PRICEGRABBER.COM v. LARRY O’CONNOR [2000] GENDND 420 (5 June 2000)

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LARRY O’CONNOR
OTHER WORLD COMPUTING, INC.
DIV. OF NEW CONCEPTS DEVELOPMENT
RESPONDENT.

Date Complaint was sent to Respondent in accordance with Rule 2(a)^{[1]: 04/28/00}

On April 28, 2000 the Complainant, PriceGrabber.com, filed its complaint with the National Arbitration Forum (“The Forum”) pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”). After reviewing the Complaint for administrative compliance, The Forum transferred the Complaint to the Respondent, Other World Computing Inc., in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In

compliance with Rule 4(d), The Forum immediately notified Network Solutions, ICANN and the Complainant that the administrative proceeding had commenced.

The Respondent registered the domain names with Network Solutions, the entity that is the Registrar of the domain names. By registering its domain name with Network Solutions, the Respondent agreed to resolve any dispute regarding its domain names through ICANN’s Uniform Domain Name Dispute Resolution Policy.

The Complaint is based on the following application for trademark: “PriceGrabber.com”, application filed on March 17, 2000, with the United States Patent and Trademark Office.

The Complainant requests that the domain names “PRICEGRABBERS.COM” and “PRICEGRABBERS.NET” be transferred from the Respondent to the Complainant.

In its response the Respondent agrees to relinquish the domain name “PRICEGRABBERS.COM”.

The above-captioned matter came on for an administrative hearing on June 5, 2000, before the Honorable Charles K. McCotter, Jr. (Ret.), Arbitrator. This matter is submitted for decision in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”) and Rules (the “Rules”). Upon the written submitted record, and the following findings and conclusions, I find for the Complainant.

1. The Complainant, PriceGrabber.com is an online company with its principal place of business located in Los Angeles, California. PriceGrabber.com is in the business of assisting consumers to find computers and electronics products based upon the consumers’ needs. PriceGrabber.com has been an online business since April 1999, and on March 17, 2000, filed its trademark application with the United States Patent and Trademark Office for federal registration and protection of the mark “PriceGrabber.com”.

2. Network Solutions confirms the following registrant information for the domain

3. On or around July 7, 1999, PricePulse.com, a competitor of the Complainant, and the Complainant explored the possibility of a merger. Larry O’Connor stated to the Complainant that he was the CEO of PricePulse.com and New Concepts Development. In late July, 1999, PriceGrabber.com decided that it would not merge with PricePulse.com.

4. In early September, 1999, PriceGrabber.com discovered that its name had been registered as a domain name with the only variation being the use of the letter “s”, ie “PRICEGRABBERS.COM”. The Complainant learned that New Concepts Development had registered the domain name of “PRICEGRABBERS.COM” with Network Solutions on August 13, 1999. The Complainant contacted PricePulse.com to complain about the domain name registration and a direct link from the web site to PricePulse.com. PricePulse.com agreed to relinquish the “PRICEGRABBERS.COM”domain name if PriceGrabber.com would reimburse PricePulse.com for the $70.00 registration expense. PriceGrabber.com accepted this offer and sent a check to PricePulse.com for $70.00. Subsequently, PriceGrabber.com discovered that New Concepts Development had registered “PRICEGRABBERS.NET” as well. The Complainant informed PricePulse.com that the $70.00 was to cover this additional domain name as well. Despite this agreement, including the acceptance and depositing of the check, the domain names have never been transferred to the Complainant. PricePulse.com did eliminate the direct link to its web site and the web sites of the domain names. However, users using the domain addresses reach a message in bold at both web sites: “ Please come back soon, we’re under construction”. Moreover, the identifying name and message which appear at the top of both web sites is: “Pricegrabber.com...Under constructions (sic)”, the name PriceGrabber.com without the variant “s”. Consequently, the direct message being communicated to the user and/or customer is that there is no difference between the domain names of “PriceGrabber.com” and “pricegrabbers.com”.

5. The Response, by Larry O’Connor, Other World Computing, Inc., div. of New Concepts Development Corp., states “New Concepts Development Corp., the actual holder of the domain (not its d/b/a Other World Computing, Inc.), is more than happy to relinquish the domain pricegrabbers.com”.

6. The domain names are identical or confusingly similar to a trademark (applied for) or service mark in which the Complainant has rights.

7. The Respondent has no rights or legitimate interests in the domain names. The Respondent has not been using, or preparing to use, the domain names in connection with a bona fide offering of goods or services. The Respondent has not been commonly known by the domain names. The Respondent is not making a legitimate noncommercial or fair use of the domain names.

8. The domain names should be considered as having been registered and used in bad faith. While the offer to relinquish one of the domain names in exchange for reimbursement of the registration expense does not constitute bad faith; there is other evidence of the Respondent’s bad faith. The registration of the domain names occurred shortly after the conclusion of the discussions of a possible merger between the two competitors. The Respondent linked the domain names to its own web site displaying an “under construction” message causing confusion as to the ownership and usefulness of the web site. The Respondent’s registration and use of the domain names was primarily for the purpose of disrupting the business of a competitor.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the

1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,

I certify that I have acted independently and have no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected and being impartial, I enter the following decision:

Based upon the above findings and conclusions, I find in favor of the Complainant. Therefore, pursuant to Paragraph 4.i of the Policy, I direct that the domain names “PRICEGRABBERS.COM” and “PRICEGRABBERS.NET” registered by the Respondent, Other World Computing, Inc., be transferred to the Complainant, PriceGrabber.com.

^{[1] 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.}

Generic Top Level Domain Name (gTLD) Decisions

PRICEGRABBER.COM v. LARRY O’CONNOR [2000] GENDND 420 (5 June 2000)

National Arbitration Forum