Generic Top Level Domain Name (gTLD) Decisions

Complainant is Evans & Sutherland Computer Corporation, Salt Lake City, UT, USA ("Complainant") represented by Peter M. de Jonge, of Thorpe, North & Western, L.L.P. Respondent is Real Image, Eugene, OR, USA ("Respondent").

The domain name at issue is realimage.com registered with Network Soutions, 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 panelist in this proceeding.

Honorable Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on November 21, 2000; the Forum received a hard copy of the Complaint on November 22, 2000.

On December 6, 2000, Network Soutions, Inc. confirmed by e-mail to the Forum that the domain name realimage.com is registered with Network Soutions, Inc. and that Respondent is the current registrant of the name. Network Soutions, Inc. has verified that Respondent is bound by the Network Soutions, 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@realimage.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 15, 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 Respondent.

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

Complainant has used this mark to identify computer hardware and software for developing graphic systems and computer hardware and software used to create three-dimensional graphics images. Because Complainant has utilized the marks REAL IMAGE and REALimage for almost four years, it has acquired and developed significant ownership interests in the marks.

Respondent registered the domain name realimage.com. Complainant acquired rights in the marks REAL IMAGE and REALimage. REAL IMAGE and REALimage are spelled the same as Respondent’s domain name, sound the same as Respondent’s domain name and look the same as Respondent’s domain name. Accordingly, pursuant to ICANN Rule 3(b)(ix)(1), the domain name realimage.com is identical to a trademark in which Complainant has rights.

Respondent registered the domain name realimage.com on January 28, 1999. To date, Respondent has left the domain name unused. There is no website that utilizes the domain name realimage.com, nor is there any website that even refers to the domain name realimage.com. Because Respondent has neither used, nor demonstrated preparations to use, the domain name realimage.com, Respondent has no rights or legitimate interests in the domain name.

As is noted above, a search for the term realimage.com yielded zero hits. Additionally, a search based on the name and location of Respondent (Real Image located in Eugene, Oregon), as listed in the domain name registry, discloses no such business, individual or organization. Even if there is a business, individual or organization known as Real Image in Eugene, Oregon, this evidence strongly suggests that there is no business, individual or organization commonly known by the name Real Image. This conclusion is further supported by the contact information Respondent listed on the domain name registry. The Registrant is listed as Real Image; however, the contact information for the realimage.com registration is Scotty McConnell of the Feynman Group. The address listed for Real Image is the same address as is listed for the Feynman Group. If there is an entity Real Image at all, it appears to be commonly known as the Feynman Group.

The contact information viewed in light of the apparent absence of any business, individual or organization bearing the name Real Image, in the region specified in the domain name registry, strongly suggests that there is no such entity at all. Even if there is such an entity, Respondent has not been and is not commonly known by the name. Accordingly, Respondent has no rights or legitimate interests in the domain name realimage.com.

Respondent is not making a legitimate noncommercial or fair use of the domain name realimage.com. In fact, Respondent is not making any use of realimage.com. As is noted above, Respondent has had the domain name realimage.com registered for almost two years. To date, there is no website using the domain realimage.com. There is no reference made on any website to realimage.com. In short, Respondent has not made any apparent effort to use the domain name in any way. Accordingly, Respondent is not making a legitimate or fair use of the domain name realimage.com, therefore it has no rights or legitimate interests in said domain name.

The Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as "ICANN Policy") lists certain criteria as evidence of bad faith. They are, to summarize, any circumstances indicating that Respondent acquired the domain name for the purpose of selling it, renting it or otherwise transferring it to the owner of a similar mark or one of that owner’s competitors for an amount in excess of the reasonable costs of registering and developing the site; whether Respondent acquired the domain name in order to prevent the owner of the mark from reflecting the mark in a corresponding domain name; whether by using the domain name, Respondent intentionally attempted to draw Internet users to its website by creating a likelihood of confusion with Complainant’s mark; and whether Respondent registered the domain name primarily to disrupt the business of a competitor. As observed, the Policy provides that these circumstances constitute evidence of bad faith.

However, as is further noted in the ICANN Policy, the consideration of bad faith is not limited to the above factors. See ICANN Policy 4(b). The Anticybersquatting Consumer Protection Act (hereinafter "ACPA") identifies several additional factors that may constitute bad faith. 15 U.S.C. 1125(d)(1)(B). Of particular interest are factors I, III and IV. They are as follows:

Applying these factors to the present matter, Respondent registered and is using the domain name realimage.com in bad faith.

As was noted above, "[t]rademark ownership is not acquired by federal or state registration. Ownership rights flow [as well] from prior use, either actual or constructive." McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition–4th Edition, Volume 2, § 16:18, (Copyright 2000, West Group) (emphasis added). Inasmuch as the evidence strongly suggests that Respondent has never used the mark Real Image in connection with any goods or services, Respondent has never acquired any rights in the mark.

Respondent’s apparent lack of any trademark or other intellectual property rights in the domain name realimage.com, strongly suggests that Respondent registered the domain name for an improper purpose and in bad faith.

Presently, there is no website at the domain realimage.com. Searches for any site even mentioning the domain name yield zero results. Respondent registered the domain name realimage.com almost two years ago. Since that time there appears to have been no use by Respondent of the domain name in connection with any goods and services.

The apparent absence of any prior legitimate use of Respondent’s domain name, in connection with a bona fide offering of any goods and services, strongly suggests that the domain name was registered in bad faith and for an improper purpose.

Respondent’s lack of a bona fide noncommercial use or fair use of realimage.com, is further evidence that the domain name was registered in bad faith and for an improper purpose.

Therefore, since Respondent registered a domain name that is identical to a trademark in which Complainant has significant prior rights and usage, and since Respondent has no rights or legitimate interests in the domain name, and since Respondent has registered the domain name in bad faith, Complainant respectfully requests that the Panel transfer all rights in the domain name realimage.com to Complainant so that it can put the domain name to legitimate commercial use.

B. Respondent did not submit a response.

Complainant has utilized the mark REAL IMAGE since February 13, 1997, using the mark to identify computer hardware and software for developing graphic systems and computer hardware and software used to create three-dimensional graphics images. Complainant registered the marks REAL IMAGE and REALimage on the Supplemental Register.

Respondent registered the disputed domain name on January 28, 1999. There is no evidence to indicate that Respondent has made any use of the domain name since registration.

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 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 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 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.

First, the Panel must determine whether Complainant has sufficient rights to maintain a cause of action under the ICANN Policy. The Panel must first determine if Complainant’s marks REAL IMAGE and REALimage, are identical to or confusingly similar to the disputed domain name, realimage.com. Even a cursory examination reveals that the disputed domain name is virtually identical to REAL IMAGE and REALimage. It is well settled that a domain name’s TLD may be ignored for the purpose of determining whether a domain name is identical to or confusingly similar to a Complainant’s mark, since all domain names must contain a TLD of some kind. See BMW AG v. Loophole, D2000-1156 (WIPO Oct 26, 2000) (finding that there "is no doubt that the domain name [bmw.org] is identical to the Complainant’s well-known and registered trademarks [BMW]"); Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., [2000] USCA2 33; 202 F.3d 489 (2^nd Cir. 2000) cert. denied 120 S.Ct. 2719 (2000), ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix.com n3").

Accordingly, the Panel finds that on its face the record shows that Complainant’s mark is identical to the domain name registered by Respondent.

The Policy also requires that the domain name be identical to or confusingly similar "to a mark in which complainant has rights" or legitimate interests. ICANN Policy 4(a)(i).

Several UDRP decisions have come to the conclusion that a Complainant demonstrates sufficient right and legitimate interest in a mark by providing evidence of either a certificate registration or sufficient use to confer common law rights. See Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that complainant has a bona fide basis for making the complaint in the first place).

Here, Complainant demonstrated sufficient use of REAL IMAGE and REALimage as identifying marks associated with Complainant such as would warrant common law protection. See Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution June 9, 2000) (finding that Complainant established sufficient rights by virtue of its distribution and advertising to enable to be able it, at common law, to prevent another magazine by the same name from being passed off as that of complainant.

To be entitled to its requested relief, the Panel must also find that Respondent has no rights or legitimate interest with respect to the disputed domain name. Evidence which will demonstrate rights or a legitimate interest includes:

(i) before any notice to you [Respondent] of the dispute, your [Respondent’s] use of, or 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you [Respondent] have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent has filed no controverting proof to challenge Complainant’s rights and legitimate interest in the marks at issue. Furthermore, the evidence presented does not allow any inference that Respondent should be deemed to have demonstrated any rights or legitimate interest. In over two years, Respondent has not made any use of the domain name nor provided any evidence of demonstrable preparations to use the domain name. Respondent, though it calls itself Real Image in its domain name registration, has not provided any evidence to indicate that is "commonly known by the domain name." Simply listing a corresponding company name in a domain name registration does not establish that respondent is commonly known by a corresponding domain name.

Accordingly, the Panel finds that Complainant established that it has rights to and legitimate interest in the mark that was used to register the domain name in issue and that Respondent has no rights or legitimate interests relative to the domain name. ICANN Policy 4(a)(i) and (ii).

The Panel must also determine whether Respondent, in its registration and use of the domain name, has demonstrated sufficient bad faith to warrant transfer of the domain name. In making its determination, the Panel may look to the four factors listed in the ICANN Policy, as well as other factors, including the surrounding circumstances. One important consideration is Respondent’s good faith use or preparations to use the domain name. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

If a person registers a domain name that is identical to or confusingly similar to another’s trademark and makes absolutely no use of the domain name, there is no reason to believe that the person has any good faith use for the domain name. See Mondich & Amer. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).

Here, Respondent has been passively holding the domain name since January 29, 1999, and has provided no evidence of preparations to use the domain name in the future. This is sufficient to establish that Respondent registered the domain name in issue in bad faith.

Based upon the above findings and conclusions, and pursuant to Rule 4(i), Complainant has established it’s right to the requested relief. It is therefore Ordered and the Undersigned directs that the domain name realimage.com be transferred from Respondent to Complainant.