Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Fisher Controls International, Inc., Clayton, MO, USA ("Complainant") represented by Thomas L. Casagrande. The Respondent is Registral.com LLC, Magnolia, TX, USA ("Respondent") represented by Howard M. Neu, of Law Office of Howard M. Neu, P.A..

The domain name at issue is "fisher.com" registered with e-names.org.

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as panelist in this proceeding.

John A. Bender, Louis E. Condon, and Jeffrey M. Samuels as Panelists.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 22, 2001; the Forum received a hard copy of the Complaint on February 22, 2001.

On February 24, 2001, e-names.org confirmed by e-mail to the Forum that the domain name "fisher.com" is registered with e-names.org and that the Respondent is the current registrant of the name. e-names.org has verified that Respondent is bound by the e-names.org 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 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 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@fisher.com by e-mail.

A timely response was received and determined to be complete on March 20, 2001.

On March 26, 2001, pursuant to Respondent request to have the dispute decided by a Three Member Panel, the Forum appointed John Bender, Louis Condon, and Jeffrey Samuels as Panelists.

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

A. Complainant

Complainant contends that Respondent has registered fisher.com in bad faith and has not used it for any good business purpose, but rather has used the fisher.com name to direct incoming Internet searches to Respondent’s various websites.

B. Respondent

Respondent contends that Complainant has waived its rights to use the fisher.com domain name, that Respondent is not in competition with Claimant, and that Respondent is using fisher.com for appropriate purposes.

C. Additional Submissions

The parties each submitted additional materials in response to each other’s arguments, and those materials were reviewed by the Panel, but were not persuasive one way or another as to the Panel’s decision.

The Panel finds that the domain name fisher.com should be transferred to Complainant.

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.

Complainant contends Respondent’s domain name, fisher.com, is identical to its well-established mark. 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"); see also Interstellar Starship Services Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (epix.com "is the same mark" as EPIX); Banco Mercantil del Norte, S.A., v. Servicios de Comunicación En Linea, D2000-1215 (WIPO Nov. 23, 2000) (finding that the domain name, <banorte.com> is identical to Complainant’s BANORTE trademark and commercial name).

The fisher.com domain name is identical to Complainant’s protectable mark.

Respondent has no rights or legitimate interests in the disputed domain name because its only use of the domain name has been to redirect Internet traffic to other web site locations, which is not a bona fide use. See Computer Doctor Franchise Sys., Inc. v. The Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the Respondent’s web site, which is blank but for links to other web sites, is not a legitimate use of the domain names).

In addition, Respondent is not commonly known by the domain name, nor has Respondent used the domain name in connection with a legitimate noncommercial or fair use without intent for commercial gain. See 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).

Further, after notice of this dispute, Respondent modified its web site to include text referring to "Fisher Family Genealogy," but offered no link to a genealogical site; and instead, offered unrelated search links for commercial gain. See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the Respondent had no rights or legitimate interests where he decided to develop the web site for the sale of wall products after receiving the Complainant’s "cease and desist" notice); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that "unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services").

Complainant alleges it held a registration for the disputed domain name prior to Respondent’s registration. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary).

Complainant also contends that Respondent has a history of registering temporarily lapsed or infringing domain names. See Encyclopaedia Britannica Inc. v Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others); see also Gamesville.com, Inc. v. John Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 200) (finding that Respondent has engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith).

Moreover, Complainant asserts that Respondent registered the disputed domain name to intentionally attract, for commercial gain, Internet users to its web site, or other online location, by creating a likelihood of confusion with Complainant’s well-established mark as to the source, sponsorship, affiliation and endorsement of Respondent’s web site. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a web site that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s marks); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).

Further, Respondent’s only plausible reason for registering the disputed domain name was for the purpose of selling, renting or otherwise transferring it to another, for valuable consideration in excess of Respondent’s out-of-pocket costs directly associated with the disputed domain name. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the "totality of circumstances").

Finally, Complainant asserts that Respondent had actual and constructive notice of Complainant’s trademark rights prior to registering the disputed domain name. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names). The evidence is sufficient to determine Complainant has carried its burden here.

Because Complainant has met its burden to show that the domain name should be transferred, this panel finds for the Complainant and orders the transfer of the domain name "fisher.com" to Complainant.