Generic Top Level Domain Name (gTLD) Decisions

The Complainant is The Norac Company Inc., Azusa, CA, USA ("Complainant") represented by Jonathan Hudis, of Oblon, Spivak, McClelland, Maier, & Neustadt. The Respondent is Nicolas Petit, Beaumont, Hte Savoie, FRANCE ("Respondent").

The domain names at issue are "be-nox.com" and "benox.com" registered with Network Solutions.

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.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 9, 2001; the Forum received a hard copy of the Complaint on February 12, 2001.

On February 15, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names "be-nox.com" and "benox.com" 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 4.0 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 February 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 14, 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@be-nox.com, benox.com by e-mail.

Having received no formal Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 22, 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.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

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

A. Complainant

Complainant alleges the following:

B. Respondent

Respondent has not submitted an official response in this matter. However, on March 12, 2001, Respondent submitted a "Consent to Transfer" email to the Forum in regard to the disputed domain names.

Complainant, The Norac Company, Inc., is a New Jersey corporation with its main headquarters in Azusa, California, as well as operating plants in Arkansas and Sweden. Since its inception in 1949, Complainant has been a leading producer of organic peroxide initiators. Since 1966, Complainant has produced and sold metallic stearate products. In addition, Complainant is licensed to research and manufacture controlled and non-controlled pharmaceuticals. Accordingly, Complainant produces, markets and sells a variety of high-quality benzoyl peroxide products under its registered mark, BENOX. Complainant has used its BENOX mark since 1960 and has achieved considerable customer recognition and goodwill in connection with its mark.

Respondent, Nicolas Petit, has not used the disputed domain names for any purpose since registration, and has agreed to transfer the disputed domain names to the Complainant.

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."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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.

Complainant’s rights are evidenced by its registered mark BENOX.

The Panel finds that Respondent’s domain names, be-nox.com and benox.com, are identical and confusingly similar to Complainant’s well-established mark. See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) ("The domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features"); see also Dollar Fin. Group, Inc. v. Advanced Legal Sys., Inc., FA 95102 (Nat. Arb. Forum Aug. 14, 2000) (finding that the domain name <loan-mart.com> is confusingly similar to the Complainant’s mark).

Therefore, Policy ¶ 4(a)(i) has been satisfied.

The Panel finds that Respondent is not commonly known by the disputed domain names, nor is Respondent using the domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. See 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).

Also, Respondent asserted no rights or legitimate interests in the disputed domain names, which entitles the Panel to conclude Respondent has no such rights or legitimate interests in the domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names");

see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).

Consequently, Policy ¶ 4(a)(ii) has been satisfied.

The Panel finds that Respondent has passively held the disputed domain names, which constitutes bad faith. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Moreover, the evidence supports the conclusion that Respondent registered the disputed domain names intentionally to attract Internet users to its web site, strictly for commercial gain, via a likelihood of confusion with Complainant well-established mark. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant …the Respondent is attracting Internet users to a web site, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s web site).

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Accordingly, it is Ordered that the domain names, be-nox.com and benox.com, be transferred from Respondent to Complainant.