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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Calvert Group, Ltd. v. Joseph Pagano, Jr.
Claim Number: FA0006000095068
PARTIES
The Complainant is Calvert Group, Ltd., Bethesda, MD, USA ("Complainant"). The Respondent is Joseph Pagano, Chicago, IL, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "KNOWWHATYOUOWN.COM", registered with Network Solutions Inc. ("NSI").
PANELIST(s)
The Honorable Paul A. Dorf (Ret.)as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/26/2000; The Forum received a hard copy of the Complaint on 06/26/2000.
On 06/28/2000, NSI confirmed by e-mail to The Forum that the domain name "KNOWWHATYOUOWN.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 06/29/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/19/2000 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.
On July 20, 2000 pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed The Honorable Paul A. Dorf (ret.) as Panelist.
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 by registering the domain name that is the subject of this Complaint, has created confusion among its customers as the domain name is identical or confusingly similar to the Complainant’s trademark brand for researching potential investments, which is used as a interactive tool on its website. Also, the Respondent has registered the domain names in bad faith and is engaged in the business of cyber squatting for profit.
B. Respondent
The Respondent contends that he did not register the domain name in bad faith, but instead to coincide with the catch-phrase he came up with for his business.
FINDINGS
The Complainant is engaged in the business of managing the nation’s first and largest family of socially responsible mutual funds. It is their philosophy that their shareholders can make sound investments without compromising their values. In addition to assessing the economic viability of potential investments, companies are evaluated according to specific social and environmental criteria designed for each of the Complainant’s funds. In conjunction with the Complainant’s commitment to social responsibility they developed the Know What You Own® brand in April, 1996.
On July 1, 1997 Complainant was issued trademark registration 2,075,786 by the United States Patent and Trademark Office for Know What You Own® and currently uses this trademark in its advertising materials and as an interactive tool on its website in connection with the Know What You Own® service.
When the Complainant attempted to register the domain name that is the subject of this Compliant in July 1999, it was discovered that the Respondent had registered the same name just days before.
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 has a valid trademark registered with the U.S. Patent and Trademark Office for Know What You Own. The Respondent’s registration of this domain name may create confusion to the public as the stated intent for the website to explain technology produced by important tech companies in clear, non-technical language. This is also confusingly similar to the service offered by Complainant under its Know What You Own® service.
Rights or Legitimate Interests
Respondent has no legitimate interest in the domain name as Complainant’s registration of the trademark Know What You Own® pre-dates Respondent’s registration of the domain name.
Further, Respondent’s argument that the idea of "knowing what you own" is a logical extension of all investing activities does not justify that he has any rights or legitimate interests in the domain name.
Registration and Use in Bad Faith
The Respondent offered to transfer for the domain name to the Complaint for the sum of $10,000, which far exceeds any out-of-pocket costs that may have been directly related to the registration of the domain name.
Also, the Respondent failed to develop the website beyond the "under construction" phase. This appears to be an attempt by the Respondent to disrupt the Complainant’s business.
DECISION
As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted.
Accordingly, for all of the foregoing reasons, it is ordered that the domain name "knowwhatyouown.com" be transferred from the Respondent to the Complainant.
The Honorable Paul A. Dorf, (Ret).
Dated: July 27, 2000
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URL: http://www.worldlii.org/int/other/GENDND/2000/778.html