Generic Top Level Domain Name (gTLD) Decisions

Transmedia Service Company, Inc.
COMPLAINANT,

vs.

Alan Clore
RESPONDENT.

DECISION
File Number FA0005000094741

This domain name dispute was heard by the undersigned Arbitrator pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy upon the written submissions of the parties.  The Complainant is represented by Keith E. Kiper, Vice President and Corporate Counsel, Transmedia Network, Inc.  Respondent appeared pro se Alan Clore, Transmedia.

Procedural Findings

Domain Name:

            Transmedia.com

Findings of Fact

1)         Complainant Transmedia Service Company, Inc. (TSC), a Delaware Corporation, is a wholly owned subsidiary of Transmedia Network, Inc. and has a service mark since Dec. 12, 1989 for the word “Transmedia”, Registration number 1,571,290.

2)         The Service Mark on the Principal Register is claimed for Credit Card Service and so used.  First use claimed in Commerce is January 1984.

3)         Business is conducted throughout the United States and abroad, and in December 7, 1993 the name was registered in the United Kingdom, No. 1,809,170.

4)         When Complainant attempted in 1996 through an associate to develop and host a website under its name, it was informed by Network Solutions, Inc. (NSI) of the registration by Respondent.

5)         TSC instituted an action under the NSI Domain Dispute Resolution Policy and on November 21, 1996 so notified Respondent.

6)         Respondent did not respond so the Respondent’s Domain name was put on “hold”.

7)         Respondent in reply to the Complainant hereunder states as follows:

                        “In 1994, My girlfriend and I sat in my living room and together we chose the

                         name Transmedia from a list I’d made of possible names for my company.  We

                         liked the name because it was descriptive of the services we would offer on the

                         internet, namely, multimedia and web design as well as digital content such as

                         graphics files, and animation.  I was unaware of the existence of Transmedia

                         Service Company at the time.

                         In the summer of 1994 I contacted my local internet service provider, IgLou, we

                         did a whois search and found that transmedia.com was available and I registered

                         it.  I was one of the first people for whom IgLou provided this service and I

                         believe transmedia.com was one of the first domain names they helped a customer

                         to register.  I still receive monthly e-mail invoices from them addressed to

                         Transmedia.

                         I am not salesman or cyber squatter who has attempted to profit from the sale of

                         the domain name transmedia.com.  I did NOT register the name because I wanted

                         to sell it.”

8)         Pursuant to ICANN Policy 4(a), the Complainant must establish each of these three elements:

1.  The domain names registered by the Respondent are identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;

2.  The Respondent has no legitimate interest in respect of the domain name; and

3.  The domain names have been registered and used in bad faith.

9)         There is no doubt that the names are identical.  Respondent has established no legitimate usage or reason for use other than as a name for services it would provide.

10)       As to bad faith, the Respondent has not set forth any services that it is or would be providing for which it would or could use the name other than a “hope” that he would offer services on the Internet.  Respondent shows no evidence that it is either offering services for which the domain name Transmedia would be a good description or it is merely attempt to tie up a good name for further reference.

Decision

11)       Under the circumstances, and on balance I find for the Complainant which has a legitimate claim to the name.

12)       The Domain name Transmedia is transferred to the Complainant.

June 7, 2000                Honorable Theodore R. Kupferman, Arbitrator