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Pueblo International v. xtra-Net Internet Service GmbH [2000] GENDND 703 (17 July 2000)

National Arbitration Forum

DECISION

Pueblo International, Inc. v. xtra-Net Internet Service GmbH

Claim Number: FA0006000094975

PARTIES

The Complainant is Pueblo International, Inc., San Juan, Puerto Rico, ("Complainant"). The Respondent is xtra-Net Internet Service GmbH, Germany, ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "XTRA.NET", registered with Network Solutions Inc ("NSI").

PANELIST(s)

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/07/2000; The Forum received a hard copy of the Complaint on 06/07/2000.

On 06/08/2000, NSI confirmed by e-mail to The Forum that the domain name "XTRA.NET" 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 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 06/08/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/28/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail.

On 06/28/2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default.

On July 6, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Harold Kalina (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered a domain name that is identical to its trademark registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the respondent has registered and is using the domain name in bad faith.

1. Respondent

The Respondent submitted no response in this matter.

FINDINGS

Complainant owns the U.S. service mark XTRA (filed 04/09/1992; registered 09/17/1996; No. 2,001,716) for retail grocery store services and private food product labels. The Complainant has 50 supermarket locations.

On January 5, 1998, Respondent registered XTRA.NET.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order 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.

Complainant has rights in the mark, XTRA, as evidenced through its service mark registration.

The Respondent’s domain name is identical to the Complainant’s registered mark except for the addition of the domain name level designation "net".

Complainant asserts that the Respondent has no rights or legitimate interests in the domain name in question. The Respondent has not denied that assertion.

The Complainant attempted to communicate with the Respondent regarding Respondent’s use of the domain name; however, the Complainant received no response from the Respondent. This, in addition to a failure to respond to the Complainant’s Complaint, suggests that the Respondent has no rights or legitimate interests in the domain name at issue. See Home Interior & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000).

There is also no evidence that the Respondent has promoted or marketed goods or services in connection with the no domain in question. Failure to provide a good or service in connection with the site demonstrates that the Respondent does not have rights or a legitimate interest in the domain name. Policy ¶ 4(c)(i). See Ziegenfelder Co. v. VMH Enterprises, Inc., D2000-0039 (WIPO Mar. 14, 2000). In addition, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. Policy ¶ 4(c)(iii).

Neither is the domain name a mark by which the Respondent is commonly known. Policy ¶ 4(c)(ii). The mark, XTRA, has been used by the Complainant for over 17 years.

For the above reasons, the panel concludes that the Respondent has no right rights or legitimate interest in the domain name at issue.

Complainant asserts Respondent acted and is acting in bad faith. The Respondent has not denied that assertion.

The Respondent has failed to develop the site within a two-year period since registering the domain name. This raises the inference that the domain name was registered in bad faith. See American Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 18, 2000) (finding that a failure to develop the site in a two-year period creates an inference that the domain name was registered without a bona fide intent to use the name in good faith). Evidence of nonuse of a domain name for a period of time demonstrates use of the domain name in bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that passive holding of a domain name is evidence of use in bad faith).

The Respondent has also provided incomplete and inaccurate information in the WHOIS directory. For example, when the Complainant attempted to send e-mail to the Respondent, the Complainant received an error message. This, in addition to the Respondent’s failure to respond to the Complainant’s communication attempts, is evidence of bad faith. See America Online, Inc. v. QTR Corp., FA 92016 (Nat. Arb. Forum May 9, 2000) (holding that providing incomplete and/or false information in the WHOIS directory is evidence of bad faith).

The panel concludes that the Respondent registered and is using the domain name in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "XTRA.NET" be transferred from the Respondent to the Complainant.

July 17, 2000

Honorable Harold Kalina, Arbitrator

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