Generic Top Level Domain Name (gTLD) Decisions

THE NATIONAL ARBITRATION FORUM

P. O. BOX 50191

MINNEAPOLIS, MINNESOTA 55405 USA

Athletica, Inc. ("Athletica")
4814 Park Glen Road
Minneapolis, MN 53416,

COMPLAINANT,

vs.

Steven R. Wilson ("Wilson")
117 Fulton Street
Boston, MA 02105,

RESPONDENT.

DECISION

Forum File No.: FA0002000093764

The above entitled matter came on for an administrative hearing on March 15, 2000 before the undersigned on the Complaint of Athletica, hereafter "Complainant", against Steven R. Wilson, hereafter "Respondent". Complainant was represented by Steven E. Ness, Esq., Suite 250, Minnetonka, MN 55343. Respondent appeared Pro Se. Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name: borderpatrol.com

Domain Name Registrar: Register.com

Domain Name Registrant: Steven R. Wilson

Date of Domain Name Registration: January 17, 2000

Date Complaint Filed: February 17, 2000

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)[1] and Rule 4(c): February 17, 2000

Due date for a Response: March 13, 2000. Respondent submitted a Response to the Complaint.

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 January 17, 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 Register.com, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent submitted a response to The Forum within twenty (20) days pursuant to Rule 5(a).

On January 17, 2000, Respondent registered the domain name "borderpatrol.com" with Register.com, the entity that is the Registrar of the domain name. On January 11, 2000, Register.com verified that Respondent is the Registrant for the domain name "borderpatrol.com", and that further by registering its domain name with Register.com, Respondent agreed to resolve any dispute regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

1. That Complainant is the owner of a trademark is made up of the terms "Border Patrol". Complainant has for 2-1/2 years prior to Respondent's registration used the mark "borderpatrol.com" as the domain name for its portal Website. "Border Patrol" was used extensively at this portal Website, which is a significant method of promoting Complainant's products.

2. That as early as June 1997, Complainant began using its domain name in connection with the sale of athletic equipment. The "borderpatrol" mark has been used continuously and extensively in interstate and international commerce in connection with the advertising and sale of Complainant's products.

3. That Complainant has invested substantial sums of money in developing and marketing its products with its trademark affixed. That domain name had been in continual use by Complainant; and immediately prior to January 2000, some 13,000 interested website "hits" were received during the last six months of 1999.

4. That Respondent registered the domain name "borderpatrol.com" in bad faith and has no rights or legitimate interests in respect to said domain name or mark. The following is evidence of Respondent's bad faith:

a. That Respondent registered the domain name on January 17, 2000, shortly after Complainant's website administration allowed the registration to lapse.

b. That Respondent has made no legitimate use of the domain name "borderpatrol.com" and it seeks to profit from its registration of said domain name by seeking to leverage Complainant to pay Respondent for the domain name it had used for years prior. Respondent's profit motive is evidenced by its offer to sell said domain name and declining to sell the domain name at prices greater than Respondent's out-of-pocket costs.

5. Complainant's prayer for relief requests that the domain name "borderpatrol.com" be transferred from Respondent to Complainant.

CONCLUSIONS

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

1. The domain name "borderpatrol.com", registered by Respondent on January 17, 2000 with Register.com, is identical to Complainant's domain name in existence shortly prior thereto and is nearly identical and confusingly similar to a trademark in which Complainant has rights and to which Respondent has no right or legitimate interests.

2. Respondent registered and acquired the domain name "borderpatrol.com" primarily for the purpose of selling or otherwise transferring the said domain name registration to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for valuable consideration in excess of Respondent's out‑of‑pocket costs directly related to the domain name. Respondent registered the domain name in bad faith.

DECISION

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

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "borderpatrol.com" REGISTERED BY RESPONDENT STEVEN R. WILSON BE TRANSFERRED TO COMPLAINANT ATHLETICA, INC.

Dated: March 15, 2000, by John A. Bender, Arbitrator.

Honorable John A. Bender