Generic Top Level Domain Name (gTLD) Decisions

EXEC-U-NET, INC
COMPLAINANT,

vs.

EXEC-U-NET
RESPONDENT.

The above entitled matter came on for an administrative hearing on May 23, 2000, before the undersigned on the Complaint of David B. Opton, President, Exec-U-Net, Inc., (“Complainant”) represented by Melvin I. Stoltz, Esq., 51 Cherry Street, Milford, CT 06460 against Exec-U-Net, (“Respondent”) represented by Jeffrey D. Harty, Esq., Zarley, McKee, Thomte, Voorhees & Sease, P.L.C., 801 Grand Avenue, Suite 3200, Des Moines, IA 50309-2721.  Upon the written submitted record including the Complaint, the Respondent’s Response to Domain Complaint and the Claimant’s Additional Response, the following DECISION is rendered:

PROCEDURAL FINDINGS

U.S. Trademark Registration No. 1,738,272 (registration and grant date - 12/8/92)

U.S. Trademark Registration No. 2,262,320 (registration and grant date - 7/20/99)

U.S. Patent and Trademark Office

Trademark Registrant: EXEC-U-NET, Inc.

Domain Name: EXEC-U-NET.COM

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: Exec-U-Net

Date of Domain Name Registration: November 28, 1996

Date Complaint Filed: April 18, 2000 (received)

Date Response to Complaint Filed: May 4, 2000

After reviewing the complaint, and determining it to be in administrative compliance, the National Arbitration Forum (“Forum) forwarded the complaint to the respondent  in compliance with Rule 2(a)^{[1] and the administrative proceeding was commenced pursuant to Rule 4(c).  In compliance with Rule 4(d), the Forum immediately notified Network Solutions that the administrative proceeding had commenced.  The complainant elected to have this administrative proceeding conducted by a single arbitrator and paid the appropriate fee for same.  The Complaint, the Respondent’s Response to Domain Complaint and the Claimant’s Additional Response were docketed and forwarded to the undersigned arbitrator for decision.}

FINDINGS OF FACT

1.            In 1988, and continually since that date, Exec-U-Net, Inc. (formerly known as David B. Opton Associates, Inc.) adopted and extensively employed the name Exec-U-Net in providing job search and career management information, seminars and networking meetings, recommendations of resources and for information exchange both on and off the Internet for executives interested in advancing their careers.  Executives pay a fee to become members and this is Exec-U-Net’s sole source of revenue.  Exec-U-Net was awarded the Trademark Registration for the name of Exec-U-Net in 1992.

2.            In addition to holding the above-identified Trademark Registration, Exec-U-Net, Inc. has acquired common law rights to this name and has invested a substantial amount of expense in advertising, public relations, promotion, establishing extensive good will in its trademark.

3.            Respondent is an Internet training and consulting firm located in Des Monies, Iowa.  The company offers three services, 1) Internet training, 2) Internet marketing consulting/strategic planning, and 3) web page design.  The name Exec-U-Net was selected by the respondent in February, 1996.

4.            The complainant alleges that Diane Johnson, President of Exec-U-Net, Des Moines, joined and was a member of the career management service provided by Exec-U-Net, Inc. (paying a fee for membership) little more than one year before registering for the domain name of exec-u-net.com.  The respondent does not deny this allegation.

5.            The respondent claims that she has invested $54,000 in her firm and that her attorney offered to transfer the respondent’s domain name to the complainant for the sum of $10,000.  This amount was well above her documented out-of-pocket costs directly related to the registration of the domain name.

6.            The trademark “Exec-U-Net” was registered by the complainant on December 8, 1992, and again on July 20, 1999.

7.            The respondent’s domain name, exec-u-net.com is either identical to, or confusingly similar to, the complainant’s trademark, Exec-U-Net.

8.            Respondent’s knowledge of the use of the name and trademark before selecting her company’s name is a clear indication of her bad faith and a willful disregard of the complainant’s trademark.

CONCLUSION

The undersigned arbitrator certifies that he has acted independently and has no known conflict of interest to serve as an arbitrator in this proceeding.  Having been duly selected, and being impartial, the undersigned makes the following conclusions:

1.            The domain name exec-u-net.com is identical and confusingly similar to the complainant’s trademark, Exec-U-Net.

2.            Respondent has no rights or legitimate interests in respect of the registered domain name at issue.

3.            Respondent has registered and is using exec-u-net.com in bad faith.

DECISION

AND NOW, this 8th day of June, 2000, based upon the above findings and conclusions, and pursuant to Rule 4(i) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy, it is decided as follows:

THE UNDERSIGNED ORDERS THAT THE DOMAIN NAME, exec-u-net.com, REGISTERED BY RESPONDENT, EXEC-U-NET, BE FORTHWITH TRANSFERRED TO COMPLAINANT, EXEC-U-NET, INC.

Honorable Richard DiSalle, Superior Court Judge (Ret), Arbitrator