Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Robo Enterprises, Inc., Bowling Green, KY, USA ("Complainant" or "Robo"). The Respondent is Ronald G. Daringer, Cambridge, MD, USA ("Respondent" or "Mr. Daringer").

The domain name at issue is <roboenterprises-litigation.com>, registered with Enom, Inc.

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

As elected by the parties, Jonathan Hudis is the Sole Panelist for this proceeding.

On or about January 9, 2001, Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Forum received a hard copy of the Complaint on January 9, 2001.

On January 15, 2001, the domain name Registrar Enom, Inc. confirmed by e-mail to the Forum that the domain name <roboenterprises-litigation.com> is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement, and has thereby has agreed to resolve domain name disputes brought by third parties in accordance with the Policy.

On January 15, 2001, the Forum transmitted to Respondent 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, via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as the technical, administrative and billing contacts for the contested domain name, and to postmaster@roboenterprises-litigation.com by e-mail.

A timely response was received and determined to be complete on February 5, 2001.

On February 13, 2001, pursuant to the parties’ request to have the dispute decided by a Single Member Panel, the Forum appointed Jonathan Hudis as Sole Panelist.

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

A. Complainant

Robo asserts that Mr. Daringer registered and knowingly continues to use the contested <roboenterprises-litigation.com> domain name after having been notified of Robo’s trademark rights, and after Robo sent a cease and desist letter requesting that Mr. Daringer terminate his complained of conduct.

Robo contends that the contested domain name is a violation and infringement of, and is identical and/or confusingly similar to, Robo’s registered service mark, ROBO ENTERPRISES. Robo further asserts that Mr. Daringer has conspired with persons responsible for the maintenance of a web site located under the domain name <roboenterprises-investors.com> to divert Robo’s Internet traffic to their web site.

Based on these activities, Robo contends that Mr. Daringer has no rights or legitimate interests to the contested domain name, and that Mr. Daringer’s registration and use of the contested domain name has been in bad faith.

B. Respondent

Mr. Daringer contends that Robo has not complied with the requirements of the ICANN Policy, or its associated Rules, in bringing the instant Administrative Proceeding. Mr. Daringer also asserts that his registration and use of the contested domain name <roboenterprises-litigation.com> does not violate the Policy.

Mr. Daringer argues that the contested domain name is neither identical nor confusingly similar to Robo’s mark ROBO ENTERPRISES because of the addition of the term "litigation". In addition, Mr. Daringer claims that his use of the contested domain name is nominative, which does not run afoul of trademark law provided consumers are not confused into believing that his web site is sponsored by or affiliated with Robo. Mr. Daringer, accordingly, asserts that his web site clearly identifies its purpose, which is to criticize Robo’s treatment of investors; and therefore, there is no chance of confusion with Robo or the ROBO ENTERPRISES mark.

Mr. Daringer also asserts that he is using the contested domain name at issue in connection with a legitimate noncommercial use, criticism of Robo’s business activities. Finally, Mr. Daringer contends that he has neither registered nor used the contested domain name in bad faith.

Robo’s Complaint states the following: "The Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to Ronald Daringer, 5114 North drive., Cambridge, MD 21613. ICANN Rule 3(b)(xiii)". Technically, this is a defective statement of "Mutual Jurisdiction" under the Rules, paragraphs 1 and 3(b)(xiii). The Panel takes this Statement to mean that Robo will submit to the jurisdiction of the courts of Maryland for purposes of a challenge to this Panel’s decision. The Panel will now proceed to the merits of the parties’ dispute.

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."

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:

The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

On the other hand, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the registrant’s rights or legitimate interests to the domain name:

Policy, Para. 4(c ).

Robo has provided evidence to the Panel’s satisfaction that it has rights in ROBO ENTERPRISES as a trademark.

Certainly, however, the contested domain name <roboenterprises-litigation.com> cannot be considered "identical" to the ROBO ENTERPRISES mark. The panel must decide whether the contested domain name and Complainant’s mark are "confusingly similar" to one another. In the context of this Administrative Proceeding, this is a close question.

On the one hand, combining a generic word with Complainant’s registered mark does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the Policy. L.L. Bean, Inc. v. ShopStarNetwork, FA95404 (Nat. arb. Forum Sept. 14, 2000) <shopllbean.com> [Since the word "shop" has to do with the Complainant’s business, when it is combined with Complainant’s mark, consumers are confused and misled by Respondent’s domain name.].

On the other hand, when the domain name in question itself signifies critical purposes, as opposed to imitation of the Complainant’s mark, confusing similarity will not be found. Wal Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, D2000-1104 (WIPO Nov. 23, 2000) <wallmartcanadasucks.com>.

In the contested domain name, Mr. Daringer does not combine the ROBO ENTERPRISES mark with a word or phrase that would clearly indicate it is not associated with or authorized by Robo, such as "sucks", "stinks", "is-unfair", or terms of like import. However, from a review of the web site located under the domain name <roboenterprises.com>, it appears that Robo’s business is the "development of natural gas and crude oil properties", not litigation. So, the term "litigation" cannot be said to be generic with respect to the business of Robo. However, the domain name itself does not signify the critical purpose of Mr. Daringer’s web site; and to the casual observer, before reaching Mr. Daringer’s site, the term "litigation" has at most a neutral meaning.

Since the contested domain name otherwise wholly appropriates Robo’s mark ROBO ENTERPRISES, the Panel finds that the contested domain name is confusingly similar to a mark in which Complainant has rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the policy.

Paragraph 4(a)(ii) of the Policy requires that Complainant show that Mr. Daringer has no rights or legitimate interests in respect of the contested domain name. Paragraph 4(c) of the Policy set forth examples of such possible rights or legitimate interests.

Paragraph 4(c)(i) does not appear to apply, because Mr. Daringer has not shown that he has ever used, or that he has made demonstrable preparations to use, the contested domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Paragraph 4(c)(ii) does not appear to apply, because Mr. Daringer has not shown that he (as an individual, business, or other organization) has been commonly known by the contested domain name, even if he has acquired no trademark or service mark rights.

The question remains whether Mr. Daringer is making a legitimate noncommercial or fair use of the contested domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue, under paragraph 4(c)(iii) of the Policy. The Panel finds that Mr. Daringer is doing so. Bridgestone Firestone, Inc. et al. v. Myers, D2000-0190 (July 6, 2000) <bridgestone-firestone.net> ["Respondent’s principal purpose in using the domain name appears not to be for commercial gain, but rather to exercise his First Amendment right to criticize the Complainants."].

It is readily apparent from Mr. Daringer’s web site located at the contested domain name that he has posted information critical of Robo and its business practices, and other material stating that Mr. Daringer has commenced litigation against Robo for alleged securities law violations. Thus, Mr. Daringer’s principal purpose in using the domain name appears not to be for commercial gain, but rather to exercise his First Amendment right to criticize Robo. Consequently, since Mr. Daringer has shown that paragraph 4(c)(iii) of the Policy applies here, Robo has not satisfied paragraph 4(a)(ii) of the policy.

Paragraph 4(b) of the policy provides a non-exclusive list of circumstances under which Respondent can be said to have registered and used the contested domain name in bad faith, for purposes of 4(a)(iii) of the Policy. None of these circumstances appear to apply here.

Robo has not asserted that Mr. Daringer registered or acquired the contested domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Robo, or to a competitor of Robo. Mr. Daringer has not registered the contested domain name in order to prevent Robo from reflecting the ROBO ENTERPRISES mark in a corresponding domain name. Nor could Robo so allege. It already has registered and uses the domain name <roboenterprises.com> for an active web site. Moreover, there is no proof that Mr. Daringer has engaged in a pattern of such bad faith conduct.

Since Robo and Mr. Daringer are not competitors, there is no evidence that Mr. Daringer "registered the [contested] domain name primarily for the purpose of disrupting the business of [Robo as a] competitor". Finally, Robo does not allege, nor is there any proof, that Mr. Daringer is using the contested domain name intentionally to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the ROBO ENTERPRISES mark as to the source, sponsorship, affiliation, or endorsement of the Mr. Daringer’s web site or location or of a product or service on his web site or location.

Therefore, the circumstances of paragraph 4(b) of the Policy have not been shown by Robo to exist, for purposes of 4(a)(iii) of the Policy.

The Panel also does not find to be bad faith the fact that Mr. Daringer’s web site contains (i) text critical of Robo, or (ii) a link to another web site under the domain name <www.oil-gas-news.com> (which the Panel believes previously appeared under the domain name <roboenterprises-investors.com>) critical of Robo, to be circumstances of bad faith. "[T]his case involves alleged defamation, not cybersquatting. As such, it turns on issues that are outside the mandate of the Policy." Kendall v. Mayer, D2000-0868 (WIPO Oct. 26, 2000) < skipkendall.com>.

Therefore, Robo has not satisfied paragraph 4(a)(iii) of the Policy.