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Great Southern Wood Preserving v. TFA Associates [2000] GENDND 839 (5 August 2000)

National Arbitration Forum

DECISION

Great Southern Wood Preserving, Inc. v TFA Associates

Claim Number: FA0007000095169

PARTIES

The Complainant is Great Southern Wood Preserving, Inc., Abbeville, AL, USA ("Complainant"). The Respondent is TFA Associates, Concord, OH, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "GREATSOUTHERNWOOD.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 July 10, 2000; The Forum received a hard copy of the Complaint on July 10, 2000.

On July 12, 2000, NSI confirmed by e-mail to The Forum that the domain name "GREATSOUTHERNWOOD.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 ICANNís UDRP.

On July 12, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 1, 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 August 2, 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 August 3, 2000, pursuant to Complainantís 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 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.

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. The Respondent did not even punt.

FINDINGS

The Complainant has extensive common rights in the mark GREAT SOUTHERN WOOD. The Complainant has developed, at great expense and effort, a strong association between the mark and its products and services. The Complainant has developed a highly successful marketing campaign to promote its business and mark. Many of the Complainantís printed advertisements direct customers to the domain name in question.

Since 1996, the Complainant previously owned the domain name in question. However, its registration for the domain name expired when the registrar failed to renew the domain name upon thee date and the registration lapsed without the Complainantís knowledge or consent. The Complainant relied on the contractual obligations of the registrar to renew the domain name.

The Respondent registered the domain name on May 19, 2000. The Respondent uses the domain name as a portal site that links users to its website, <bestoftheweb.com>. This website includes links to numerous retail businesses with no association with the Respondent or the Complainantís mark.

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 mark GREAT SOUTHERN WOOD. The Respondentís domain name is identical to the Complainantís marks. 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).

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 domain name in question is not a mark by which the Respondent is commonly known. Policy  4(c)(ii). Rather, the Respondent is associated with the domain name <bestoftheweb.com>.

The Respondent has made no claim that it is using the domain name in connection with a bona fide offering of goods and services or is making a legitimate noncommercial or fair use of the site. Policy  4(c)(i), (iii). The Respondent has no association, presence, or brand awareness with the Complainantís mark. The Respondent is using a portion of the Complainantís mark to divert Internet users to its website.

Based on the above, 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 registered the domain name to use as a portal site to its website <bestoftheweb.com>. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentís website by creating a likelihood of confusion with the Complainantís marks as to the affiliation of the Respondentís website. Policy 4(b)(iv). See America Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that bad faith where the Respondent attracted users to a website sponsored by the Respondent). The Respondent has registered 13 other domain names that merely direct users to <bestoftheweb.com>.

Based on the above, the panel determines that the Respondent registered and used 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, "GREATSOUTHERNWOOD.COM", be transferred from the Respondent to the Complainant.

James A. Carmody, Judge (Ret.), Panelist
Dated: August 5, 2000