Generic Top Level Domain Name (gTLD) Decisions

The Complainant is RedBack Networks Inc., Sunnyvale, CA, USA ("Complainant") represented by Michael K. Bosworth, of Oppenheimer Wolff & Donnelly. The Respondent is Jordan Rosen, New York, NY, USA ("Respondent").

The domain names at issue are "myredback.com" and "myredback.net" registered with Register.com.

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 14, 2000; the Forum received a hard copy of the Complaint on December 14, 2000.

On December 19, 2000, Register.com confirmed by e-mail to the Forum that the domain names "myredback.com" and "myredback.net" are registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 20, 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@myredback.com and postmaster@myredback.net by e-mail.

On January 12, 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 Panelist has considered all submissions, timely or not.

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

A. Complainant

1. The domain names "myredback.com" and "myredback.net" are confusingly similar to Complainant’s trademark "REDBACK" registered with the United Stats Patent and Trademark Office on June 13, 2000, Number 2358288, and which was first used in commerce in July, 1997. The addition of the descriptive adjective "my" to the domain names does not detract from the similarity of the domain names to Complainant’s trademark.

2. The color scheme of Respondent’s website, i.e., red and black, is confusingly similar to Complainant’s mark and the website maintained by Complainant.

3. Respondent has no rights or legitimate interest in the domain names. This is demonstrated by Respondent’s use of the domain names in posting of logos and links to Complainant’s competitors.

4. Respondent registered the domain names in issue in bad faith because it did so for the purpose of selling them to Complainant or its competitors. This is demonstrated by Respondent displaying on its website "FOR SALE."

B. Respondent

1. The domain names are not confusingly similar to Complainant’s mark because the domain names are comprised of three generic words.

2. The domain names were acquired for use in connection with a sunscreen product that is being developed, and which will be marketed by an affiliate cosmetic concern, Hazel Bishop International.

3. Respondent is engaged in a bona fide business by currently offering lawn and outdoor products for sale, in connection with "Amazon.com" at the websites connected to the domain names in issue. Thus, he does have rights and a legitimate interest in the domain names.

4. The posting of links to Complainant’s competitors’ websites was momentary and a joke. Moreover, the registration of the domain names was not done with the intent to sell the names to Complainant or one of its competitors.

1. The domain names in issue are confusingly similar to Complainant’s trademark.

2. The domain names in issue were registered by Respondent on June 9, 2000, and June 20, 2000.

3. Complainant registered its trademark with the United States Patent and Trademark Office on June 13, 2000, but the mark has been used in commerce since July, 1997.

4. Complainant is well known in the high-technology industry in which it sells under its mark devices for connecting to the Internet.

5. Although Complainant’s mark may consist of generic words, its mark has acquired a distinctive secondary meaning in the high-technology industry and community.

6. Respondent has not made demonstrable preparations for utilizing the domain names for the sale of a sunscreen product. He has demonstrated only his present offering of lawn and outdoor products for sale in connection with "Amazon.com."

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.

It is difficult to determine credibility only from a written record. Nevertheless, the preponderance of the evidence presented to the Panelist favors the Complainant.

The domain names in issue are similar to the Complainant’s mark, even though the domain names have the generic word "my." It has been held that the addition of the generic word "my" to a mark in which the Complainant has rights does not detract from similarity. (See, Infospace.com, Inc. v. Delighters, Inc., D2000-0068 (WIPO May 1, 2000) (finding that the domain name "myinfospace.com" is confusingly similar to Complainant’s mark); NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the "domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to Complainant’s trade name and trademark NIIT"); ESPN, Inc. v. MySportCenter.com, FA 95326(Nat. Arb. Forum Sept. 5, 2000) (finding that the "domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark . . .").

Although the three words used in the domain names here in issue are generic, taken separately, Complainant’s mark has acquired a distinctive secondary meaning in the high-technology industry.

Complainant has proved the first required prong.

Complainant charges that Respondent has linked the websites to the Complainant’s competitors and other commercial websites and has offered the domain names for sale. (See Skipton Building Society v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the world wide web would be "misleadingly" diverted to other sites).

Respondent’s claim that the linkage of the websites to competitors was a "joke" is not believable, nor was the designation "FOR SALE" placed on the website by Respondent excusable.

Games should not be played in this arena, and the proposed offer to sell the domain names can only be considered as serious, particularly since Respondent had sold other domain names he had registered.

Complainant has proved the second required prong.

When it is considered that at least momentarily Respondent utilized the domain names to open to websites advertising Complainant’s competitors, and that the domain names were offered for sale, with a ‘FOR SALE" designation on Respondent’s website, it is evident that Complainant has proved the third prong of bad faith registration and use, as required.

It has been held that offering domain names for sale at prices in excess of out-of-pocket costs is evidence of bad faith registration and use. Policy, Section 4(b)(i). (See, Wembley National Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name).

Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided that the domain names "myredback.com" and "myredback.net" registered by Respondent be transferred to Complainant.