Generic Top Level Domain Name (gTLD) Decisions

Complainant is Decisioneering, Inc., Denver, Colorado, USA ("Complainant") represented by Karen J. Smith of Hall Dickler Kent Goldstein & Wood, New York, N.Y.. Respondent is PA Gordon, Marina del Rey, California, USA ("Respondent"), pro se.

The domain name at issue is "crystalball.com" registered with Network Solutions, 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.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 20, 2001; the Forum received a hard copy of the Complaint on February 20, 2001.

On February 21, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "crystalball.com" is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions Service Agreement, Version 5, 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 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 13, 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@crystallball.com by e-mail.

On March 13, 2001, Respondent’s timely Response was received by the Forum and properly served on Complainant. Each of the parties filed untimely additional responses which may or may not be taken into consideration at the option of the Panelist.

On March 23, 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 Respondent.

The Panelist elected to take into consideration the untimely additional responses filed by each of the parties.

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

Complainant is the owner of the trademark "CRYSTAL BALL" which was registered with the U.S. Patent and Trademark Office in 1989 and is used in connection with computer programs and program manuals. The domain name at issue,"crystalball.com," is identical or confusingly similar to its trademark, says Complainant. Further, Respondent has no rights or legitimate interests in respect of the domain name at issue and is not commonly known by that name. Finally, Complainant asserts that Respondent is using the domain name in bad faith by not developing the site, by offering it for more than associated out of pocket registration expenses and by failing to transfer the domain name to the corresponding trademark owner.

B. Respondent

Respondent does not deny that the domain name at issue is identical or confusingly similar to Complainant’s trademark but claims that the trademark is generic and that Respondent was unaware that Complainant had a similar registered trademark until the commencement of this proceeding. While Respondent freely admits that it has not yet made use of the domain name at issue, by developing and using an associated website, there are plans to do so, says Respondent. Although Respondent admits owning a large number of domain names and that he is willing to sell some of these assets, this is not "cybersquatting" or other bad faith activity alleges Respondent.

Complainant is the owner on the Principal Register of the United States Patent and Trademark Office of U.S. Registration No. 1,560,597 for the trademark "CRYSTAL BALL" covering "computer programs and program manuals all sold as a unit for use in the field of decision-making under conditions of uncertainty" in International Class 9. Said registration was granted on October 17, 1989 and is valid, subsisting, and incontestable. Complainant is using the mark on and in connection with the goods identified in Registration No. 1,560,597, and has sold goods bearing the CRYSTAL BALL mark since at least as early February 2, 1988 in interstate commerce and throughout the world.

Complainant is former owner of the domain name at issue, having acquired the registration thereof by assignment on or about June of 1997. Complainant duly and properly renewed such registration with Network Solutions, Inc. ("NSI") in September of 1997. Owing to a processing error by NSI, however, Complainant was wrongfully divested of its registration. Complainant did not become aware that NSI had divested it of ownership until Complainant found that Respondent had registered the domain name at issue.

Respondent has not used nor made any demonstrable preparations to use the domain name at issue or any name corresponding to such domain name in connection with a bona fide offering of goods or services. To the contrary, Respondent first registered the domain name crystalball.com on January 1, 1998 and, for over three years, has established no related website nor conducted any related business activities. Respondent does not claim to the contrary. Respondent has never been known or recognized by the domain name at issue or any name corresponding to such domain name.

Respondent has been passively holding registration of the domain name at issue and has thereby deprived a corresponding trademark owner of its use. The evidence is contradictory as to whether Respondent demanded several hundred thousands of dollars from Complainant for transfer of the domain name at issue.

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." This Panelist takes note that Respondent did not attach a single evidentiary exhibit to its Response or to its Additional Response.

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 at issue is identical and confusingly similar to Complainant’s registered trademark. (See, Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000), holding that the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference.") This Panelist finds that Policy ¶ 4(a)(i) has been satisfied.

Respondent’s failure to make any use of the domain name at issue, during several years of registration, indicates a lack of legitimate interest. (See, Ziegenfelder Co. v. VMH Enterprises, Inc., D2000-0039 (WIPO Mar. 14 2000), failure to provide a product or service or to develop the site demonstrates that the Respondents have not established any rights or legitimate interests; State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000), finding that the Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name.)

Respondent has never been known or recognized by the domain name at issue or any name corresponding to such domain name. Thus, Respondent is not making any legitimate noncommercial or fair use of the domain name. (See, Leland Stanford Junior University v. Zedlar Transcription & Translation, FA 94970 (Nat. Arb. Forum July 11, 2000): "The Respondent has made no use of the domain name in question. This is evidence of bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 [WIPO Feb. 18, 2000].") Consequently, this Panelist finds that Policy ¶ 4(a)(ii) has been satisfied.

The undisputed evidence supports the conclusion that the Respondent has passively held the domain name since its registration, which demonstrates 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 DCI S.A. v. Link Commercial Corp. D2000-1232 (WIPO Dec. 7, 2000) (finding Respondent’s passive holding of the domain name satisfies the bad faith requirement. Thus, this Panelist finds that Policy ¶ 4(a)(iii) has been satisfied.

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

Accordingly, it is Ordered that the domain name, crystalball.com, be transferred from Respondent to Complainant.