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Matthew Strebe v. 3Sixty Market View [2000] GENDND 923 (18 August 2000)

National Arbitration Forum

DECISION

Matthew Strebe, )

Strebe Corporation and )

Connetic )

PARTIES

The Complainant is Matthew Strebe, Strebe Corporation and Connetic, Kennett Square, PA, USA ("Complainant"). The Respondent is 3Sixty Market View, Morgan Hill, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain names at issue are "CONNETIC.COM", "CONNECTISYSTEMS.COM", and "CONNETICNETWORKS.COM", registered with Network Solutions Inc. ("NSI").

PANELIST

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/13/2000; The Forum received a hard copy of the Complaint on 07/13/2000.

On 07/18/2000, NSI confirmed by e-mail to The Forum that the domain names "CONNETIC.COM", "CONNETICSYSTEMS.COM", and "CONNETICNETWORKS.COM", are 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 ICANN’s UDRP.

On 07/19/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/08/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail.

On July 19, 2000, pursuant to Complainant’s request to have the dispute decided by a single-member panel, the Forum appointed the undersigned, Robert R. Merhige, Jr., as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain names "CONNETIC.COM," "CONNETICSYSTEMS.COM," and "CONNETICNETWORKS.COM" registrations and linking mechanisms be transferred to it.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent’s domain names which are the subject of this controversy are identical or confusing with its claimed mark, "CONNETIC." Complainant also alleges that Respondent has no rights or legitimate interest in the aforementioned domain names and that the registration of same has been in bad faith.

Complainant further contends that Respondent is attempting to hold the names hostage at Complainant’s expense.

B. Respondent

Respondent asserts that it has registered the names "CONNETIC.COM," "CONNETICSYSTEMS.COM," "CONNETICNETWORKS.COM" and all other variations of these names in .net and .org on behalf of its client.

Respondent denies that it has acted in bad faith in registering the domain name in issue.

FINDINGS

Having concluded that Complainant has failed to satisfy the undersigned by the greater weight of the evidence that the Respondent has violated paragraph 4(a), subsections (ii) and (iii), the request that the domain name be cancelled or transferred must be denied.

DISCUSSION

Respondent is a three-year old marketing consulting firm working with a variety of technology-based companies. One of its clients retained Respondent for the purpose of developing a new company name as well as a new product line strategy. In the process of developing appropriate names for use by its client, Respondent enlisted its client’s internet service provider, Festiva, Inc., to assist in securing URLS, a potential corporate and/or product names.

Respondent as a marketing consulting firm developed the domain name in issue for use by a client, then known as Digital Microwave Corporation, now known as DMC Stratex Networks, Inc., a 17-year, $500,000,000 telecommunications company with 27 international offices.

Respondent contends that it presented a series of more than 40 suggested names to its client for its consideration. The word "Connetic" for its obvious connection affiliation to telephony as well as its kinetic variation, was one of the names chosen and submitted to its client. It’s client, however, through its executive staff and subject to approval of client shareholders, chose the name "DMC Stratex Networks, Inc." It is represented by the record herein that the issue of approval would be presented to the appropriate individuals at a meeting scheduled for August 2000.

Respondent contends that as part of these names’ presentation to its client, it developed a full marketing campaign strategy around each name. As a consequence, it estimates that its clients spent an average of $7,000 per name to insure full legal availability and marketability. The record reflects as well that Respondent had registered the domain name "CONNETIC.COM" with Network Solutions on April 18, 2000; however, that name was determined to be inappropriate for its client’s use. Thereafter, an effort was made by the instant Complainant to purchase from the Respondent the URL "CONNETIC.COM." Respondent replied to the effort by Complainant that the URL was available for $2500 which it deemed to be nominal and justified given the expense that had been incurred by its client.

The record reflects as well that Complainant’s web site lists only a title page and is devoid of any text or information.

The record additionally discloses that there are a number of what appear to be commercial entities whose principal name is "Connetic"-based or variations of the word "Connetic." Additionally, there are similarities and/or variations in corporate names, trademarks, and/or products existing worldwide being utilized by some of the businesses for in excess of 10 years.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical and/or Confusingly Similar

Under the Policy, it is clear that the domain names registered by Respondent, "CONNETIC.COM," "CONNETICSYSTEMS.COM" and "CONNETICNETWORKS.COM" are substantially similar to the names in issue.

B. Rights or Legitimate Interest

Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate interest in a domain name includes: (i) demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute; (ii) indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or (iii) legitimate, non-commercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

C. Registration and Use in Bad Faith

In determining whether the domain names in issue have been registered and are being used in bad faith, we are guided by paragraph 4(b) of the Policy which informs us that evidence of bad faith may be established by:

Rule 15(a) mandates that an arbitrator shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that the arbitrator deems applicable. A guiding principal of law is that a Complainant must prove his, hers, or its claims by the greater weight of the evidence, in short by a preponderance – it follows of course that a decision must be based on evidence – devoid of speculation or conjecture.

In the instant matter, I conclude the following: Complainant has failed to establish material aspects of the Uniform Domain Name Dispute Resolution Policy as required by paragraph 4(a)(2) and 4(a)(3) of said Policy.

The evidence is uncontradicted that the domain names were intended to be used by its client in connection with a bona fide offering of goods and/or services.

DECISION

For the reasons aforesaid, Complainant’s request that the domain names in issue be transferred to it is hereby denied.

Robert R. Merhige, Jr.

Dated: August 18, 2000