Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Advantor Corporation, Orlando, FL, USA ("Complainant") represented by Kathryn B. Hoeck, of Akerman, Senterfitt & Eidson. The Respondent is Infotek Inc., Patchogue, NY, USA ("Respondent").

The domain name at issue is "advantor.net" registered with eNom.

The undersigned certifies that he or she 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 January 15, 2001; the Forum received a hard copy of the Complaint on January 16, 2001.

On Janauary 15, 2001, eNom confirmed by e-mail to the Forum that the domain name "advantor.net" is registered with eNom and that the Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom 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 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 5, 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@advantor.net by e-mail.

A timely response was received and determined to be complete on January 22, 2001.

On January 29, 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 Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

1. The domain name in issue, "advantor.net," is identical and confusingly similar to Complainant’s trademark "ADVANTOR," registered with the United States patent and Trademark Office on November 7, 1995, and which was first used in commerce on January 15, 1992.

2. Respondent Infotek, Inc. has no right or legitimate interest in the domain name in issue. It has not used the name in connection with any bona fide offering of goods or services; it is not commonly known by the domain name; nor is it making any legitimate non-commercial or fair use of the domain name. ICANN Rule 3(b)(ix)(2); ICANN Policy Paragraph 4(a)(ii).

3. Respondent registered and is using the domain name in issue in bad faith. It registered the domain name only for the purpose of reselling it to Complainant or to its competitors for profit. It has over a thousand domain names for sale, including the domain name in issue, and is asking $20,000 for the domain name. This is in violation of ICANN Rule 3(b)(ix)(3) and ICANN Policy Paragraph 4(a)(iii).

B. Respondent

1. Respondent is supplying a domain name routing and a web page for a New York Suffolk County firm called "Advantor," which is in the "Voice over IP" business in New York State. Respondent registered "advantor.net" for this firm. The New York firm does not sell security systems and, accordingly, its use of the domain name is not confusingly similar. It is in a noncompetitive field in a noncompetitive area.

2. The domain name in issue was registered and is being used in connection with a legitimate business offering "Voice over IP" services. Accordingly, Respondent’s client does have rights and a legitimate interest in the domain name.

3. Respondent mistakenly placed the domain name in issue on a list of available names, and it did not knowingly attempt to sell the name to Complainant. It was not aware of Complainant’s mark when it registered the domain name. It did not and does not seek to disrupt the business of a competitor nor to attract customers of Complainant’s. There, accordingly, is no registration and/or use in bad faith.

1. The domain name in issue, "advantor.net" is identical and confusingly similar to Complainant’s trademark, registered with the United States Patent and Trademark Office on November 7, 1995, and first used in commerce on January 15, 1992. Complainant also owns the domain names "advantor.com" and "advantor.org," to which "advantor.net" also is identical and confusingly similar.

2. The domain name in issue was registered by Respondent.

3. While Respondent asserts that it mistakenly offered to sell the domain name in issue to Complainant, and, in fact, has sold the name to a New York Suffolk County firm called "Advantor," there has been presented to the Panelist no credible evidence whatsoever to demonstrate the existence of such an entity or its acquisition of the domain name. The Panelist, accordingly, is required to find that the assertion is untrue and that Respondent did offer to sell the name to Complainant for a profit.

4. Respondent admittedly is in the business of selling domain names, and has a for-sale listing of at least one thousand names.

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.

There is no question that Complainant has proved this point. (See Football Ass’n Ltd. v. UKIP, D2000-1359 (WIPO Dec. 15, 2000) finding that domain name "facup.com" is clearly identical to the FA CUP trademark belonging to Complainant; see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) finding that the domain name "wembleystadium.net" is identical to the WEMBLEY STADIUM mark.)

It always is difficult to determine credibility when provided only with a written record. Nevertheless, the Panelist has concluded that Respondent is in the business of selling domain names, and has acquired at least a thousand names for that purpose. Moreover, Respondent has not established that there is in fact a New York entity to which it sold the name. Why has not the New York entity, if one exists, itself responded? Where is the evidence of transfer? These questions are unanswered.

The Panelist holds that Respondent registered the domain name in issue primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name at issue. (See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name.)

Respondent is not using its domain name to promote its business as it alleges. It is, in fact, using the domain name at issue to promote its business of selling domain names. Respondent has registered thousands of domain names, which clearly demonstrates Respondent’s bad faith. (See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) finding that one instance of registration of several infringing domain names satisfies the burden imposed by ICANN Policy; see also Nabisco Brands Co. v. The Patron Group, D2000-0032 (WIPO Feb. 23, 2000) holding that registration of numerous domain names is one factor in determining registration and use in bad faith.)

Of course, this is classic "cybersquatting" demonstrating bad faith registration and use condemned by court decisions. (Panavision Int’l, L.P. v. Toeppen [1998] USCA9 991; 141 F.3d 1316, 1325 (9^th Cir., 1998) holding names for sale is "bad faith use" by the recently enacted Anticybersquatting Consumer Protection Act [15 U.S.C. §1125(d)(1)(A); and (1)(B)(i)(vi); and by the "Policy" [Paragraph 4b(i)].)

Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided that the domain name "advantor.net" registered by Respondent Infotek, Inc., and if owned by a New York entity, shall be transferred to Complainant Advantor Corporation.