Generic Top Level Domain Name (gTLD) Decisions

Pentegra Dental Group, Inc.
COMPLAINANT,

vs.

Domain Owner
RESPONDENT.

DECISION
FORUM FILE:  FA 0004000094649

This is a domain name dispute pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy.  It was decided on the record provided by counsel for the parties.  A three person arbitration panel was requested and appointed by the National Arbitration Forum, namely Daniel B. Banks, Jr., as the Chair, along with Honorable Marilyn Carney and Honorable Paul Dorf as panelists.

The panel certifies that they have acted independently and have no known conflicts of interest to serve as arbitrators in this proceeding.  All three panelists actively drafted, revised and/or otherwise participated in this decision.  For the reasons explained below, the panel has reached the unanimous decision that the domain name should be transferred to the Complainant.

PROCEDURAL FINDINGS

Domain Name at issue: edentist.com

Domain Name Registrar: Register.com

Domain Name Registrant: Domain Owner

Date of Domain Registration: April 5, 2000.

Date Complaint Filed: April 21, 2000.

Date of Commencement of Administrative Proceeding: May 4, 2000.

Due Date for a Response: May 31, 2000.

Remedy Requested: Transfer of Domain Name to Complainant.

FACTUAL FINDINGS

Complainant Pentegra Dental Group, Inc., (Pentegra) is the owner of the "edentist" and "e-dentist" marks, having purchased those marks from Joseph Edward Nelson.  In addition to the marks, Joseph Edward Nelson assigned to the Complainant all intellectual property rights in and to said marks including pending applications with the U.S. Patent and Trademark Office. 

Pentegra uses the edentist mark for its website domain name "e-dentist.com" and to promote the edentist products and services.  Pentegra has invested substantial amounts of money in acquiring the edentist mark and in developing and marketing the edentist products and services.

Respondent appears to be a company engaged in the business of registering domain names for sale over the Internet.  The contact person for the Respondent is Mr. Wu.  The name of his purported on-line company is Chongquing JianChi Dental Co. Ltd.  Respondent claims that the edentist.com domain name was registered in October of 1998 in an effort to promote the Respondent company's e-commerce business.  It is also claimed that Respondent has been using the website www.edentist.com for its Internet business since 1998.  In support thereof, Respondent has furnished to the panel purported copies of printouts of the website and a fax letter from the company.  This evidence has been brought into issue by the Complainant through affidavits that dispute the Respondent's assertions.  Specifically, the Complainant has offered evidence that the original registration of the edentist.com name was in the name of "Cool Domains for Sale as LOW as 99 dollars". That registration was changed on April 5, 2000 to the current registrant Domain Owner.  Mr. Wu is the listed owner of this website which is in the business of registering and selling domain names.  It appears that currently he has some 30 to 40 names listed for sale on the Internet.

The Complainant further disputes the Respondent's alleged use of a website under the edentist.com name.  Respondent originally listed "ns.intellistar.net" and ns2.intellistar.net" (collectively "Intellistar") as the domain name servers for edentist.com.  However, according to Intellistar, the Respondent had pointed its domain name to Intellistar's servers without permission.  Mr. John Dewer, President of Intellistar confirms that he does not have any record of the edentist.com website or of Respondent.  There is also an affidavit from John Sanders who states that he has investigated the existence of the domain name "edentist.com" on a weekly and often daily basis since December, 1999, and has not found a website or webpage at the "edentist.com" domain name address. 

There is also evidence to support a finding that the Respondent is in the business of registering names and then attempting to sell them for sums in excess of his documented out-of-pocket costs.  In fact, he offered to sell the domain name "edentist.com" to Complainant for the sum of $150,000. 

This evidence supports a finding that the name was registered in bad faith for the purpose of sale and not for the purpose of operating a website. 

DISCUSSION

            On October 24, 1999, the Internet Corporation for Assigned Names and Numbers ("ICANN") adopted the Uniform Domain Name Dispute Resolution Policy which sets forth the elements that a complainant must prove to show that a respondent has registered and used a domain name in bad faith.  Specifically, the complainant must prove each of the following:

i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

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

iii) Respondent has registered and is using the domain name in bad faith.

It is the opinion of this panel that the Complainant has met the burden of proof with respect to each of the above elements for the following reasons:

1 - It is undisputed that the domain name is identical to Complainant's trademark in

which the Complainant has rights.

            2 - The panel finds that the Respondent has no right or legitimate interest in the domain name.  Specifically, the panel finds that the domain name has not used by the Respondent for a bone fide offering of goods or services nor has the Respondent been commonly known by such name.       

3 - The panel finds that the Respondent has registered the name in bad faith.  Section 4(b) of the ICANN Uniform Domain Name Dispute Policy provides that evidence of bad faith registration and use can consist of the following circumstances:

i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's web site or location or of a product of service on the respondents web site or location.

            The Panel finds that the circumstances of this case indicate that the Respondent registered and is using the domain name in bad faith primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or others for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.

DECISION

            It is the unanimous conclusion of the panel that the Complainant has met its burden of proof and that the domain name edentist.com should be transferred to the Complainant.

Dated:  June 28, 2000
Honorable Daniel Banks, Arbitrator