Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Black Grouper, Inc., Key West, FL, USA ("Complainant"). The Respondent is Paradise Promotions, Key West, FL, USA ("Respondent").

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

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on May 22, 2000; The Forum received a hard copy of the Complaint on May 22, 2000.

On May 30, 2000, NSI confirmed by e-mail to The Forum that the domain name "KEYWESTSEAFOODMARKET.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 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On June 14, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 5, 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. The Respondent requested an extension, setting a deadline of July 17, 2000. The Respondent requested a second extension of time to respond. The Forum Director of Case Management denied this second extension.

On July 17, 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 18, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody 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.

The Complainant requests that the domain name be cancelled.

A. Complainant

The Complainant operates a domestic seafood retail business and does business under the name Key West Fresh Fish Market. It sells seafood for home delivery via the Internet and telephone. In December 1997, the Complainant registered the website <keywestseafood.com> to market its services on the Internet. The Complainant has filed for U.S. trademark registration for the mark "keywestseafood.com".

In January 1999, the Complainant began leasing space from Independent Fisheries, a wholesale seafood market. Independent Fisheries supplies products to the Complainant.

On June 10, 1999, the Respondent, through its agent, Robert Hopcraft, registered the domain name in question. The website located at this domain name was launched in December 1999. The Respondent uses this website to market its domestic seafood retail business. Many of the Respondent’s products are identical to the Complainant’s products. The Respondent uses the same packing materials, suppliers, and overnight shipping service as the Complainant.

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.

The Complainant has rights in the mark, KEYWESTSEAFOOD.COM, through its common law usage and its filing for U.S. trademark registration.

The Respondent’s domain name is confusingly similar to the Complainant’s mark. Adding the generic term "market" does not alter the mark held by the Complainant. See General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term "direct" on to the Complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the Complainant, and thus the Respondent’s domain names are confusingly similar).

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 domain name in question is not a term by which the Respondent is commonly known. Policy ¶ 4(c)(ii). Rather, the Respondent is using a slight variation of the Complainant’s mark to offer competing services.

The Respondent has made no claim that it is using the domain name in connection with a bona fide offering of goods and services nor for a legitimate or fair use. Policy ¶ 4(c)(i), (iii). The Respondent registered the domain name two years after the Complainant established its Internet seafood business. See Hewlett-Packard v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the Respondent had no legitimate interest in the domain name, <openmail.com>, that was being used to compete with the Complainant’s e-mail services).

For the preceding reasons, the panel determines that the Respondent has no rights or legitimate interest in the domain names in question.

The Respondent has not responded to the Complaint and, therefore, does not deny that the domain name was registered and is being used in bad faith, as alleged by Complainant.

The Respondent registered and is using the domain name in question to disrupt the business of a competitor. Policy ¶ 4(b)(iii). Since the Respondent registered a domain name that is confusingly similar with the Complainant’s domain name, uses similar wholesale companies as the Complainant, and uses the same shipping materials and shipping company as the Complainant, it is clear to the panel that the Respondent knew of the Complaint’s business and corresponding mark when registering the domain name. The Respondent is attempting to profit from the Complainant’s established mark and successful business.

For these reasons, the panel finds that the Respondent registered and used the domain name in question in bad faith. See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands).

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, "KEYWESTSEAFOODMARKET.COM" be cancelled.