Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Steamatic, Inc., Fort Worth, TX, USA ("Complainant") represented by William L. Latham, of Steamatic, Inc. The Respondent is Hieu Nguyen, Houston, TX, USA ("Respondent") represented by Jeffery Gelb, attorney at law.

The domain names at issue are "blackmon-mooring.com" and "blackmonmooring.com" registered with Network Solutions, Inc.

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

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 4, 2000; the Forum received a hard copy of the Complaint on November 30, 2000.

On December 8, 2000, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names "blackmon-mooring.com" and "blackmonmooring.com" are 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. 4.0 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 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 8, 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@blackmon-mooring.com and postmaster@blackmonmooring.com by e-mail.

On January 16, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

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

Complainant is in the business of franchising, advertising, manufacturing, training, and developing equipment and other technology in connection with restoration and cleaning in restoration of property after fire, water and other types of damage or soiling.

Complainant owns the service mark "Blackmon-Mooring Steamatic" which was registered with the United States Patent and Trademark Office on January 8, 1985.

The service mark "Blackmon-Mooring Steamatic" has been in use since 1968. "Blackmon-Mooring" has been in use since 1948.

Complainant has a number of subsidiaries, which are incorporated using the "Blackmon-Mooring" trade name in their registered names. These include "Blackmon-Mooring Company", "Blackmon-Mooring of Dallas, Inc.", "Blackmon-Mooring of Houston, Inc.", and Blackmon-Mooring Steamatic Catastrophe, Inc."

The use of "Blackmon-Mooring" alone is as much a part of the service mark as the entire name.

Use of "Blackmon-Mooring" by Respondent is confusingly similar to Complainant’s service mark.

Respondent has no legitimate interest in the trade name "Blackmon-Mooring". Respondent never used the mark until after he was sent a demand letter demanding that he not use the name and thereafter opened a web site. The site is not operational or actually doing any business using that name.

Respondent registered the domain name BLACKMON-MOORING.COM and BLACKMON MOORING.COM in bad faith. Respondent registered the domain names in an attempt to extort money from Complainant. Respondent verbally offered to sell Complainant the domain names for $75,000.00, an amount far in excess of Respondent’s out of pocket costs directly related to the domain names.

Respondent has registered more than fifty domain names, many of which appear to be trade names of registered companies or other famous names. This demonstrates a pattern by Respondent in registering domain names in order to prevent the true owner of the trademark from reflecting the mark in its own domain name.

B. Respondent

Respondent is a principal owner of 4N International Printing that is a printing and graphic design company located in Houston, Texas.

4N International prints publications, manuals, annual reports, graphic designs, web hosting, web site designs, and several other media based presentations for their customers.

4N International has been in business for ten years and has fifty employees.

Respondent did not know of any trademark infringement when he secured the two domain names.

Respondent’s intention for the website is to be a media consulting portal for webmasters seeking to subcontract out their graphics, live media streaming, and similar uses.

Complainant offered Respondent $100.00 for the domain name during the fall of 1999. Respondent declined the offer and responded that the website would be for media base format and a B2B site.

Respondent has an account with Network Solutions for the convenience to his graphic artists and art directors so that they can secure a domain name for projects of its customers. Respondent has no intention of selling any of the registered names because some of the names belong to his clients and some names belong to his associates and partners.

Respondent offers to Complainant a hyper-link to Complainant’s website for any person who accidentally comes to Respondent’s site.

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.

Complainant’s service mark "Blackmon Mooring Steamatic" is not identical to the domain names BLACKMON-MOORING.COM and BLACKMONMOORING.COM on account of the word "Steamatic" which is not included in the domain names. It is obvious that the combination of the words "Blackmon" and "Mooring" is distinctive. Complainant contends that it is known as "Blackmon Mooring" as well as "Blackmon Mooring Steamatic". Respondent does not dispute that allegation. Under these circumstances, Complainant is found to have developed brand name recognition with the name "Blackmon Mooring" by which it is commonly known. See Bibbero Systems, 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 in the shortened corporate name since the Bibbero Systems, Inc. was commonly known as Bibbero. See also Hammond Suddards Edge v. Westwood Guardian Ltd, D2000-1235 (WIPO Nov. 6, 2000) finding that the domain name "hammondsuddards.net" is essentially identical to the Complainant’s mark, Hammond Suddards Edge, where the name "Hammond Suddards" identifies the Complainant independently of the word "Edge".

The addition of a hyphen between the words "Blackmon" and "Mooring" does not make the domain name distinct from Complainant’s mark. See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) finding the domain name "info-space.com" identical with INFOSPACE, Complainant’s mark.

The domain names BLACKMON-MOORING.COM and BLACKMONMOORING.COM are confusingly similar to Complainant’s mark "Blackmon Mooring Steamatic" and the common law rights Complainant has in "Blackmon Mooring."

Complainant has rights in the name "Blackmon Mooring" as result of the registration of the mark and the use of the term for more than forty years. Complainant prevails on this issue.

Complainant never authorized Respondent to use the name "Blackmon Mooring" or any combination or variation of the name. Complainant issued a cease and decease letter to Respondent informing Respondent of the registration of the mark and common law rights Complainant claimed in the name "Blackmon Mooring."

Respondent may demonstrate his rights to and legitimate interests in the domain name by showing any of the factual situations set out in the Uniform Domain Name Dispute Resolution Policy in Section 4(c). Though Respondent contends that he had no knowledge of Complainant’s mark when he registered the domain names, this contention cannot receive credit. First of all, Respondent made no attempt to find out if Complainant possessed a mark that conflicted with the domain names chosen. Second, the combination of the words "Blackmon" and "Mooring" as a selection of a domain name raises the clear inference that Respondent did not choose these words at random. The names are so distinctive in combination, that it can be inferred that Respondent selected the words with prior knowledge of the use of the terms by Complainant. In addition, Respondent has not shown a "bona fide offering of goods or services." Respondent cannot prevail under Section 4(c)(i).

Respondent has never been commonly known by the names BLACKMON-MOORING or BLACKMONMOORING. See Uniform Domain Name Resolution Policy, Sec. 4(c)(ii).

Respondent does not contend that he is making a "noncommercial" use of the domain names. See Uniform Domain Name Resolution Policy, Sec. 4(c)(iii).

Respondent cannot prevail on this issue. See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) finding that prior to any notice of the dispute, the Respondent had not used the domain names in connection with any type of a bona fide offering of goods and services. See also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) finding that Respondent had no rights or legitimate interests where he decided to develop the website after receiving the Complainant’s "cease and desist" notice. When no proof appears in the record of rights and interests of Respondent, no finding for Respondent can be made. See Burlington Coat Factory Warehouse Corp. v. Naiyer Iman, D2000-0485 (WIPO July 28, 2000).

Complainant must show that the domain names here in issue were registered and being used in bad faith. Uniform Domain Name Dispute Resolution Policy, Sec. 4(a)(iii).

Complainant may show any of the circumstances illustrated in Section 4(d) of the Policy as evidence of bad faith.

Complainant contends that Respondent registered more than fifty domain names that contain the marks of others. These actions, Complainant contends, demonstrate a pattern of conduct by Respondent in order to prevent the true owner of the trademark from reflecting the mark in its own domain name. While this may be true and constitute admissible evidence in this case, see Big Dog Holdings, Inc. v. Frank Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000), Complainant must also show that Respondent’s conduct prevents Complainant from reflecting its service mark in a corresponding domain name. Complainant makes no such contention. See Uniform Domain Name Dispute Resolution Policy, Sec. 4(b)(ii). Complainant cannot prevail under Section 4(b)(ii).

It is evidence of registration and use of a domain name in bad faith for a person to acquire "…the domain name primarily for the purpose of selling…the domain name registration to the complainant who is the owner of the trademark or service mark…for a valuable consideration in excess of" (respondent’s) "documented out-of -pocket costs directly related to the domain name…" Uniform Domain Name Dispute Resolution Policy, Sec. 4(b)(i).

Complainant asserts that Respondent verbally offered to sell Complainant the domain names for $75,000.00, an amount far in excess of Respondent’s out-of-pocket expenses. Complainant’s "cease and desist" letter to Respondent states, "When this action was brought to your attention, you demanded an exorbitant amount for return of the trade name which our client already owned." Respondent does not deny or contest either of these statements. Respondent merely declares that Complainant offered the sum of $100.00 for the domain names.

A Panel shall decide a complaint on the basis of the statements and documents submitted and any rules and principles of law that it deems applicable. Rules for Uniform Domain Name Dispute Resolution Policy, Rule 15(a). Each case must be decided based upon "whatever evidence is in the record." see Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000). On the basis of the failure of Respondent to deny or contest Complainant’s allegations regarding the offer to sell the domain names for $75,000.00, Complainant’s allegation must be accepted as true.

When one registers a domain name and later verbally offers to sell the domain name to the owner of the service mark for a valuable consideration in excess of out-of-pocket expenses associated with the registration that is evidence of bad faith. See Technology Properties, Inc. v. Hussan, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) finding bad faith where Respondent verbally offered the domain names for sale for $2,000.00. See also Mikimoto Co. v. Asanti Fine Jewellers Ltd, AF 0126 (eResolution April 8, 2000) finding bad faith where Respondent made verbal offers to sell the domain name in excess of out of pocket costs.

From Respondent’s conduct in offering to sell the domain names to Complainant for the sum of $75,000.00, an inference can be drawn that Respondent registered the domain names primarily for the purpose of selling the domain names to Complainant.

Respondent registered the domain names BLACKMONMOORING.COM and BLACKMON-MOORING.COM in bad faith.

The domain names, BLACKMOM-MOORING.COM and BLACKMONMOORING.COM, now registered to Respondent, are hereby ordered transferred from Respondent to Complainant.