Generic Top Level Domain Name (gTLD) Decisions

The Complainant is H2 Design Group, Inc. , Pittsburgh, PA, USA ("Complainant") represented by Kirk D. Houser, Eckert Seamans Cherin & Mellott, LLC. The Respondent is Summertime Ent., West Valley, UT, USA ("Respondent").

The domain name at issue is "h2design.com", registered with Network Solutions.

The undersigned 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.

James A. Crary as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on November 15, 2000; The Forum received a hard copy of the Complaint on November 15, 2000.

On November 17, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "h2design.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On November 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 18, 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 postmaster@h2design.com by e-mail.

On December 19, 2000, pursuant to Complainantís request to have the dispute decided by a One 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 a major provider of Internet-solutions and e-business applications to Fortune 500 companies. Services include marketing, Internet-solutions relating to various computer services, designing, implementing and maintaining web sites, commercial art design, printing design and graphic art design. Complainant provides specialized e-business solutions for a wide variety of industries and companies.

The Complainant is the owner of the service mark "H2DESIGN" (USPTO #2,230,880 for computer services, designing, implementing and maintaining web sites, commercial art design, printing design, and graphic arts design.

Complainant uses its mark in association with designing and implementing and maintaining web sites. Complainantís service mark figures prominently with services offered by the Complainant based on Complainantís use of its mark consumers clearly identify the mark with Complainant. Common law trademark rights are supported by the use of the mark in commerce since April 30, 1991 and in Interstate commerce since June 19, 1992. Complainant has acquired considerable goodwill and value in the mark as intellectual property.

The disputed domain name h2design.com is essentially identical and confusingly similar to the Complainantís service mark. The service mark includes both H2 and DESIGN, both of which are used exactly in the same sequence in the disputed domain name h2design.com. Respondent has improperly used the disputed domain name in association with "web design" services. Consumers using the Internet seeking web design services would be confused as to the origin of the services since they would be confronted with the choice of Complainantís mark and itís web design services and the disputed domain name registration of Respondent.

Respondentís improper use of Complainantís mark in association with web sites directed at Internet and e-commerce industries and web site design give rise to the likelihood of confusion to consumers seeking information on the Internet about the Complainantís and itís services.

Complainant maintained that Respondent had no rights or legitimate interests in respect to the disputed domain name. There was no indication that H2DESIGN is part of Respondentís name or part of legitimate business in which Respondent had an interest. Respondent did not have any US trademark or service mark application or registration nor did it possess valid common law rights nor any other right or legitimate interest in the disputed domain name.

Respondent admitted that the disputed domain name h2design.com has "no real use Ö except in monetary value". It was further submitted that Respondent could not demonstrate right or legitimate interest in the disputed domain name.

Bad faith was alleged. Complainant maintained that Respondent registered and acquired h2design.com primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of Respondentís documented out-of-pocket costs directly related to the domain name registration. The correspondence between the Respondent and Complainant was evidence of bad faith. Respondent was seeking to get the best price for the disputed domain name since it offered to sell the name for $35,000, clearly in excess of costs related to the domain name registration. Complainant counter offered on October 9, 2000 offering $100 for a successful transfer of h2design.com to the Complainant.

Respondent admitted that it was seeking the best possible price for the disputed domain name through contacts with another party.

Bad faith was alleged in that Respondent was intentionally attempting to attract for commercial gain Internet users to itís web sites h2design.com and sumsumsummertime.com by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation and endorsement of Respondentís web sites or services offered on Respondentís web sites. (Sumsumsummertime.com is not the subject of the complaint herein). Internet users using H2DESIGN as a search string are linked to Respondentís two web sites which offer web design services, the same services covered by Complainantís service mark registration thus creating a likelihood of confusion with Complainantís mark at the source, sponsorship, affiliation, or endorsement of Respondentís web sites and services provided on those sites.

Complainant through its counsel demanded Respondent cease and desist the improper use of the domain name h2design.com. A follow-up letter was sent by overnight courier and e-mail to the Respondent on September 22, 2000. Respondent through itís representativeís letter of September 28, 2000 acknowledging Complainantís demand with respect to the disputed domain name. Thus it was asserted that the Complainant registered and used the domain name in bad faith.

B. Respondent

Respondent asserted that it is the owner of Summertime Enterprises, Inc. It was asserted that Respondent was engaging in a backdoor legal maneuver. Complainant through its attorney manipulated verbal conversations in order to "steal" property rights to which it was not entitled. It was asserted that the Complainant neglected to register the "appropriate domain name to protect its business identity". It was asserted Complainant was victimizing Respondentís start-up company by using strong-arm tactics.

Respondent agreed that it registered the disputed domain name which "could cause confusion for customer of Complainant."

Respondent asserted it was unaware of the existence of H2DESIGN Group when it registered the disputed domain name.

Respondent maintained that it was unaware because Complainant had failed to "reveal their presence since they failed to comply with registration requirements."

Respondent had h2design.com on-line for several months before Complainantís attorney contacted Respondent. Respondent agreed that "our site should not interfere with "Complainantís established business". It was asserted that Respondent had never intended to do so and voluntarily removed the site from public access.

Respondent asserted that there was "little or no relationship between the property rights that accompany a registered domain name and the ownership of a registered US Trademark". Respondent asserted that ownership of a trademark "does not dictate the ownership of a domain name or vice versa".

It was asserted that Complainant failed to follow the rules by not registering their trademark as a domain name. Complainant was attempting to use its trademark rights as justification for taking away property rights from a legitimate company that legally owns the disputed domain name. Since there was no web site currently in existence that could confuse Complainantís customers, Complainantís argument related to trademarks and domain names was flawed.

Respondentís comments regarding "no real use" for the domain name "except in monetary value" were misconstrued by Complainant, comments were made after the web site was taken off-line. Respondent asserted a legitimate interest in the domain name as a vehicle for launching a new web site marketing plan that was intended to create a different platform for the business. When it was realized that a conflict with an existing business existed. Respondent "did the right thing and removed the site". The disputed domain name, however, was still Respondentís property.

It was asserted that Complainant did not attempt to negotiate with Respondent in a sensible and reasonable manner, pursuing a course of intimidation and harassment, using legal expertise to out maneuver Respondent and capture the disputed domain name.

The Complainant is the owner of the service mark H2DESIGN, registered with the United States Patent and Trademark Office. Registration number 2,230,880 for computer services, designing, implementing and maintaining web site commercial art design, printing design, and graphic art design.

The Respondent provides Internet and web site related services including web site design, page design, web site creation services, site design tips, site design software, as well as other services.

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.

The evidence supports a finding that the disputed domain name h2design.com is identical to Complainantís service mark. The ".com" suffix denoting second-level domain status in Respondentís domain name does not affect the fact that the name is identical to Complainantís mark. See Julia Finona Roberts v. Russell Boyd, D2000-0210 (WIPO May 29, 2000), holding that Julia Roberts.com is identical to Julia Roberts.

There is no evidence to indicate that Respondent was commonly known by the domain name in question. Respondent offers no rationale or explanation as to why the disputed domain name was adopted. Although Respondent asserts it was unaware of Complainantís existence, Respondent offered no explanation as to why Respondent chose to register H2Design. Instead Respondent maintains that Complainant was at fault by failing to "follow the rules" by registering its trademark as a domain name. The Uniform Domain Name Dispute Resolution Policy does not impose any registration obligation on trademark owners. Rather the Policy imposes an obligation on those who register domain names not to register for an unlawful purpose or use of the domain name in violation of any applicable laws or regulations (UDRP Section 2(c) and (d)). It was concluded the Respondent did not have rights or legitimate interests in the disputed domain name.

It appeared from the evidence that both Complainant and Respondent do business in the same fields. Both offer design services related to the Internet, web sites, and the conduct of e-commerce. Respondent employed the H2DESIGN, Complainantís registered mark on its web site to attract customers for its services. Respondent admitted it would sell the disputed domain name to the Complainant for $35,000. This established bad faith under 4(b)(i) of the Policy. In addition, it appeared that Respondent intentionally attempted to attract Internet users to its web site by creating a likelihood of confusion with the Complainantís mark as to the source of Respondentís web site. It was concluded the evidence supported a finding of bad faith under 4(b)(iv) of the Policy.

The final issue before the Panel is Respondentís claims of reverse domain name hijacking pursuant to Policy 15(e). On the record before the Panel, it was concluded that complaint was brought in good faith. The Complainant owns a trademark registration and is pursuing a dispute resolution proceeding against the holder of an identical domain name. The Panel does not find any reverse domain name hijacking on the evidence or pleadings submitted.

It was concluded that the domain name h2design.com is identical to the trademark H2DESIGN of the Complainant and that the Respondent had no right or legitimate interests in respect to the domain name that the domain name has been registered and is being used in bad faith. Accordingly, the administrative panel directs that the Respondent transfer the domain name h2design.com to the Complainant.