . . .”

7. Since the domain name was not ever in use, and any use would violate

subparagraph (i) of Policy paragraph 4.a., the second element is established. 

8. The bad faith element is also clearly demonstrated.  Here, reference to

Policy paragraph 4.b. is necessary.  There is no evidence that anyone attempted to sell the domain name to Complainant [see paragraph 4.b.(i)] or attempted to disrupt Complainant’s business [see paragraph 4.b.(iii)].  But, registration of the domain name does prevent the owner of the Mark from registering its own Mark as a domain [see paragraph 4.b(ii)].

9. Finally, the stated purpose of the registration runs afoul of Policy. 

Paragraph 4.b.(iv), for the registration was certainly an attempt to attract Internet users in a prohibited manner.

10. The Response asserts a number of issues which are not directly relevant

under the Policy.  Whether the Mark is “famous” or “distinctive” are issues relevant to actions under 15 U.S.C. §1125 (a provision of the Lanham Act).

11. Were this a decision under the Lanham Act, at 11 U.S.C.§1125,

§1125(d)(1)(A)(B) would apply.  A review of the statute also demonstrates that Respondent has violated the new “cyberprivacy prevention” statute.  Under 11 U.S.C. §1125(d)(1)(B)(i)(II), “bad faith” can be shown where the domain name is also the legal name of the complaining party or can be shown.  Under subparagraph(I), “bad faith” can be shown by reference to trademark and intellectual property rights of the parties.

                                                               CONCLUSIONS

12.       The domain name registration violates ICANN Policy paragraph 4 and

should be transferred to the Complainant.

13. American Made Products is not the recorded registrant of the domain name.

DECISION

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 “strombecker.com” BE  TRANSFERRED TO Complainant.

Dated: May 31, 2000, by R. Glen Ayers, Jr. (formerly United States Bankruptcy Judge), Arbitrator