Generic Top Level Domain Name (gTLD) Decisions

Complainant is Decision Software, Inc., Lanham, MD, USA ("Complainant") represented by Christopher R. Costa, of Christopher R. Costa, LLC. Respondent is Top Dog Software, Austin, TX, USA ("Respondent").

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

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

Honorable Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 11, 2000; the Forum received a hard copy of the Complaint on December 12, 2000.

On December 13, 2000, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "topdog.com" is registered with Network Solutions, Inc. and that 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 19, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 9, 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@topdog.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 January 17, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carolyn Marks Johnson 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 Rules for Uniform Domain Name Dispute Resolution Policy (the "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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

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

A. Complainant alleges the following:

Complainant registered the TOPDOG mark for Information Management Software on May 6, 1997. Complainant has used its TOPDOG mark on and in connection with Complainant’s TOPDOG® database, campaign management and data mining software, in interstate commerce, since February 1992 and currently so uses the TOPDOG mark. Complainant has also used its TOPDOG mark on coffee mugs, hats, golf shirts and T-shirts and sweatshirts.

Complainant has expended significant amounts of time, effort, resources and money marketing its software and services throughout the United States using and under its TOPDOG mark for almost nine (9) years and developing goodwill in the TOPDOG mark. Complainant’s marketing and use of the TOPDOG mark includes, without limitation, display of web pages featuring its mark and description of its goods and services at the dsitopdog.com domain name.

In the trade and among the relevant consuming public for Complainant’s TOPDOG® database, campaign management and data mining software and/or services, Complainant has been, and currently is, also commonly known as or referred to as "TOPDOG."

Registration of the topdog.com domain name was made on or about April 20, 1995. In November of 1998, Respondent began to use the topdog.com domain name to market software known as "TopDog Web Position Analyzer/Submitter 5.2". Sometime during November 2000, Respondent changed its display at the initial page of the topdog.com domain name to a page stating that "This domain is now for sale." Currently, Respondent offers to sell and transfer the <topdog.com> domain name by auction, with a minimum bid of $20,000 at the domain at <afternic.com>, and/or by auction, with an asking price of $65,000 at the domain <greatdomains.com>. In addition, Respondent’s administrative and billing contact and, authorized representative, emailed Complainant’s President, offering to sell and transfer the <topdog.com> domain name to Complainant for about $75,000. The domain name is also used by Respondent as a marketing façade for the software product at the <topdogg.com> and/or <topdog2000.com> domain names.

The topdog.com domain name is identical to and confusingly similar to Complainant’s trademark. Respondent should be considered as having no rights or legitimate interests in the domain name. Respondent has not used the domain name in connection with a bona fide offering of goods or services. Respondent is not commonly known by the Complainant’s mark that forms Respondent’s domain name. Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s mark.

The domain name should be considered as having been registered and being used in bad faith. Respondent is offering or is attempting to sell, rent, or otherwise transfer the domain name registration to Complainant, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. By using the domain name to market certain computer software, known as "TopDog Web Position Analyzer/Submitter 5.2," to the public and in interstate commerce, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with the Complainant’s TOPDOG 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.

B. Respondent has not submitted a response in this matter.

The Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") state the following with regard to default cases:

In this case, Respondent has not submitted a response, and therefore this Panelist may infer, for the purposes of this decision, that the averments in the complaint are true. See Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding that based on Respondent’s failure to respond, the Panel draws two inferences: 1) that Respondent does not deny the facts asserted by Complainant, and 2) Respondent does not deny conclusions which the Complainant asserts can be drawn from the facts).

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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) 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 Panel finds that the domain name topdog.com, exclusive of the generic top level identifier, is identical to the Complainant’s TOPDOG mark. See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO, Apr. 22, 2000) ("the addition of the generic top-level domain (gTLD) name ‘.com’ is likewise without legal significance since use of a gTLD is required of domain name registrants").

Despite the fact that Complainant registered the TOPDOG mark after Respondent’s registration of the domain name, Complainant has used the trademark since February 1992, which is sufficient to confer common law trademark rights in the mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that Complainant have rights in a registered trademark and that it is sufficient to show common law rights); Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding common law rights in the mark BIBBERO as the Complainant, Bibbero Systems, Inc. had developed brand name recognition with this term by which the Complainant is commonly known).

Respondent further has offered the domain name for sale, for profit, and not made a legitimate use in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use in the domain name at issue. Policy ¶ 4(c)(i); 4(c)(iii). See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark); Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).

Accordingly, the Panel finds that Complainant established rights to and legitimate interests in the mark made the basis of the domain name in issue and that Respondent failed to produce any proof of a right or interest in the mark and domain name.

The facts show that Respondent used the domain name to direct users to a general site offering the domain name for sale by auction with a minimum bid of $20,000, and that he offered to transfer the domain name to the Complainant for $75,000. This is some evidence of bad faith registration and use. Policy ¶ 4(b)(i). See Dollar Rent A Car Systems Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrates bad faith by registering the domain name for the purpose of transferring the domain name in the amount of $3,000, an amount in excess of out of pocket costs); General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent registered and used the domain name in bad faith by using the domain name to direct users to a general site offering the domain name for sale).

Moreover, Complainant contends that Respondent registered the domain name to attract, for commercial gain, Internet users to an on-line location, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, endorsement, or affiliation of the website, an allegation that has not been controverted by Respondent and which also constitutes evidence of Respondent’s bad faith registration and use. Policy ¶ 4(b)(iv). See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intends to use Complainant’s marks to attract the public to the web site without permission from Complainant); Drs. Foster & Smith, Inc. v Jaspreet Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its website, consequently the Respondent has violated Policy ¶4(b)(iv) by attracting Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark).

The Panel therefore finds that Respondent registered and used the domain name at issue in bad faith.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that Complainant is entitled to the requested relief.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "topdog.com" be transferred from Respondent to Complainant.