Generic Top Level Domain Name (gTLD) Decisions

Shared Network Services dba 1stpage.com
COMPLAINANT,

vs.

Cyber Link 2001
RESPONDENT.

DECISION
File Number: FA0005000094788

PARTIES

The Complainant is Shared Network Services dba 1stpage.com, St. Lodi, CA, USA ("Complainant"). The Respondent is Cyber Link 2001, Houston, TX, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is “FIRSTPAGE.COM”, registered with Network Solutions, Inc. (“NSI”).

PANELIST

The parties have chosen resolution by a single panelist.  Jeffrey H. Kaufman was selected as the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on May 8, 2000; The Forum received a hard copy of the Complaint on May 8, 2000.

On May 17, 2000, NSI confirmed by e-mail to The Forum that the domain name “FIRSTPAGE.COM” is registered with NSI and that the Respondent is the current registrant of the name.  NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On May 15, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 6, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

After clearing potential conflicts of interest, on June 19, 2000, pursuant to the parties’ request to have the dispute decided by a single member Panel, The Forum appointed Jeffrey H. Kaufman as the Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant offers real-time web building for small to medium size businesses and claims a national customer base of more than 150,000.  Complainant filed an application for a U.S. Trademark Registration for the mark 1ST PAGE.  The mark is used in conjunction with Complainant’s build-your-own web site service and features prominently in promotional and other print materials.  Complainant also offers added services such as free e-mail and e-commerce tools. 

Complainant’s counsel, in a letter to Respondent dated May 5, 2000, stated that Respondent offered to sell the domain name to Complainant for $500,000.

Complainant contends that (1) Respondent’s domain name, <firstpage.com>, is confusingly similar to Complainant’s domain name, <1stpage.com>; (2) that Respondent has no legitimate rights or interests in respect of the domain name <firstpage.com>, and (3) that the domain name was registered by Respondent in bad faith.

B. Respondent

Respondent^{[1] is an individual primarily engaged in operating an automotive parts business named Smart Dealer Parts, L.C.  Respondent registered the domain name in March, 1998.  Respondent asserts that the domain name was registered consistent with his business plan involving the development of a web presence from the online sale of dealer surpluses of conventional automotive goods at <http://www.dealersurplus.com> to a broader selection of goods and services.} 

Respondent denies that he offered to sell the domain name to Complainant for $500,000.

Respondent contends that (1) Complainant’s mark is not identical to the domain name; (2) Complainant has not demonstrated that Respondent lacks rights in the domain name; and (3) Complainant has not demonstrated bad faith by Respondent.  Respondent requests that the relief requested by Complainant be denied.

FINDINGS

Complainant is the owner of U.S. Trademark Registration No. 2,347,015 for the mark 1ST PAGE in connection with “computer services, namely, website and web page design for small and medium size businesses.”  The mark was registered on May 2, 2000^{[2] and claims first use of the mark in July, 1996.  Complainant has provided sample printed materials that show use of the mark.}

Respondent registered the domain name <firstpage.com> with Network Solutions in March, 1998, prior to the date Complainant filed its U.S. trademark application.  The WHOIS database shows that the domain name registration expires in March 2010.  Respondent has not used the domain name for a web site or as an email address.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs that the Complainant must prove each of the following three elements to support a claim that a domain name should be cancelled or transferred:

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

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant’s mark 1ST PAGE and the domain name <firstpage.com> are not identical.  However, the domain name is confusingly similar to the trademark in that the pronunciations of the two are identical (“first page dot com”) and the meaning of “first” and “1st” are also identical.

Rights or Legitimate Interests

Complainant provides only an unsupported allegation that Respondent has no rights or legitimate interest in the domain name. 

Respondent asserts an intent to use the domain name for an expanded web presence but provides no supporting evidence.  Respondent provides some detail regarding its plans to develop the domain names <smartdealerparts.com> and <dealersurplus.com>, allegedly the precursors to Respondent’s intended future web presence at <firstpage.com>.  Respondent states that it has paid a web developer $78,000 to create the initial phase of the site <dealersurplus.com>, to be operational by June 30, 2000, but provides no evidence to support this payment. The site <dealersurplus.com> was not operational on July 5, 2000.  The exhibits provided by Respondent show no connection between Respondent’s business or plans for <dealersurplus.com> and the disputed domain name. 

The Panelist finds it unnecessary to decide whether Respondent has any rights or legitimate interests in the domain name because the Complainant fails to prove the third element: registration and use in bad faith.

Registration and Use in Bad Faith

Complainant alleges, without supporting argument or evidence, that Respondent registered the domain name in bad faith.  However, the record presented simply does not support a finding that Respondent had actual or constructive knowledge of Complainant’s trademark rights at the time Respondent registered the domain name. 

Complainant does not even allege that Respondent used the domain name in bad faith.  Complainant provides a copy of a letter sent by Complainant’s counsel to Respondent.  The letter states that Respondent offered to sell the domain name to Complainant, but Complainant provides no further details as to when and how this offer was made.  Furthermore, Respondent denies offering to sell the domain name to Complainant.

In deciding domain name disputes under the Policy, some Panels have inferred both registration and use in bad faith based on the passive holding of a domain name.  See, e.g., Telstra Corporation Ltd. v. Nuclear Marshmallows, Case No. D2000-0003. In this dispute, there is inadequate evidence to support a finding of bad faith.

The Complainant has failed to show that Respondent registered and used the domain name in bad faith.

Complainant’s Burden

According to paragraph 4(a) of the Policy, the Complainant must prove each of the three elements.  Paragraph 3(b)(ix) of the Rules for Uniform Domain Name Dispute Resolution Policy further directs the Complainant to provide reasons as to why the Panel should find that each of the elements has been met.  The record in this UDRP proceeding is simply inadequate to support a finding that Respondent registered and used the domain name in bad faith.

DECISION

For the reasons set forth hereinabove, the Complaint is denied.  The domain name <firstpage.com> shall remain with the Respondent.

Jeffrey H. Kaufman, Arbitrator

Dated: July 10, 2000