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I.H.N. Awareness v. The Web People [2000] GENDND 940 (22 August 2000)

National Arbitration Forum

DECISION

I.H.N. Awareness, Inc. v. The Web People

Claim Number: FA0007000095117

PARTIES

The Complainant is I.H.N. Awareness, Inc., Lewis Center, OH, USA ("Complainant"). The Respondent is The Web People, Columbus, OH, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain names at issue are "FOREVERYOUNG.COM" and "IHNAWARENESS.COM", registered with Network Solutions Inc ("NSI").

PANELIST

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

Honorable Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/07/2000; 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 names "FOREVERYOUNG.COM" and "IHNAWARENESS.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 07/17/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/07/2000 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 08/08/2000, 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 08/08/2000, pursuant to Complainant’s 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, 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 names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered two domain names that are 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 names, and that the respondent has registered and is using the domain names in bad faith.

The Complainant asserts that the Respondent has fraudulently become the Registrant of the domain names and has registered the domain names primarily for the purpose of selling, renting, or transferring the domain names to the Complainant or another entity for commercial gain. The Complainant contends that the Respondent is holding the domain names hostage.

The Complainant contends that the Respondent has no use for these domain names other than to deprive the Complainant of its domain names and to acquire commercial gain from the wrongful registration of the domain names.

1. Respondent

The Respondent submitted no response in this matter.

FINDINGS

The Complainant was incorporated on April 22, 1996. The Complainant has licensed products that promote awareness of healthy lifestyle choices for adults who are age 30 and older. In addition, the Complainant has assisted in the development of supplements intended to enhance the physical workout experience. The Complainant also developed the television series entitled "Bill Frank’s Forever Young."

The Complainant has acquired trademark rights in the mark FOREVER YOUNG and I.H.N. Awareness through actual, continuous, and extensive use of these marks in connection with its services and products since 1996. The Complainant has applied for U.S. trademark registration of the mark FOREVER YOUNG.

The Complainant hired the Respondent to register the domain names in question plus one other domain name, <awarecare.com>. The Respondent informed the Complainant that it was able to obtain the registration of "awarecare.com" and "ihnawareness.com" but could not obtain "foreveryoung.com" because it was registered by a third party. The Complainant paid the Respondent for the 2 domain names obtained.

When "foreveryoung.com" became available, the Respondent registered it in its own name. Also, the Respondent registered "ihnawareness.com" in its name instead of the Complainant’s name, even though the Complainant had already paid for this domain name. The Respondent remains the owner of the domain names in this question. The Respondent has refused to transfer these domain names to the Complainant.

DISCUSSION

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:

(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.

Since the Respondent has failed to submit a response in this matter, the panel will find all reasonable inferences in favor of Complainant.

The marks FOREVER YOUNG and I.H.N. AWARENESS have sufficient secondary association with the Complainant. The Complainant has common law rights in the marks FOREVER YOUNG and I.H.N. AWARENESS. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name "Julia Roberts" has sufficient secondary association with the Complainant that common law trademark rights exist).

The Respondent’s domain names are identical to and confusingly similar to the Complainant’s marks. 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 known by the name, "The Web People." Respondent has no connection to the Complainant’s business or goods and services other than the agreement to register the domain names in question. Respondent is not commonly known by a name that is identical to or similar to the domain names in question. Policy ¶ 4(c)(ii). See Compangnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from the Complainant to use the trademarked name).

The Respondent has not used the domain names to offer bona fide goods or services. Policy ¶ 4(c)(i). The Respondent has not used the domain names to offer fair or legitimate noncommercial services. Policy ¶ 4(c)(iii). Rather, the Respondent is attempting to exploit a business agreement with the Complainant by refusing to transfer the domain names to the Complainant.

The Complainant asserts that the Respondent registered and used the domain name in bad faith. The Respondent has not denied that assertion.

ICANN Policy requires that the Complainant prove registration and use in bad faith. See World Wrestling Fed. Entertainment, Inc. v. Bosman, D0099-0001 (WIPO Jan. 14, 2000). The Policy lists circumstances showing bad faith; however, this list is not exclusive. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) ("[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith"). In this case, the Respondent clearly has registered and used the domain names in bad faith.

Upon registering the domain names, Respondent obviously knew of Complainant’s marks. Instead of completing the transfer of the domain names as agreed, Respondent registered and retained the domain names. The only reasonable inference is that Respondent retained the domain names for the purpose of selling them to Complainant or to a competitor of Complainant for valuable consideration in excess of out of pocket expenses. Policy ¶ 4(b)(i). This is evidence of bad faith registration of the domain names.

Respondent has made no legitimate use of the domain name since registration. Passive holding of the domain name with the knowledge that it infringes on a trademark of another is evidence of use in bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).

The panel concludes that the domain names were 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 names, "FOREVERYOUNG.COM" and "IHNAWARENESS.COM", be transferred from the Respondent to the Complainant.

___________________________________________________

Honorable Carolyn Marks Johnson

Dated: 08/23/2000

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