Generic Top Level Domain Name (gTLD) Decisions

ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution

1. Parties and Contested Domain Name

This is a domain name dispute under the ICANN Uniform Domain Name Dispute Resolution Policy (the “UDRP”). Complainant is Logan Consulting, whose place of business is at 70 West Madison, Chicago, IL 60602. Respondent is Benchmark Solutions, Inc. (n/k/a Baisys Solutions, Inc.), with a place of business at 27600 Northwestern Hwy, Southfield, MI 48034. Complainant requests transfer of the <loganconsulting.com> domain name, which was registered by Respondent on February 14, 1997.

2. Procedural history

The electronic version of the Complaint form was filed on-line through eResolution’s Website on April 18, 2001. The hardcopy of the Complaint Form and annexes were received on April 19, 2001. Payment was received on April 18, 2001.

Upon receiving all the required information, eResolution’s clerk proceeded to:

- Confirm the identity of the Registrar for the contested Domain Name;

- Verify the Registrar’s Whois Database and confirm all the essential contact information for Respondent;

- Verify if the contested Domain Name resolved to an active Web page;

- Verify if the Complaint was administratively compliant.

This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Network Solutions Inc, the Whois database contains all the required contact information, the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.

An email was sent to the Registrar by eResolution Clerk’s Office to obtain confirmation and a copy of the Registration Agreement on April 18, 2001. The requested information was received April 23, 2001.

The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk’s Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on April 23, 2001. This date is the official commencement date of the administrative proceeding.

The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.

eResolution, for exceptional circumstances has granted a 5 days delay to the respondent.

On May, 18, 2001, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on May, 18, 2001.

On May, 24, 2001, the Clerk’s Office contacted Merton Thompson, and requested that he acts as panelist in this case.

On May, 29, 2001, Merton Thompson, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On May 30, 2001, the Clerk’s Office forwarded a user name and a password to Merton Thompson, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution’s Automated Docket Management System.

On May, 30, 2001, the parties were notified that Merton Thompson had been appointed and that a decision was to be, save exceptional circumstances, handed down on June 13, 2001.

Along with the file, both parties indicated that they would like to submit additional information to their case (modification of the complaint form and of the response form, and additional annexes). This request was denied by the Panelist.

3. Factual Backgrounds

Complainant provides consulting services in software implementation, project management implementation, software tools, and coordination. Complainant’s corporate name is L G Consulting, Inc., but in 1995, Complainant filed for and received the assumed corporate name of Logan Consulting. Complainant claims a common law trademark in the name Logan Consulting.

Respondent is in the similar business of installing and selling computer software, and providing consulting services. Respondent was founded by Timothy Cartwright, a former employee at Logan Consulting. Timothy Cartwright no longer works at Respondent business. On February 14, 1997, David Church, the president of Respondent business, registered the domain name of <loganconsulting.com>.

4. Parties' Contentions

Complainant offers the following to make its case for the transfer of the domain name <loganconsulting.com>:

i) &nb sp; Copy or Similarity

Complainant states that the domain name at issue is identical to Complainant’s trade name and common law trademark of Logan Consulting.

ii) &n bsp; Illegitimacy

Complainant claims the right to the domain name <loganconsulting.com> because prior to the domain name dispute, Respondent had not used the domain name in connection with a bona fide offering of goods and services; Respondent is not known by the domain name; and Respondent is not currently making a legitimate fair use of the domain name.

iii) & nbsp; Bad Faith

Complainant contends that Respondent has used the domain name in bad faith because Respondent registered the domain name for the purpose of selling, renting, or otherwise transferring it to Complainant; Respondent does not do business as Logan Consulting and is a direct competitor of Logan Consulting; and a former employee of Complainant (Timothy Cartwright) is closely affiliated with Respondent.

Respondent claims that it has a legitimate interest in using the domain name <loganconsulting.com> because of Respondent’s founder’s past affiliation with Logan Consulting. Respondent contends that it might like to use the domain name in the future in connection with its consulting business.

Furthermore, Respondent claims that Complainant acted in bad faith by coming to an agreement with Respondent as to transfer of the domain name, and then reneging on that agreement.

Finally, Respondent claims that the name Logan Consulting cannot be of high value to Complainant because Complainant has not registered a federal or state trademark for the name.

5. Discussions and Findings

The parties disagree on whom may use the <loganconsulting.com> domain name for the purposes of promoting their business. Under UDRP ¶ 4(a), Complainant bears the burden of proving that:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

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

Therefore, the question before this panel is whether Complainant has met its burden with respect to the three elements.

(i) The panel finds that Complainant has met its burden with respect to the first element. Paragraph 15(a) of the Rules allows that: "A Panel shall 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." Since all parties are domiciled in the United States this Panel will apply the trademark law of the United States. Under United States law, use in commerce establishes protectable trademark rights under United States common law. Such common law rights have been deemed an adequate basis for a request under the UDRP (see Media Research Center v. Nick Bucci Case No. D 2000-1280). The Panel finds that Complainant has a common law trademark right in the name Logan Consulting, a mark that is identical to the <loganconsulting.com> domain name at issue.

(ii) &nbsp ; The panel finds that Complainant has met its burden with respect to establishing that Respondent has no rights or legitimate interests in the domain name at issue. Respondent is not currently using the domain name <loganconsulting.com>nor has Respondent provided evidence of demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. There was also no evidence submitted that would support a finding that Respondent has been commonly known by the domain name. Respondent provides a weak argument that it is holding the domain name to possibly use it in the future because of a former employee’s (Mr. Cartwright) prior connection to Complainant, Logan Consulting. The fact that Mr. Cartwright no longer works at Logan Consulting, in combination with the fact that <loganconsulting.com> is not in use, over four years after its registration, lead the panel to find that Respondent’s argument fails to show that Respondent has a right or legitimate interest in <loganconsulting.com>.

(iii) &nbs p; The panel finds that Complainant has met its burden in establishing that the domain at issue was registered and is being used in bad faith. The UDRP lists the following circumstances as evidence of a registration and use in bad faith in ¶ 4(b):

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that Respondent has registered or Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

(i) The panel finds that the evidence submitted supports the conclusion that Respondent registered the domain name at issue to disrupt the business of a competitor (i.e., Complainant). The submitted evidence indicates that the parties are in competition with each other. Additionally, the submitted evidence indicates that there is bad blood between Complainant and Respondent’s founder.

6. Conclusion

For the foregoing reasons, the panel concludes that the Complainant has met its burden of proof under the UDRP 4(a), and that Respondent has not met its burden of proof with regards to any of the three available affirmative defenses available in UDRP 4(c). Accordingly, the panel finds the domain name <loganconsulting.com.> should be transferred to Complainant.

7. Signature

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