Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Mirsky & Block, PLLC, Tarrytown, NY, USA ("Complainant") represented by Ellis R. Mirsky, of Mirsky & Block, PLLC. The Respondent is American Information Network, Columbia, MD, USA ("Respondent") represented by Sherry H. Flax, of Saul, Ewing, Weinberg & Green LLP.

The domain name at issue is "seminar.com" registered with Register.com.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 March 19, 2001; the Forum received a hard copy of the Complaint on March 19, 2001.

On March 21, 2001, Register.com confirmed by e-mail to the Forum that the domain name "seminar.com" is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 March 26, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 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@seminar.com by e-mail.

A timely response was received and determined to be complete on April 16, 2001.

On April 20, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.

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

A. Complainant

Complainant, a law firm, alleges it is the owner of <seminar.com>, the domain name at issue, by virtue of an assignment of the domain name from a former client in lieu of payment of legal fees. Further, Complainant alleges that it contacted Respondent (the webhost for Complainant’s client) on several occasions between February 23, 2000 and again on June 16, 2000, offering to pay its former client’s registration fees, plus penalties, in the approximate amount of US $360 to reinstate and transfer the domain name. There is no allegation that such payment was made, and Complainant says that payment was refused by Respondent. Finally, Complainant alleges that Respondent has no right, title or interest in the domain name at issue and that Respondent wrongfully registered the domain name in or after June 2000 in bad faith.

B. Respondent

Respondent admits that it hosted the website associated with the domain name at issue for Complainant’s client and that the client was delinquent in payment of fees for hosting services. Accordingly, Respondent alleges that it properly registered the domain name at issue in its own right with Register.com on June 15, 2000. Further, Respondent says that Complainant has no right, title or interest to the domain name at issue due to lapse of registration for failure to pay renewal fees. Finally, Respondent notes that Complainant does not claim trademark rights in the domain name at issue and that Complainant is not commonly known by the mark "seminar.com" or as a provider of services in connection with that mark.

Complainant appears to have a valid assignment of whatever rights its client may have had in the domain name at issue by letter agreement dated February 23, 2000. At the time, the client was delinquent in payment of legal fees. Respondent claims, and it is not disputed, that the client was also delinquent in payment of webhosting and registration fees associated with the domain name at issue. The Complainant does not claim common law or registered rights in a trade or service mark which is the same or confusingly similar to the domain name at issue, nor is it claimed that Complainant is commonly known by the domain name at issue or that it provides services in connection with such a mark. Even if Complainant were to use "seminar" as its mark, such a mark would fail to distinguish the goods and services associated, as it is generic and highly descriptive. Respondent’s Claim that it registered the lapsed domain name at issue on June 15, 2000, one day prior to a contact with Complainant concerning the domain name is unsubstantiated and inconsistent with the associated Register.com "Whois Results for seminar.com" which reflects that the record was last updated on July 25, 2000.

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 does not claim the existence or use of a trademark or service mark, either registered or at common law, in which it has rights. Accordingly, there is no mark which is identical or confusingly similar to the domain name at issue. Complainant cannot base its claim on trademark rights because its mark is not a registered trade or service mark, no common law rights are alleged, and Complainant is not otherwise known as a provider of goods or services in connection with its claimed mark. See SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant failed to show 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); see PetWarehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000) (finding that "pet" and "warehouse" are generic terms and therefore not subject to trademark protection; although it is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community, the burden is on the party making a claim to show distinctiveness or secondary meaning).

Although there are conflicting allegations as to Respondents rights and legitimate interests, Complainant has failed to carry the burden of proof. It appears that Respondent was owed $360 in fees associated with the lapsed domain name at issue and reregistered <seminar.com> for its own account in lieu of payment. While it is unclear whether Respondent reregistered the domain name at issue on June 15, 2000 or on July 25, 2000, it is undisputed that no payment was made by Complainant to Respondent from the date of the assignment on February 23, 2000 to the present. At the time of the assignment, the domain name at issue had lapsed in registration and there was nothing of value assigned.

Accordingly, Respondent’s domain name registration is prima facie evidence of its rightful ownership of the disputed domain name. See Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding that Complainant met the identical and confusingly similar aspect of Policy ¶ 4(a), but failed to prove that Respondent had no rights or legitimate interests in the domain name <smartdesign.com>).

There is no evidence offered by Complainant that Respondent committed any act in bad faith. Respondent registered the domain name at issue with Register.com, a third party registrar. There is no allegation that Complainant was in any way prevented by Respondent from such a similar reregistration at any time following the February 23, 2000 assignment through the date of Respondent’s claimed reregistration on June 15, 2000. I find no bad faith on the part of Respondent in registering the domain name at issue. 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).

Whatever rights, if any, Complainant may have with respect to the domain name at issue or with respect to Respondent would be more appropriately asserted in another forum. Accordingly, it is the decision of this Panel that the domain name <seminar.com> not be transferred from Respondent to Complainant.