Generic Top Level Domain Name (gTLD) Decisions

Complainant is www.VALIDsites.com , Sunrise, FL, USA ("Complainant") represented by Steven W. Workman. Respondents are Grace English and Martiza Nanasca, Hollywood, FL, USA ("Respondents").

The domain name at issue is "validsites.com" registered with Network Solutions Inc.

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as a panelist in this proceeding.

Honorable Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 1, 2000; The Forum received a hard copy of the Complaint on December 4, 2000.

On December 8, 2000, Network Solutions Inc. confirmed by e-mail to the Forum that the domain name validsites.com is registered with Network Solutions Inc. and that Respondents are the current registrants of the name. Network Solutions Inc. has verified that Respondents are bound by the Network Solutions Inc. 5.0 registration agreement and have thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 8, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 28, 2000 by which Respondents could file a Response to the Complaint, was transmitted to Respondents via e-mail, post and fax, to all entities and persons listed on Respondentsí registration as technical, administrative and billing contacts, and to postmaster@validsites.com by e-mail.

Having received no Response from Respondents, 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 January 4, 2001, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carolyn Marks Johnson 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 Forumís Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from Respondents.

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

A. Complainant

Complainant contends that the domain name in dispute is identical to its trade names and service marks, that Respondents have no rights or legitimate interests in the domain name, and that the domain name was registered in bad faith.

Complainant asserts that the activities of Respondents as complained of have caused and will continue to cause substantial harm to Complainantís business reputation and goodwill.

B. Respondents

Respondents have not provided any submissions to this Panel.

Complainantís company is a widely recognized and successful provider of third party website "certification" and "approval" services to consumers. Since December 1999, Complainant has marketed its business operations under the trade names ValidSites and www.VALIDSites.com. Complainant has come to be commonly recognized and referred to within the Internet and e-commerce industries as ValidSites.

Complainant holds common law trademark rights in and to the marks ValidSites and www.Validsites.com for an Internet service that reviews third party websites on behalf of consumers and rates such websites as to the quality of consumer services provided by said rated websites, in the form of a "stamp" of approval, analogous to the certification provided by Underwriters Laboratories for appliances and the Good Housekeeping Seal of Approval, and the "Trust-e" e-commerce service.

On or about August 22, 2000, Complainant applied for a federal service mark with the U.S. Patent and Trademark Office for the mark VALIDSITES, to bolster its common law rights.

In December 1999, after months of pre-incorporation marketing and research, and use of the name Valid Sites in fundraising efforts, Complainant instructed its vice president to register the domain validsites.com in Complainantís name. However, the vice president had the domain name registered in the names of Respondents, Grace English, his sister, and Maritza Nanasca, his wife.

Since the date of registration of the domain, Respondents attempted to parlay their holding of the domain name into bargaining leverage over Complainant, by demanding benefits and privileges not due or owing from Complainant, by making threats to Complainant that Respondents will use the domain for their own personal use and benefit, or transfer it to a competitive company for personal profit, and thereby disrupt Complainantís business.

After Complainant demanded the transfer of the domain name, Respondents refused. The vice president also refused to cooperate or to cause Respondents to relinquish the Domain. The vice president was terminated from employment by Complainant. Since then, he has attempted to extort money from Complainant using the Domain as leverage.

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 Respondents' 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) 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.

Since December 1999, Complainant has marketed its business operations under the trade names ValidSites and www.VALIDSites.com. Complainant has come to be commonly recognized and referred to within the Internet and e-commerce industries as ValidSites. These facts are sufficient to establish common law rights in these service marks. See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding common law rights in the mark BIBBERO as the Complainant, Bibbero Systems, Inc. had developed brand name recognition with this term by which the Complainant is commonly known). The ICANN dispute resolution policy is "broad in scope" in that "the reference to a trademark or service mark ëin which the complainant has rightsí means that ownership of a registered mark is not requiredñunregistered or common law trademark or service mark rights will suffice" to support a domain name complaint under the policy. McCarthy on Trademarks and Unfair Competition, ß 25:74.2, Vol. 4 (2000).

The domain name at issue, validsites.com, is identical to Complainantís trade names and common law service marks, ValidSites and www.VALIDSites.com, under Policy � 4(a)(i). See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the Complainantís famous NIKE mark).

Moreover, this domain name is merely a combination of Complainantís pending service mark application and the common URL suffix ".com." See Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-0040 (WIPO Mar. 23, 2000) (finding that the domain name was identical or confusingly similar to the complainantís pending service mark application).

Therefore, the Panel concludes that the domain name in question is identical to the Complainantís trade names and service marks.

Complainantís marks and trade names were in use since 1999 before registration of the domain name in dispute. Respondents have not offered any evidence that they have been commonly known by the domain name under Policy � 4(c)(ii), or they are using the domain name in connection with a legitimate noncommercial or fair use under Policy 4(c)(iii), or in connection with a bona fide offering of goods or services under Policy 4(c)(i). In fact, Respondent threatened to use the Domain to interfere with Complainantís exploitation of its marks, to disrupt operation of the Web Site and to disrupt the business of Complainant.

Accordingly, the Panel finds that Respondents have no rights or legitimate interests with respect to the disputed domain name based on Policy � 4(a)(ii). See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and no use of the domain names has been proved); 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 Complainantís 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).

Complainant has come to be commonly recognized and referred to within the Internet and e-commerce industries as ValidSites. Respondents attempted to extort benefits and privileges from Complainant by using the Domain as leverage and threatened to transfer the domain name to a competitive company for personal profit, which demonstrates their bad faith in registering the domain name under Policy � 4(b)(i). See Metallica v. Schnieder, FA 95636 (Nat. Arb. Forum Oct. 18, 2000) (finding bad faith based on Policy � 4(b)(i) where the Respondent offered to transfer domain name in return for non-monetary consideration, i.e., if the Complainant met with the Respondent, called two of his friends, and granted the Respondent on interview).

For the above considerations, the Panel finds that Respondents registered and used the domain name at issue in bad faith.

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.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "validsites.com", be transferred from Respondent to Complainant.