Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Advanstar Communications Inc., Boston, MA, USA ("Complainant") represented by Martha M. Markusen, of Fryberger, Buchanan, Smith & Frederick, P.A. The Respondent is Michael Dalrymple, San Jose, CA, USA ("Respondent").

The domain names at issue are "advanstar.org" and "advanstar.net", registered with Dotster.

On March 8, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned Panelist certifies that he has acted independently and impartially and to the best of his knowledge and has no known conflict in serving as a panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 6, 2001; the Forum received a hard copy of the Complaint on February 7, 2001.

On February 08, 2001, Dotster confirmed by e-mail to the Forum that the domain names "advanstar.org" and "advanstar.net" are registered with Dotster and that the Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 February 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 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@advanstar.org and postmaster@advanstar.net by e-mail.

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

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

The Complainant, Advanstar Communications Inc. registered a trademark for "Advanstar" on January 17, 1995 and has been the holder of the domain name "advanstar.com" since June 3, 1995. Complainant uses its mark in conjunction with trade shows, conferences, exhibitions, magazines and other publications and maintains a variety of web sites under the "Advanstar" mark.

Complainant claims that Respondents domain names "advanstar.org" and "advanstar.net" are identical and confusingly similar to Complainant’s mark; that Respondent has no rights or legitimate interest with respect to the name "advanstar" and that he is not making any legitimate use of the names; that the domain names "advanstar.org" and "advanstar.org" were registered in bad faith and that Respondent acquired the domain names primarily for the purpose of selling them to the Complainant for an amount in excess of Respondents costs.

B. Respondent

The Respondent, Michael E. Dalrymple claims beginning in August 1996 and on several occasions thereafter advised Complainant of his interest in the domain names "advanstar.org" and "advanstar.net". Respondent states that he had encouraged Complainant to register the disputed names and that he was verbally told that Complainant had no current or future need for the names, therefore his registration of the disputed names on March 24, 2000 was not in bad faith. Respondent contends he and his associates contemplate starting a company using the name "AdVanStar". Respondent claims rights or a legitimate interest in the domain names as their use of the term "advanstar" is descriptive and refers to a business plan of "running Ads on Vans and that they are set to be ‘Star’ performers at this service."

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 domain name is identical to the Complainant’s mark. See ViewSonic Corp. v. Informer Assoc. Inc., D2000-0852 (WIPO Sept. 6, 2000) (finding that the domain names "viewsonic.net" and "viewsonic.org" are identical to the Complainant’s mark).

Respondent has not offered any evidence to support his claim of the existence of a bona fide business plan or shown any preparation for offering goods or services under the

"advanstar" name. See Open Systems Computing AS v. Alberto degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent did not establish rights and legitimate interests in the domain name where Respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim).

Respondents claim that he has a business plan to utilize the disputed domain names is weakened by his January 26,2001 letter to Mr.Krakoff justifying his right to the domain names which makes no mention of a business plan or a legitimate right to use of the term "AdVanStar" or the disputed domain names.

Further, Respondent is not known by the name "advanstar". Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Adamovske Strojirny v Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question).

Respondent had not made any use of the domain name prior to the Hive4.com cease and desist letter of January 23, 2001. See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where the Respondent claimed to be using the domain name for a non-commercial purpose but had made no actual use of the domain name).

Paragraph 4(a)(ii) of the Policy sets forth three circumstances under which a Respondent may show a legitimate interest in the domain name:

Respondent has failed to demonstrate rights or legitimate interest in the domain names.

Respondent registered the disputed domain names with full knowledge of the Complainant’s trademark. Complainant has not granted permission to Respondent to use its mark. Respondent in his January 17, 2001 letter to Mr. Krakoff offered to sell the disputed names to Complainant for $1,167,046. Respondent justifies his actions by saying that Complainant has acted irresponsibility in not registering the " .org" and ".net" names in 1995 or thereafter to prevent him from doing so and that he previously offered to sell the names for $1,150 and received no response.

A determination of bad faith under the Policy does not rest upon what the Respondent believes constitutes good business decisions or proper conduct on the part of the Complainant. But, the Respondents offer to sell the name for an amount far in excess of his actual costs constitutes bad faith. See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where Respondent stated in communication with Complainant, "if you are interested in buying this domain name, we would be ready to sell it for $10,000"). Failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000); see also 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).

Finally, Respondent also threatened in the January 17, 2001 communication to sell the domain names to an "Asian electronics/technology company" for "nearly a million dollars" if Complainant failed to meet his demands. See Penguin Books Ltd. v. Katz, D2000-0204 (WIPO May 20, 2000) (finding bad faith where Respondent attempted to sell the disputed domain name to a third party).

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted.