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ImproveNet v. Jason A.Yelowitz [2000] GENDND 833 (4 August 2000)

National Arbitration Forum

DECISION

ImproveNet, Inc. v. Jason A. Yelowitz

Claim Number: FA0006000095043

PARTIES

The Complainant is ImproveNet, Inc., Redwood City, CA, USA ("Complainant"). The Respondent is Jason A.Yelowitz, Sunnyvale, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

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

PANELIST(s)

Honorable Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/21/2000; The Forum received a hard copy of the Complaint on 06/23/2000.

On 06/27/2000, NSI confirmed by e-mail to The Forum that the domain name "IMPROVENET.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 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On 06/28/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/18/2000 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 Respondentís registration as technical, administrative and billing contacts by email.

On 07/18/2000, 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 07/21/2000, pursuant to Complainantís request to have the dispute decided by a Single Member panel, The Forum appointed Honorable Carolyn Marks Johnson 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 Forumís 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.

PARTIESí 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.

The Complainant asserts that the Respondent registered the domain name believing that it might develop significant value. The Complainant contends that it ceased discussions with the Respondent regarding domain name transfer when the Complainant felt that the Respondent would transfer the name for significantly more than nominal consideration.

1. Respondent

The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegation of the Complainant will be deemed true.

FINDINGS

Since January 1996, the Complainant has been engaged in the business of offering home-improvement services via the Internet. The Complainant uses the domain name <improvenet.com> as its domain name. The Complainant is the owner of the U.S. registration for the service mark IMPROVENET (registered: 03/31/1998; No. 2,148,190) for information services regarding home and building construction, decoration, maintenance and repair via telephone, facsimile, mail and global communication networks.

The Respondent registered the domain name in question on or about 02/10/1999. The Respondent has not developed the website that corresponds with the domain name in question. The Respondent is the Founder, Chairman, and Executive Vice President of iCastle.com, an Internet-based home-improvement business.

The Complainantís attorney initiated contact with the Respondent. In these discussions, the Respondent indicated that he registered the domain name believing that it might develop significant value someday. The Respondent later stated that he registered the domain name to use in connection with his business in case the Complainant ever went out of business someday. Discussions broke down when the Complainant believed that the Respondent was attempting to transfer the domain name for more than nominal consideration.

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 marks, IMPROVENET. The Respondentís domain name is identical to the Complainantís mark, except for the addition of the domain name level designation "net". See Internet America Inc v. Internet America, D2000-0355 (WIPO June 19, 2000) (finding that the domain name <internetamerica.com> is identical to Complaintís mark).

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 Respondent is not using the domain name in connection with a bona fide offering of goods or services. Policy  4(c)(i). The Respondent is also not making a legitimate noncommercial or fair use of the domain name, without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. Policy  4(c)(iii). Rather, the Respondent has made no use of the domain name since registration.

The domain name is not a mark by which the Respondent is commonly known. Policy  4(c)(ii). The Respondent does business under iCastle.com.

The panel concludes that the Respondent has no rights or legitimate interests in the domain name 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 Policy requires that the Respondent registered and used the domain name in bad faith. See World Wrestling Fed. Entertainment, Inc. v. Bosman, D0099-0001 (WIPO Jan. 14, 2000).

The Respondent indicated that he recognized the Complainantís oversight in neglecting to register its domain name with the ".net" designation. The Respondent also indicated to the Complainant that he registered the domain name realizing that it belonged to the Complainant and believing it might be valuable someday.

The Respondent has made no affirmative use of the domain name beyond registration over a year and a half ago. Passive holding of the domain name is use of the domain name in bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000 ("[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith").

The Respondent registered and used the domain name in question primarily for the purpose of disrupting the business of a competitor. Policy  4(b)(iii). This is evidence of bad faith. Policy 4(b)(iii).

The panel concludes 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, "IMPROVENET.NET" be transferred from the Respondent to the Complainant.

___________________________________________________

Honorable Carolyn Marks Johnson, Panelist

Dated: 08/04/2000

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