Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Wayne Ause, Koala Web Design, Portland, OR, USA ("Complainant") represented by Peter Vaughn Shaver of Haver & Associates. The Respondent is Patricia Rodrigues d/b/a Koala Web Design, Lake Arrowhead, CA, USA ("Respondent") represented by Gene E. Rodrigues.

The domain names at issue are koalawebdesign.com, and koalawebdesign.net, registered with Network Solutions.

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.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 26, 2000; the Forum received a hard copy of the Complaint on December 26, 2000.

On Jan 3, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names koalawebdesign.com, and koalawebdesign.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 January 3, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 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@koalawebdesign.com, and koalawebdesign.net by e-mail.

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

On January 26, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.

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

A. Complainant

The Complainant asserts that koalawebdesign.com and koalawebdesign.net (the "domain names at issue") are identical or confusingly similar to a trademark or service mark in which it has established common law rights, to wit: Koala Web Design (the "Mark"). Further, the Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain names at issue, is a junior user of the Mark and that the domain names at issue were registered by Respondent and are being used in bad faith.

B. Respondent

Respondent agrees that the domain names at issue are identical or confusingly similar to a trademark in which the Complainant has rights. However, Respondent claims that she has rights or legitimate interests with respect to the domain names at issue and that she registered and uses the domains in good faith. Further, she essentially claims that Complainant is guilty of "reverse domain name hijacking."

Complainant has conducted a website consulting and design business using the Mark, "Koala Web Design," since April of 1995. Even though Complainant has variously claimed that it had registered the Mark or was in the process of registering the Mark in communications with Respondent, such is apparently not the case. Nonetheless, Complainant claims that it has established common law trademark rights in the Mark by virtue of continuous use in connection with its services since 1995. Complainant cites several publications referring to his services identified by the Mark. While Complainant has his principal business in Oregon, he has provided services for several customers outside of that state, including California, using the Mark to identify those services. These allegations are not disputed by Respondent.

Respondent commenced a business essentially identical to that of Complainant in June of 1999 in Southern California using the business name "Koala Web Design and Computer Services" and contemporaneously registered the domain name, koalawebdesign.com, one of the domain names at issue. In December of 1999, Complainant contacted Respondent claiming he had registered trademark status for "Koala Web Design" and suggesting the possibility that Respondent buy the domain name rights. Respondent claims that she was unaware of the existence of Complainant and of his prior rights in the Mark at the time she registered the koalawebdesign.com domain name.

Complainant sent follow up communications to Respondent in July of 2000, demanding that the domain name be transferred to Complainant. Respondent did not comply. Rather, on September 21, 2000, Respondent registered koalawebdesign.net, the second of the domain names at issue. On October 27, 2000, "as an accommodation to Complainant," Respondent added a disclaimer to the home page of her website: "Koala Web Design and Computer Services is located in scenic Lake Arrowhead, California. We are not affiliated with Koala Web Design of Portland, Oregon or Wayne Ause." Respondent has made efforts to ensure that her company is not referred to in a shortened form as "Koala Web Design" and therefor may not now be commonly known by the domain names at issue.

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.

The parties agree, and this Panelist concurs, that the domain names at issue are identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Mark. This Panelist notes, however, that Complainant probably would have avoided this controversy and the related expense and confusion by at least applying for federal registration of the Mark with the U.S. Patent & Trademark Office.

This is a dispute between two small businesses providing identical services, less than a thousand miles apart, and operating under essentially the same names. By virtue of the ubiquitous nature of Internet, the public will be inevitably confused as to the source or identity of the provider of services offered under the same or essentially similar names as is the case here. Paragraph 4.(a) (i) of ICANN’s UDRP Policy does not provide protection for only those trademarks or service marks which are registered. Several widely cited UDRP decisions have recognized that common law trademarks are protected in appropriate circumstances. 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); Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the Complainant has common law rights in the mark FISHTECH, since Complainant has used the mark since 1982). Complainant has established evidence of a common law trade or service mark.

While Respondent has built up a website design and computer services business in connection with the domain names at issue, she has done so under the protest of the Complainant who began his business more than four years earlier. It strains credulity to argue that Respondent was unaware of Complainant and did not do a search of the Internet and find Complainant’s website at www.koalaweb.com prior to plunging into the website design business herself. Even assuming that she was ignorant of the existence of a competitor with essentially the same name a few hundred miles to the north, upon opening her doors in June of 1999, she was admittedly made aware of Complainant and the controversy a few months later in December when he made contact and claimed prior rights to the Mark. With that clear awareness of a conflict, and additional cease and desist communications from Complainant, Respondent registered koalawebdesign.net on September 21, 2000. The equities do not seem to tilt in her favor. See America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that "[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business"). I find that Respondent does not have any rights or legitimate interest in respect of the domain names at issue.

The findings in the preceding paragraph, particularly with respect to the continued use by Respondent of the domain names at issue after admitted actual awareness of Complainant’s prior use of the Mark in an identical business, in an overlapping geographical area, lead to a finding of bad faith as defined by ICANN Policy, paragraph 4(b)(iv). See America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding is that the Respondent intentionally attempted to attract Internet users to his web-site for commercial gain by creating a likelihood of confusion with the Complainant’s mark by offering the same chat services via his web-site as the Complainant); Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

After ten months of being well aware of Complainant’s existence and his claims that koalawebdesign.com infringed his rights, Respondent chose to register koalawebdesign.net. I find the bad faith element to be satisfied.

It is sad that the koala, a placid Oceanic marsupial who preys on nothing and subsists only on the leaves of the eucalyptus, is the subject of such a bitter and preventable contest. The Panelist compliments the excellence of argument and briefing on the part of the representatives of the Parties in this difficult case.

It is the Decision of this Panel that the domain names at issue, koalawebdesign.com and koalawebdesign.net, be transferred from Respondent to Complainant.