DECISION

The National Dispatch Center, Inc. v. RhinoTrax, Inc.

Claim Number: FA0106000097757

PARTIES

The Complainant is The National Dispatch Center, Inc., San Diego, CA, USA (“Complainant”) represented by Brian Zimmerman.  The Respondent is RhinoTrax, Inc., Fresno, CA, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <oneconnect.com> and <oneconnect.net>, registered with Network Solutions.

PANEL

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

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on June 28, 2001; the Forum received a hard copy of the Complaint on June 29, 2001.

On July 3, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names <oneconnect.com> and <oneconnect.net> are 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On July 3, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 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@oneconnect.com and postmaster@oneconnect.net by e-mail.

A timely response was received and determined to be complete on July 23, 2001.

On July 30, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is The National Dispatch Center, Inc. located at 9370 Chesapeake Drive, San Diego, California.

Complainant has operated a commercial wireless messaging and voicemail service identified under the name “One Connect” since September 30, 1994.

Complainant registered “One Connect” on February 25, 1997, as a Service Mark under United States Patent and Trademark Office Registration No. 2,039,830.

Respondent registered the domains in question, both of which are identical in name to the registered Service Mark of Complainant, on January 5, 1998.

World Wide Web searches were performed by Complainant in 2001 for the search phrase “one connect” which showed that no references to Respondent or Respondent’s business names “OneWorldConnect” or “RhinoTrax” were found in the searches.

Respondent has no legitimate interest in the domain names ONECONNECT.COM and ONECONNECT.NET.

Respondent has no business affiliation with the domains in question.

Complainant initiated an email correspondence with Respondent on June 14, 2001. Complainant offered to purchase the domain names for $500.00.  Respondent rejected the offer and proposed the sum of $15,000.00 as the purchase price.  Complaint countered with $1,500.00.  Receiving no response, Complainant withdrew the $1,500.00 and offered $1,200.00.  Respondent responded that the price for the domain names remained at $15,000.00. 

Neither domain name is in use nor have they been for some time.

Respondent has offered to sell the domain names for valuable consideration, which Complainant considers to be well in excess of the value to Respondent of said domains.  Complainant considers the use of these domain names by Respondent to be in bad faith.

B. Respondent

Respondent and  NDC Wireless (Complainant) entered into an agreement in 1998 whereby Complainant was to pay the sum of $1,500.00 to Respondent for the domain names in question.

On August 24, 1998, Respondent completed the paper work with notarized transfer documents to modify domain by changing all contacts to NDC Wireless (Complainant.).

NDC (Complainant) never replied to multiple attempts to make the appropriate changes to the domain names and take control of the names.

NDC (Complainant) never paid the $1,500.00 as agreed.

NDC (Complainant) never sent back an original of the agreement.

In June 2001, Respondent was contacted by email by Complainant.  An offer was made to purchase the domain names for $500.00.  Respondent informed Complainant that it was under agreement with another company to sell the names.  Complainant raised the offer to $1,500.00 then cancelled this offer and changed it to $1,200.00.

Respondent could not accept this offer.

After Complainant filed this domain dispute proceeding, Respondent agreed to accept $1,500.00.  Complainant replied with an offer to stop this proceeding and raised his offer to $1,500.00 so long as Respondent paid transfer fees and paid the fees to cancel this proceeding.  Respondent refused this offer.

Respondent is prepared to transfer the domain names in question to Complainant if it pays to Respondent the sum of $1,500.00.   Complainant’s failure to pay the sum is bad faith.

           

FINDINGS

1. Complainant is a business corporation that has used the name “One Connect” in commerce since 1994.

2. Complainant owns United States Patent and Trademark Office registration for the Service Mark “ONE CONNECT” which was registered on February 25, 1997.

3. Complainant has rights and interests in the name “One Connect.”

4. Respondent is an entity organized for a purpose not explained in the pleadings. 

5. The domain names ONECONNECT.COM and ONECONNECT.NET are not being used at this time.  There is no evidence that either domain name has ever been used in any way except to be passively held by Respondent.

6. Any alleged agreement for sale made by the Complainant and Respondent in the year 1998 was not proved to be an enforceable contract.

7. Complainant initiated the contact with Respondent for the purpose of purchasing the domain names in question.  Complainant’s offers were not unreasonable.  Respondent’s demand for the sum of $15,000.00 was a sum in excess of Respondent’s reasonable costs associated with registration of the names.

8. The name to which Complainant has rights is identical to the domain names in question.

9. Respondent has no rights or legitimate interests in the domain names.

10. Respondent holds the domain names in bad faith.           

DISCUSSION

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.

Identical and/or Confusingly Similar

It is obvious that Complainant has rights in the Service Mark “ONE CONNECT”.  Respondent does not contest the proposition that the Service Mark and the domain names are identical.  The generic top-level domain (gTLD) “com” and “net” after the names does not make them not identical. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000).  The fact that there is a space between the Service Mark “ONE CONNECT” and none in the domain names ONECONNECT.COM and ONECONNECT.NET does not make them not identical. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2000) comparing “mysticlake.net’ to MYSTIC LAKE.  The domain names ONECONNECT.COM and ONECONNECT.NET are identical to the Service Mark “ONE CONNECT”.  See also Winchester Properties, LLC v. DefaultDate.com, FA 97114 (Nat. Arb. Forum June 22, 2001). Complainant prevails on this issue.

Rights or Legitimate Interests

Complainant shows that it is the owner of the Service Mark contained in the domain

name.  This gives Complainant exclusive right to use the Mark. See America Online, Inc.

v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000).  It is

clear that Respondent is not an agent or licensee of Complainant.  This can be inferred

from the record.  It can be inferred that Respondent has never been known as

ONECONNECT prior to registration of the domain names.

As a result of Complainant’s showing, and Respondent’s apparent lack of rights and

legitimate interests in the domain names, the burden must shift to Respondent to

demonstrate its rights and interests in the domain names. See Clerical Med. Inv. Group

Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).

Respondent may do so by any of the methods set out in the Uniform Domain Name

Resolution Policy.

Respondent attempts no showing of any kind to illustrate its rights and interests in the

domain names.

The most logical inference that can be made, under the facts and circumstances of this

case is that Respondent holds the domain names for sale.  Respondent’s pleadings show

an attempted sale of the domain names to Complainant in 1998, an attempted sale of

the domain names to a third party at the time Complainant contacted Respondent in 2001 

to try to purchase the domain names, and an attempted sale to Complainant both before

and after the commencement of this proceeding.

Merely registering and stockpiling domain names for subsequent sale without more

fails to constitute any bona fide offering of goods or services under such domain name

or a legitimate non-commercial or fair use of each such name. See Playboy Enterprises,

Inc. v. Rodriquez, D2000-1016 (WIPO Nov., 2000).  See also iKnowledge, Inc.

v. Hot Rod Email Services, FA 97066 (Nat. Arb. Forum May 25, 2001).

Based upon Respondent’s failure to set out its rights or interests in the domain names

and applying all allowable inferences from the facts and circumstances of the case,

it must be found that Respondent has no rights or legitimate interests in the domain

names at issue.  Complainant prevails on this issue.

Registration and Use in Bad Faith

In order to succeed, Complainant must show that the domain names has been registered and are being used in bad faith. Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a).  Complainant contends the circumstances outlined in Paragraph 4(b)(i).

That Paragraph states that it is evidence of bad faith if a Respondent registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations 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.

Complainant alleges that on account of its offer to purchase the domain names for $500.00 being rejected and a demand by Respondent for the sum of $15,000.00 for the domain names, these actions on the part of the Respondent prove the elements of Paragraph 4(b)(i). 

Respondent does not contest the allegations regarding its demand for payment in the sum of $15,000.00 from Complainant in 2001 to transfer the domain names, but explains that Respondent was in negotiations with a third party to sell the domain names for the sum of $15,000.00, thus he could take no less from Complainant.  Respondent alleges further that negotiations were undertaken in the year 1998 to sell the domain names to Complainant for the sum of $1,500.00, which negotiations resulted in an agreement for the sale and transfer of the domain names though Complainant never tendered the funds and the transfer was never completed.

The credibility of Respondent is questionable.  Its allegation that an outstanding agreement for sale of the domain names for $1,500.00 between the parties was present conflicts with its actions of trying to sell the domain names to a third party in 2001 and demanding the sum of $15,000.00 for the sale of the domain names to Complainant in the year 2001. But, it is not necessary to resolve credibility questions to reach a decision in this proceeding.  Even if all of the allegations in the pleadings are taken as true, the result must favor the Complainant.

There seems little doubt that Respondent registered the domain names with the intent to sell them to Complainant or a competitor.  The only use Respondent has made of the domain names, according to the pleadings and exhibits presented in this case, is to try to sell them to Complainant. The conduct of Respondent presents evidence of bad faith. See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000); Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001).

Respondent’s only contention presented in its pleadings is that Complainant should not be permitted to obtain the domain names without paying Respondent the sum of $1,500.00.  This sum, Respondent maintains, is the sum agreed upon between the parties in the 1998 negotiations.  If there was such a contract of sale entered into between the parties in 1998, the contract was never performed.  It is beyond the jurisdiction of this Panel to interpret or enforce contracts.  If there is such a contract, Respondent must find an appropriate court of law for any relief Respondent may believe it is entitled.

Based upon all of the evidence, exhibits and inferences that properly can be drawn, Respondent is found to have registered and to be using the domain names in question in bad faith.

DECISION

IT IS THE DECISION OF THIS PANEL THAT THE DOMAIN NAMES, ONECONNECT.COM AND ONECONNECT.NET, NOW REGISTERED TO RESPONDENT, RHINOTRAX, INC., BE TRANSFERRED TO THE COMPLAINANT, THE NATIONAL DISPATCH CENTER, INC.

Tyrus R. Atkinson, Jr., Panelist

Dated: August 8, 2001

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