Generic Top Level Domain Name (gTLD) Decisions

The Complainant is US Relocation Services Inc., Denver, CO, USA ("Complainant") represented by Jeffrey Margolis. The Respondent is Terry Hastings, Ridgefield, CT, USA ("Respondent") represented by James R. Hastings, of Collen Law.

The domain name at issue is "usrelocation.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.

The Honorable Paul A. Dorf (Ret.) 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 name "usrelocation.com" is 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 5.0 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 20, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 12, 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@usrelocation.com by e-mail.

A timely response was received and determined to be complete on March 12, 2001.

On March 21, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

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

A. Complainant

It is the Complainant’s contention that the domain name at issue is identical or confusingly similar to its common law service mark, that the Respondent does not have any rights or legitimate interests in the domain name and that the domain name was registered in bad faith.

B. Respondent

The Respondent contends that the domain name at issue is not identical or confusingly similar to Complainant’s common law mark, that it does have rights and legitimate interests in the domain name and that it did not register the domain name in bad faith.

C. Additional Submissions

The Complainant filed a Reply to Response of Respondent. The response was not timely filed, but was read and considered by this Panelist.

The Complainant is engaged in the business of employee relocation services, and has been in business since 1991. On March 11, 1991, the Complainant filed a trademark registration for its service mark. Said application was abandoned on February 28, 1992 for failure to respond. Immediately prior to the filing of this Complaint, another service mark application was filed with the United States Patent and Trademark Office.

The Respondent is a licensed real estate broker in the State of Connecticut. Respondent has been offering relocation marketing services since 1987. In 1996, Respondent engaged the services of Digital Entertainment, Inc. to register the domain name and eventually activate a website. The domain name was registered in August, 1996, and the domain name registration was renewed on August 3, 2000. The Respondent is actively engaged in developing a website to offer his services.

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 at issue is comprised of the generic terms "US" and "relocation" not associated exclusively with the Complainant’s business. The Respondent chose the domain name as it described the services he was offering, so that when an Internet user typed any of these words into a search engine, his website would appear. In addition, no trademark has been approved for the Complainant’s trade name and/or service mark. See Rollerblade, Inc. v. CBNO and Ray Redican Jr., D2000-0427 (WIPO Aug. 24, 2000) (finding that "genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration"). See also

SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant failed to show that it should be granted exclusive use of the domain name "SOCCERZONE.COM", as it contains two generic terms and is not exclusively associated with its business).

The Respondent was preparing to use the disputed domain name to offer relocation services via the internet to reach a wide audience by creating an active web site, and has acquired quotes from web site designers. See SFX Entertainment, Inc. v. Phillip Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the Respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); see also 3Z Productions v. Globaldomain, FA 94659 (Nat. Arb. Forum June 9, 2000) (finding a legitimate interest in a domain name is shown by web site development).

As the domain name is comprised of generic terms, there appears to be no bad faith registration. See Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).

Also, even though it prevents the Complainant from reflecting its common law mark, there is no evidence that the Respondent registered the domain name with the intention of disrupting the Complainant’s business by attracting potential customers to his website through deception. See Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000) (finding no bad faith even though Respondent’s ownership and purported use of the domain name frustrates Complainant’s efforts where the record does not indicate any purpose or intent on the part of the Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion).

As the Complainant has failed to prove each of the three elements under Section 4(a) of the Policy, the Complainant’s request for cancellation or transfer is denied. The domain name "usrelocation.com" shall remain with the Respondent.