Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Moore North America, Inc. , Grand Island, NY, USA ("Complainant") represented by Robert A. Vanderhye, Nixon & Vanderhye. The Respondent is Carlson Marketing Group, Inc., Minneapolis, MN, USA ("Respondent")

The domain name at issue is webtoone.com, registered with Network Solutions, Inc.

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

Judge Irving H. Perluss (Retired) is the Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 6, 2000; The Forum received a hard copy of the Complaint on December 8, 2000.

On December 8, 2000, Network Solutions, Inc. confirmed by e-mail to The Forum that the domain name webtoone.com is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 12, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 2001 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 Respondent’s registration as technical, administrative and billing contacts, and to postmaster@webtoone.com by e-mail.

On January 4, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

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

A. Complainant

1. The domain name "webtoone.com" is identical and confusingly similar to Complainant’s service mark "WEB TO ONE," registered with the United States Patent and Trademark Office on September 1, 1998, and was first used in commerce in September, 1997.

2. Respondent does not have rights or a legitimate interest in the domain name in issue because it has not actually used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services.

3. Respondent registered and used the domain name in issue in bad faith because there has been an extended period of non-use; the registration was for the purpose of disrupting Complainant’s business, and the registration was for the purpose of selling the domain name to Complainant.

B. Respondent

1. Respondent concedes that the domain name in issue is substantially identical to Complainant’s service mark, but asserts that it is not confusingly similar.

2. Respondent has been a leading relationship marketing agency for sixty years, and it conceived of the domain name as being Internet compatible with its relationship marketing models and strategy. It did not know of Complainant’s service mark registration.

3. Respondent did not register, nor is it using the domain name in bad faith. The registration is in furtherance of its business purpose. It was not to sell the domain name, nor was it to disrupt Complainant’s business. Finally, it is not using the domain name because of this dispute, but it fully intends to use the domain in its business as proposed.

1. The domain name in issue is substantially identical and confusingly similar to Complainant’s service mark.

2. The domain name in issue was registered by Respondent with Network Solutions, Inc. on December 23, 1999.

3. Complainant registered its service mark with the United States Patent and Trademark Office on September 1, 1998, and the mark was first used in commerce in September, 1997.

4. Complainant provides business information management services relating to document production and processing through a global communications network.

5. Respondent is a relationship marketing company designing marketing strategies for its clients.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the 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 Panelist has determined that the domain name in issue is substantially identical and confusingly similar to Complainant’s service mark.

The Panelist, however, finds that Respondent does have rights and a legitimate interest in the domain name, despite the prior registration of Complainant’s service mark with the United States Patent and Trademark Office. This is because Respondent has demonstrated that it will make a fair use of the domain name without the intent to misleadingly direct consumers or to tarnish the service mark as set forth in Section 4(c)(iii) of the Policy.

Moreover, Complainant has not established by any evidence in the record, or otherwise, that Respondent has registered and proposes to use the domain name in issue in bad faith.

First, it has not proved that Respondent acquired the domain name for the purpose of selling it to Complainant, and this purpose is flatly denied by Respondent. (Policy, Section 4(b)(i).)

Second, there is no evidence of a pattern of conduct by Respondent preventing the owners of service marks from reflecting their marks in corresponding domain names, although obviously there is one instance here. (Policy, Section 4(b)(ii).

Third, Respondent did not register the domain name in issue to disrupt the business of a competitor. (Policy, Section 4(b)(iii).) Indeed, Respondent and Complainant are not competitors.

Fourth, nothing in the record establishes that Respondent intends to use the domain name in issue so as to cause confusion as to the "source, sponsorship, affiliation or endorsement" of its website. (Policy, Section 4(b)(iv).)

With respect to the present non-use of the domain name, the Panelist accepts Respondent’s explanation that it does not wish to invest time and money while a domain name dispute is pending, but that it fully intends to use the domain name in its business as proposed. (See Policy, Section 4(c)(i).)

The claim of Moore North America, Inc. against Respondent Carlson Marketing Group, Inc. seeking to have the domain name "webtoone.com" transferred to it, be and the same is, hereby denied.