Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Benefitslink.com, Inc., Orlando, FL, USA ("Complainant"). The Respondent is Mike Haynes, Nashville, TN, USA ("Respondent").

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

James A. Crary as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/10/2000; The Forum received a hard copy of the Complaint on 07/10/2000.

On 07/11/2000, NSI confirmed by e-mail to The Forum that the domain name "EBENEFITSLINK.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. Complaint asked that a Single Member panel decide the matter.

On 07/13/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/02/2000 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.

A response was received by the Forum on August 1, 2000. Respondent agreed that the Panel would consist of Single Member panel.

On August 2, 2000, pursuant to agreement of the parties to have the dispute decided by a Single Member panel, The Forum appointed James A. Crary as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

The Complainant is the owner of the mark BENEFITSLINK which was registered in Florida April 20, 1995.

The Complainant has used "BenefitsLink" mark in connection with goods and services which it markets through it’s benefitslink.com website. Complainant provides a free nationwide link to information and services for employers sponsoring employee benefit plans, companies providing products and services for plans, and participating employees.

Upon learning of the registration of ebenefitslink.com with Network Solutions, Complainant attempted to resolve the conflict between it’s BENEFITSLINK servicemark and the disputed domain name. Respondent refused to refrain from using the domain name unless Complainant would "spend a few hundred dollars to buy the domain name outright".

The Complainant maintained that the domain name was confusingly similar to Complainant’s trademark or servicemark, that Respondent had no rights or legitimate interests in respect to the domain name.

Respondent had used the domain name in bad faith. The primary purpose in registering the domain name was to sell or transfer the registration to the Complainant in exchange for consideration in excess of out of the pocket costs directly related to the domain name. It was also alleged that Respondent had registered the domain name to prevent the trademark owner from reflecting it’s mark in a corresponding domain name and that there existed a pattern of such conduct by the Respondent.

B. Respondent

At the time of the registration of ebenefitslink.com Respondent worked at the ETS subsidiary of Near North National Group (NNNG) an insurance brokerage company which actively designed webpages and offered related services for the benefits community. Respondent asserted that the registration of the disputed domain name was in direct relation to his involvement with NNNG.

Respondent also asserted that he was actively involved with two other "consulting arrangements" that involved legitimate interests in the disputed domain name as well as other domain names. Neither Willis Corroon Corporation nor National Federation of Independent Businesses could be considered competitors to Complainant.

Respondent asserted he currently worked for eConception.com which was said to be an internet incubator which invested in internet companies such as the one planned for the disputed domain name. Respondent further asserted that he registered domain names in good faith in anticipation of forming businesses.

Respondent denied bad faith registration of the domain name citing his reply to Complainant’s initial E-mail indicating he intended to create a website called ebenefitslink.com and made no attempt to sell the disputed domain name.

Respondent maintained that "in good faith, I invited Complainant to make an offer." Respondent also maintained that he offered to sell the disputed domain name for "a few hundred dollars, reflecting out of pocket expense in the amount of $119 to Network Solutions and $200 for logotype design".

Respondent denied a pattern of conduct whereby he registered domain names in order to prevent the owners of trademark or servicemarks from reflecting their marks in corresponding domain names. It was suggested that "the panel feel free to contact the purchasers of iStash.com and ViaXML.com to verify the good faith nature of my dealings".

Respondent also asserted that Complainant was attempting to improperly hijack ebenefitslink.com without reasonable compensation.

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 panel concluded that the disputed domain name ebenefitslink.com was confusingly similar to the BENEFITSLINK trademark and Complainant’s benefitslink.com website.

The Complainant’s allegations concerning being engaged in providing goods and services to the employment benefits community is unrebutted. Complainant has offered it’s goods and services over the internet for approximately 5 years and as such the term BenefitsLink, the Complainant’s trademark has acquired secondary meaning which is much broader than the geographic boundaries of it’s Florida registration. Since it’s primary means of doing business is over the internet it’s focus was on employee benefits in the national market of the United States. In recognition of its market and the secondary meaning, the trademark had acquired Complainant further sought to establish and protect its trademark with a pending application before the US Patent and Trademark Office.

The Respondent simply added the letter "e" to Complainants trademark to form the disputed domain name. The Panel concluded that the disputed domain name is confusingly similar to Complainants mark.

The panel concluded that the Respondent had no right or legitimate interest with respect to the disputed domain name. The Policy at 4 (c) sets forth the types of circumstances that support or demonstrate rights or legitimate interests in a domain name. The greater weight of the evidence however did not support that Respondent had made use of or demonstratable preparations for use of the domain name in connection with a bona fide offering of goods or services. The Respondent alludes to certain associations, employments, and consultations in the response but provides no supporting evidence.

The Respondent does not assert that he had been commonly known by the disputed domain name. No website was ever established. The Respondent has been engaged in internet related ventures but not ventures related to employee benefits.

The Respondent does not allege he was making a legitimate noncommercial or fair use of the domain name in a noncommercial endeavor.

The panel finds that the Respondent did not acquire rights or legitimate interests in the disputed domain name by the mere registration. There is no authority for that proposition. In addition, such a conclusion would tend to defeat the purposes of the Policy itself. It was therefore concluded that the Claimant had no right or legitimate interest in the disputed domain name.

4 (b) (1) of the Policy provides that "the following circumstances….shall be evidence of the registration and use of a domain name in bad faith: . . . circumstances indicating that you have registered or have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or servicemark . . . for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name."

Respondent offered to sell the Complainant the disputed domain name for a "few hundred dollars." The response alludes to a $119 paid to Network Solutions and $200 for logotype design. The evidence supported a finding that the disputed domain name was offered for sale for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. The Respondent didn’t submit documentation regarding out-of-pocket costs directly related to the domain name. He alluded to costs but did not document costs.

Respondent’s suggestion that the panel "feel free to contact the purchasers of iStash.com and ViaXML.com to verify the good faith nature of my dealings" would be improper. It is not the role of the panel to conduct an independent investigation outside the materials submitted in the record.

Based on the above findings and discussion it was ordered that the disputed domain name ebenefitslink.com be transferred to the Complainant.