Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Map Supply, Inc., Lexington, NC, USA ("Complainant"). The Respondent is On-Line Colour Graphics, New York, NY, USA ("Respondent").

The domain name at issue is "mapsupply.com" registered with Bulkregister.

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. Roger P. Kerans as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 27, 2000; the Forum received a hard copy of the Complaint on January 3, 2001.

On December 29, 2000, Bulkregister confirmed by e-mail to the Forum that the domain name "mapsupply.com" is registered with Bulkregister and that the Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister 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 4, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 24, 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@mapsupply.com by e-mail.

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

On January 30, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Hon. Roger P. Kerans as Panelist.

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

A. Complainant

The Complainant has for some time been in the business of publishing travel products, including maps, and marketing them in the USA under its corporate name. The company has registered "Mapsupply.Inc" as a trade mark, and registered the domain name "MAPSUPPLY.COM" in 1996.

In July, 2000, the Complainant entered into a contract with Multilynx, Inc. to design and build a new web-site for this domain name. They were then approached by somebody about design issues and instructions, and assumed that he was a "representative" of Multilynx. (The Multilynx proposal to the Complainant (Exhibit 1BB) says that "additional services will be provided by OLC Design). The Complainant informed their Internet service provider that this person was to become a "technical contact and DNS".

The Claimant says that it paid Multilynx in full for the services rendered. But, when it sought access to the site, it was "down". The Complainant then contacted the Respondent and was told that Multilynx had failed to pay the Respondent for services rendered by it to that firm in connection with the site work, and sought the sum of $3200 from the Complainant. The Complainant says it has no contractual obligation to the Respondent, and that the Respondent admitted that in discussions.

The Claimant then decided to retain a new firm to design its site. The Complainant then discovered that the domain name had been removed to another service provider, and now was registered to the Respondent.

The Complainant acknowledges that the Respondent may have a right to hold the web-pages against payment, but not the name. It says: "It is our name, our business, it is what we do and it is who we are."

B. Respondent

The Respondent acknowledges most of what is said by the Complainant, but insists that the transfer of the domain name was a routine event because it was supposed to host the website. When its account was not paid, the Respondent "became the owner of the domain name" by default. It says that once paid it "may be able to re-assign ownership".

To support the claim that the name transfer was part of the bargain, the Respondent says that "In reference to Exhibit 1D, the Respondent was to maintain mapsupply.com for Multilynx, Inc. That naturally called for a transfer of mapsupply.com from Multilynx to the Respondent."

FINDINGS

The only fact in dispute is whether the Complainant consented expressly or implicitly to the transfer of its domain name from its sole control to that of the Respondent.

Exhibit 1D, relied upon by the Respondent, is a bill from MultiLynx to the Complainant for three monthly charges:

Web site hosting and maintenance: $35

Monthly maintenance for utilizing a UNIX servor $24

Monthly maintenance fee for a domain name

of the form "www.yourname.com" $6

While it may be more convenient for a web-site manager to become the registrant of the domain name, the Respondent has not offered any compelling evidence that a transfer of registration is technically necessary to perform management or maintenance services. On the contrary, I am satisfied that the services described in the invoice can be performed without the transfer of the domain name registration.

There is no reference in Exhibit 1N, the contract with Multilynx, to any change in domain name registration. On the contrary, the Multilynx proposal, Exhibit 1BB, provides: "We recommend that you retain title to all those domain names yourself – do not reregister them to anyone." (Emphasis added.).

Lastly, it would appear from Exhibit 5, a Report from its service provider filed by the Complainant as an exhibit, that the transfer of registration was done on November 11, 2000. The significance is that all the design work had been done long before that.

On the evidence presented to me, I reject the contention of the Respondent. I accept the argument of the Complainant that the better inference on this evidence is that the Respondent somehow managed to transfer domain registration without authority, and did so for the sole purpose of taking control of it as a security against payment.

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.

In this case, the domain name is identical. Indeed, the fight is over the one name.

There is no question about the legitimacy of the rights and interests of the Complainant.

I know of no factual or legal basis for the claim of the Respondent that, when its account was not paid, the Respondent "became the owner of the domain name" by default.

The Respondent argument does raise the interesting question whether an unpaid web designer once given control over a domain name by the client can retain it as a security for payment. In my view, this may be so. The law may recognize some sort of lien or charge against a domain name. To assert such a claim is to assert a legitimate interest. On that assumption, this could be a dispute to be decided by traditional means - as it would fall outside the scope of this tribunal.

This case, however, does not quite reach that issue. The Respondent has failed to persuade me that there is any chance that the law would permit it, without the consent of the client, to take control of a domain name, and then retain control as a security against payment for web-design work. And that is what happened here.

Also, in some cases, the party hiring design work or maintenance work on a website may by contract grant security against a domain name. That is not this case

I should add that, as the Complainant concedes, the Respondent may retain control over the work it has done on the web-site as a security against payment. But that is quite different technically and legally from control over the domain name, although I appreciate it has little value in this case to anybody other than the Complainant, who has rejected it.

I conclude that the Respondent has no legal or legitimate interest in the domain name.

This is a novel case and does not quite fit within the four illustrations of bad faith expressed in Paragraph 4(b) of the ICANN Uniform Domain Name Dispute Resolution Policy. Nevertheless, to re-register a domain name without any authority from the registrant in order to gain a bargaining position over the registrant - with whom it had no legitimate dispute - is unconscionable. Paragraph 4(b) is explicit that the four illustrations of bad faith there stated are not exhaustive. The Respondent is guilty of bad faith.

The domain name is transferred back to the Complainant.