Generic Top Level Domain Name (gTLD) Decisions

UPSTREAM
COMPLAINANT,

vs.

THE SIMPLE SOLUTION LLC
RESPONDENT.

DECISION
No.:  FA0004000094451

This is a domain name dispute proceeding pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”) before the presiding panelist, Judge Nelson A. Diaz (Retired), of Philadelphia, PA.  The presiding panelist has confirmed to the National Arbitration Forum that he has no known conflicts of interest.  For the reasons explained below, the Panel holds that the domain name should NOT be transferred to Complainant.

1. The Parties

Complainant is Upstream.  Complainant was represented by Nathan Towne.   Respondent is The Simple Solution LLC.  Respondent was represented by Elizabeth Corradino, Esq.

2. Procedural Findings

Domain Name: <enchilada.com>

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: The Simple Solution LLC

Date of Domain Name Registration: April 23, 1999

Date Complaint Filed: April 12, 2000

Date of Commencement of Administrative Proceeding: April 28, 2000

Due Date for a Response: May 18, 2000; a timely response was received

Remedy Requested: Transfer of Domain Name

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 April 28, 2000 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 the above Registrar, Network Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN), and Complainant and Respondent that the administrative proceeding had commenced. 

The Panel issues its decision below based upon the complaint, the filed documents, the response and the Policy and Rules.

3. Factual Background

Complainant claims to be the owner of a registered mark, Enchilada.  Complainant does not, however, provide information to substantiate this claim (e.g. the identity of registering authority for the mark; the date on which the mark was first used in commerce; the class of products or services associated with the mark).

In February 1999, Respondent was formed in the State of New York.  In April 1999, Respondent purchased the domain name <enchilada.com> from its prior owner Telepathy, Inc.  On April 23, 1999, Respondent registered the domain name <enchilada.com> with Network Solutions.  In May 1999, respondent launched a web site resolving to www.enchilada.com.  After several months of operation, the business  failed and the site was deactivated.  At present, Respondent has no active web site associated with the domain name.

4. Parties’ Contentions

A. Complainant contends that Registrant’s domain name <enchilada.com> is identical to Complainant’s ENCHILADA mark.

B. Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name. 

C. Complainant contends that Respondent registered and is using the domain name in bad faith.

D. Respondent does not contest that the domain name is identical to Complainant’s ENCHILADA mark, but denies that Complainant has any right, title or interest in the mark.

E. Respondent denies Complainant’s assertion that it has no rights or legitimate interest in the disputed domain name.

F. Respondent denies that it has acted in bad faith in registering and using the domain name.

5. Discussion and Conclusions

To obtain the requested relief, paragraph 4(a) of the Policy requires Complainant to prove each of the following:

1) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

2) That the Respondent has no rights or legitimate interest in the domain name; and

3) That the domain name has been registered and used in bad faith.

As discussed below, under the standards applicable to this proceeding, the Panel concludes that Complainant is not entitled to relief on the record presented.

A. Similarity Between Respondent’s Domain Name and  Complainant’s Trademark.

While it is clear that the domain name registered by Respondent, <enchilada.com>, is substantially similar to, and, in fact, identical to Complainant’s putative ENCHILADA mark, Complainant has provided no evidence whatsoever that it has any protectible rights in the mark.  Moreover, Respondent asserts that it has conducted a trademark search of the USPTO database and a Lexis-Nexis search and that it was unable to find any evidence of Complainant’s use or ownership of the mark.  The panel thus concludes that Complainant has not met its burden of proof in establishing the first prima facie element under the Policy.  While the decision could rest on this ground alone, the Panel will nevertheless discuss the second and third elements under paragraph 4(a) of the Policy.

B. Respondent’s Rights or Legitimate Interest in the Domain Name.

The sole basis for Complainant’s assertion that Respondent has no rights or legitimate interest in the domain name is that the domain name does not resolve to an active web site.  This fact is not material in light of Respondent’s showing that it has legitimate rights in the domain name.     

Under Paragraph 4(c) of the Policy, Respondent may rebut Complainant’s allegations by demonstrating its rights or legitimate interest in the domain name.   If proven, the following non-exclusive circumstances may serve as evidence of Respondent’s rights or legitimate interest in the domain name:

1) Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

2) An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

3) Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Based on the good faith assertions in the response concerning its use of the domain name, the Panel finds that it is reasonable to infer that Respondent does indeed have rights and a legitimate interest in the domain name in question.   Thus, Complainant has not met its burden of proof in establishing the second prima facie element under the Policy.

C. Respondent’s Bad Faith Registration and Use of the Domain Name.

Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith registration and use includes:

1) Circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;

2) A pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;

3) Registration of the domain name for the purpose of disrupting the business of competitor; or

4) Using the domain name to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the trademark owner’s mark.

The Panel finds that Complainant has not met its burden of proof on the issue of bad faith registration and use.  There is no evidence of an attempt by Registrant to sell the domain name for profit.  There is no evidence that Respondent engages in a pattern of registering the trademarks of others as domain names.  There is no evidence that Respondent registered the domain name for the purpose of disrupting the business of a competitor.  Finally, the record contains insufficient evidence to establish that Respondent intentionally attempted to create a likelihood of confusion with Complainant’s mark, ENCHILADA.

6. Decision

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided:

THE PANEL FINDS IN FAVOR OF RESPONDENT AND DENIES COMPLAINANT’S REQUEST THAT THE DOMAIN NAME <enchilada.com> BE TRANSFERRED TO COMPLAINANT.

Date:  June 8, 2000                              Nelson A. Diaz, Presiding Panelist