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InTest Corporation v. Servicepoint [2000] GENDND 986 (30 August 2000)

National Arbitration Forum

THE NATIONAL ARBITRATION FORUM

P.0. BOX 50191

MINNEAPOLIS, MINNESOTA 55405 USA

InTest Corporation )

Cherry Hill, NJ, USA )

Complainant ) DOMAIN NAME DISPUTE

) ADMINISTRATIVE PANEL DECISION

)

)

Vs )

) Forum File Number: FA0007000095291 Servicepoint )

St.Petersburg, Russia )

Respondent )

)

)

REGISTRAR AND DISPUTED DOMAIN NAME:

The domain name at issue is "TESTDESIGN.COM ", registered with Tucows.com. Inc.

PANELIST:

The panelist, Louis E. Condon, certifies that he has acted independently and impartially and to the best of his 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 07/26/2000; The Forum received a hard copy of the Complaint on 07/26/2000.

On 08/02/2000, Tucows.com confirmed by e-mail to The Forum that the domain name "TESTDESIGN.COM" is registered with Tucows.com and that the Respondent is the current registrant of the name.

On 08/03/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/23/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts, and to HYPERLINK mail to: postmaster@ testdesign.com; and postmaster@testdesign.com by e-mail. 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 29, 2000, pursuant to Complainantís request to have the dispute decided by a Single Member panel, The Forum appointed Louis E. Condon 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 Forumís Supplemental Rules and any rules and principals 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.

PARTIES CONTENTION:

1. Complainant

The Testdesign name is an established business, with a significant stake in the brand equity of the company name, Testdesign. The Testdesign name is a trademark of the Testdesign Division of InTEST Corporation. Additionally, Testdesign has faithfully maintained the Testdesign domain for several years.

The Complainant asserts that the Respondent has no legitimate business claim to use the trademark "Testdesign" name, nor do they have any intention but to sell or turnover the domain name to another third party (bad faith registration of a domain name).

2. Respondent

The Respondent has not contested the allegations of the Complaint.

The Respondentís failure to submit a response does not relieve the Complainant of its burden of proof to prove the elements in Policy Paragraph 4.a.(i)-(iii). However, the Respondentís failure to deny any of the Complainantís assertions permits the Panel to take the Complainantís assertions as true and to draw appropriate inferences. ICANN Rule 14(b).

FINDINGS:

The annual invoice from NSI for the domain name registration was not paid by the Complainant, which has resulted in the loss of the domain name. The invoice was not paid as a result of the culmination of several events, including personnel turnover in the accounts payable department and the company moving its place of business to a new address. The non-payment was completely unintentional, and by the time the Complainant was aware of the non-payment and subsequent cancellation, the domain name had been "bought" by someone else.

A company named Fiducia Domain originally purchased the domain name after the Complainantís registration expired. Fiducia Domain then sold or transferred the domain name to the Respondent.

The Respondent has made no use of the domain name.

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 canceled 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 used in bad faith.

Identical and/or Confusingly Similar:

The Complainant has rights in the registered trademark, TESTDESIGN. The Respondentís domain name is identical to the Complainantís registered mark.

Rights or Legitimate Interests

The Respondent has submitted no response in this matter. Policy Paragraph 4.c.(i)-(iii) provides circumstances which demonstrate rights and legitimate interests in domain a name. Respondent has made no showing with respect to any of the Policy Paragraph 4.c factors which would indicate any rights in the name.

The Respondent is not commonly known by the TESTDESIGN mark, which entirely comprises the domain name. Instead, the Respondent is known by the name Servicepoint. Policy Paragraph 4.c.(ii).

The Respondent has made no use of the domain name. The Respondent has not offered any bona fide goods or services in connection with the domain name nor used it for any legitimate noncommercial purpose. Policy Paragraph 4.c.(i)-(iii).

The Panel concludes that the Respondent has no rights or legitimate interests in the domain name.

REGISTRATION AND USE IN BAD FAITH

The Complainant contends that the Respondent has engaged in bad faith. The Respondent has not denied this contention.

The Complainant owned and used the domain name in question for a long period of time prior to the Respondentís registration of the domain name. As a result of this use, the domain name is obviously connected to the Complainantís business operations, goods and services. Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.

The infringement on the Complainantís mark has disrupted the Complainantís business operations. As a result of the loss of the domain name, the Complainantís personnel were not able to access their e-mail accounts nor conduct business over the Internet with customers or suppliers. This was a natural result of Respondentís conduct which Respondent knew or should have known would occur. Policy Paragraph 4.b.(iii). Provides that a domain name was registered and used in bad faith if the domain name was registered primarily for the purpose of disrupting the business of a competitor. Although the Respondent has not been shown be a direct competitor of the Complainant, in these circumstances, the acts of the Respondent and the Respondentís predecessor indicate a bad faith intent to disrupt the Complainantís operation.

The Respondent has made no use of the domain name in question. Passive holding of a domain name is evidence of bad faith.

The Policy indicates that its listing of bad faith factors in Paragraph 4.b. is without limitation. Given the prior ownership of the domain name, the disruption of the Complainantís business operations due to the Respondentís registration of the domain name, the Respondentís failure to submit any evidence of a good faith purpose, the Panel concludes 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 the fore-going reasons, IT IS ORDERED that the domain name "TESTDESIGN.COM" be transferred from the Respondent to the Complainant.

Louis E. Condon

August 30, 2000

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