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Vertical Solutions Management v. webnet-marketing [2000] GENDND 790 (31 July 2000)

National Arbitration Forum

DECISION

Vertical Solutions Management, Inc. v. webnet-marketing, inc.

Claim Number: FA0006000095095

PARTIES

The Complainant is Vertical Solutions Management, Inc., Timonium, MD, USA ("Complainant"). The Respondent is webnet-marketing, inc., Bethesda, MD, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

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

PANELIST

Hon. James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on June 30, 2000; The Forum received a hard copy of the Complaint on June 30, 2000.

On July 5, 2000, NSI confirmed by e-mail to The Forum that the domain name "VSM.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 July 6, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 26, 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 26, 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 28, 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 in the case file, 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 and confusingly similar 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. As a result, all reasonable inferences of fact in the allegations of the Complainant will be deemed true.

FINDINGS

The Complainant owns the U.S. service mark registration for the mark, VSM (registered January 13, 1992; No. 1,724,744) for providing management consulting service and consulting services in the field of computer operations.

The Respondent registered the domain name in question on November 4, 1997. The website located at this domain name is not active.

In telephone communications between the Respondent and Complainant, the Respondent agreed to transfer the domain name to the Complainant based on the Complainant’s registered service mark.

The Respondent recommended that an ICANN UDNDRP action be filed to substantiate the transfer of the domain name to the Complainant.

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.

The Complainant has rights in the registered service mark, VSM. The Respondent’s domain name is identical to the Complainant’s mark, except for the addition of the ".com" suffix. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as "net" or "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

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

The Respondent is not commonly known by the domain name in question. Policy ¶ 4(c)(ii). Rather, the Respondent is known by the name, webnet-market, inc.

The Respondent has not claimed to use the domain name in connection with any bona fide offering of goods or services nor for any legitimate or fair noncommercial use. Policy ¶ 4(c)(i), (iii). Rather, the Respondent has consented to transfer the domain name to the Complainant.

The panel concludes that the Respondent has no rights or legitimate interests in the domain name in question.

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

The Respondent has agreed to willingly transfer the domain name to the Complainant based upon the Complainant’s registered service mark application. The Respondent suggested that this ICANN dispute resolution process be initiated to any possibility that any other organization could make a claim against the Respondent based on its decision to transfer the domain name to the Complainant.

The Respondent has not developed the website located at the domain name in question. Passive holding of a domain name is evidence of bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).

The Respondent’s consent to transfer the domain name, in addition to the failure to develop the site, lead the panel to conclude that the domain name was registered and used 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, "VSM.COM" be transferred from the Respondent to the Complainant.

James A. Carmody, Judge (Ret.), Arbitrator
Dated: July 31, 2000