Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Underground Services, Inc., West Chester, PA, USA ("Complainant") represented by John B. Berryhill, of Dann, Dorfman, Herrell & Skillman, P.C. The Respondent is CSS Group, LLC, Wichita, KS, USA ("Respondent").

The domain name at issue is <safedig.com>, registered with Network Solutions, Inc.

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

Linda M. Byrne, Esq. as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on March 14, 2001; the Forum received a hard copy of the Complaint on March 15, 2001.

On March 19, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <safedig.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 4.0 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 March 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 11, 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@safedig.com by e-mail.

A timely response was received and determined to be complete on April 10, 2001.

On April 16, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Linda M. Byrne as Panelist.

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

A. Complainant

Complainant contends that Respondent's Domain Name SAFEDIG.COM is identical or confusingly similar to its trademark SAFEDIG; that Respondent does not have any right or legitimate interest in respect of the infringing Domain Name SAFEDIG.COM, and that the infringing Domain Name SAFEDIG.COM was registered by Respondent in bad faith and is being used in bad faith.

B. Respondent

Respondent denies the allegations of the Complaint, and contends that it has promoted and sold a software product under the SAFEDIG.COM Domain Name since January 2000. Respondent further contends that it has used the Domain Name SAFEDIG.COM since its creation in connection with a bona fide offering of goods, and that it did not register SAFEDIG.COM in bad faith.

Complaint, through its predecessor Edward O. Hilbush III, registered the trademark SAFEDIG in the U.S. Patent and Trademark Office on February 25, 1992 under Registration No. 1,677,034. The mark SAFEDIG is registered for "excavating services; namely, vacuum excavating of underground utility lines" in International Class 37. The mark SAFEDIG was filed with the U.S. Patent and Trademark Office on March 12, 1990; and first used in commerce as least as early as April 20, 1990. Complainant has been using the mark SAFEDIG continuously since April 20, 1990 in conjunction with the above services.

Mr. Hilbush assigned the SAFEDIG mark and its registration to Complainant on October 10, 2000, and that assignment was recorded in the U.S. Patent and Trademark Office on October 13, 2000. Therefore, Complainant is now the registered owner of the mark SAFEDIG. The SAFEDIG registration is incontestable, Section 8 and 15 Affidavits having been properly filed and accepted.

While Complainant has its principal business in Pennsylvania, it has provided excavation services for several customers outside that state, primarily to customers in the eastern United States. These allegations are not disputed by Respondent.

Respondent has sold software since January 2, 2000 under the name SAFEDIG.COM. The software is a utility mapping application for use with excavation services. On July 16, 1999, Respondent registered the Domain Name SAFEDIG.COM. The publicly accessible portion of the website consists of a single home page featuring a SAFEDIG.COM graphic logo illustrating a person using a shovel, with an underground thunderbolt beneath the person, and the invitation "For a demo call or email Don Stearns at (316) 269-9090." The Respondent submitted copies of additional website pages featuring the SAFEDIG.COM trademark which are accessible only with a password. The Respondent also submitted a brochure describing the SAFEDIG.COM software.

On or about February 8, 2001, a representative of the Complainant spoke with a representative of the Respondent on the telephone. During that conversation, Respondent stated that he offered services relating to locating underground utilities for the purpose of performing excavations in the vicinity of those utilities. On January 9, 2001, Complainant sent a cease and desist letter to Respondent, alleging trademark infringement and demanding that the Domain Name be transferred to Complainant. In early March, Respondent sent a reply letter to Complainant's attorneys, stating "We will consider this matter closed unless you wish to proceed with a fair price." On or about March 7, 2001, the representatives from Respondent and Complainant spoke again by telephone, at which time Respondent's representative proposed transferring the SAFEDIG.COM Domain Name in exchange for a payment of $10,000.

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 registered the service mark SAFEDIG on January 25, 1992 and has used the SAFEDIG mark in commerce in connection with "excavating services; namely, vacuum excavating of underground utility lines" since April 20, 1990. The SAFEDIG mark is used on Complainant's website. Moreover, Complainant has affirmatively policed and enforced its SAFEDIG trademark rights against third parties, having recently been granted a preliminary injunction by the U.S. District Court for the Middle District Court of Florida.

Respondent's Domain Name, SAFEDIG.COM, is identical for all practical purposes to Complainant's SAFEDIG mark. See Croatia Airlines v. Kijong, AF 0302 (eResolution Sept. 25, 2000) (finding that the domain name "croatiaairlines.com" is identical to the Complainant's trademark "Croatia Airlines"). The sole difference between the contested domain name and the SAFEDIG mark is simply the inclusion of the generic top-level domain (.com). Respondent's Domain Name is so similar to Complainant's registered trademark SAFEDIG, that a reasonable Internet user would likely assume that the Domain Name's owner is somehow affiliated with Complainant's well-established mark. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant's web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact no such relationship exists).

Respondent does not dispute that the respective trademarks, SAFEDIG and SAFEDIG.COM, are essentially identical. Moreover, the respective goods and services are highly related. That is, software for use in excavation and mapping utilities is highly related to the service of excavating of underground utility lines. It appears that the trade channels are also highly related, in that the same customers hiring Complainant for its excavation services could also very well be purchase Respondent's software. Respondent does not contest the high likelihood of confusion in this case.

If the use of the Domain Name constitutes clear trademark infringement, then such use does not result in any rights or legitimate interests in respect of the domain name. The offering of software by Respondent which is highly related to the services of Complainant, under an identical trademark, is not a bona fide offering of goods or services. Legitimate rights and interests do not accrue to the Respondent by way of trademark infringement. See, e.g., Harcourt Inc. v. R&D Glassblowing, FA. 95010 (Nat. Arb. Forum July 13, 2000); America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that "it would be unconscionable to find that a bona fide offering of services in a Respondent's operation of web-site suing a domain name which is confusingly similar to the complainant's mark and for the same business").

While Respondent has promoted and sold its SAFEDIG.COM software, it has done so under the protest of Complainant, which began to use the SAFEDIG trademark approximately ten years earlier than Respondent. Bad faith is evidenced by Respondent's apparent ignorance and/or disregard of Complainant's trademark rights and Respondent's apparent failure to conduct a trademark search to discover that Complainant owned a federal registration for SAFEDIG in association with services that are highly related to Respondent's software. Even assuming that Respondent had been unaware of Complainant's rights, Respondent was made aware of Complainant's rights when Complainant made contact with Respondent and claimed prior rights to the mark SAFEDIG. With awareness of those rights, Respondent attempted to sell the Domain Name for $10,000. See John C. Nordt Co., Inc. v. Jewelry Exchange, FA 96789 (Nat. Arb. Forum Apr. 11, 2001) (finding that Respondent exhibited bad faith when Respondent, a competitor of Complainant, attempted to sell a domain name, which was identical to Complainant's MOTHER'S RING mark, to the Complainant for a profit).

The Respondent continued to use the SAFEDIG.COM Domain Name after becoming aware of Complainant's trademark rights in a related business. The overall circumstances result in a finding of bad faith as defined by ICANN Policy, paragraph 4(b)(iv). See America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant's mark by offering the same chat services via his website as the Complainant); Indentigene Inc. v. Genetest Lab, D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the Domain Name for a website to offer similar services is likely to confuse the Internet user into believing that Complainant is the source or is sponsoring the services offered at that site).

The Panel concludes that Complainant has provided sufficient proof o fits allegations for all elements under paragraph 4(a) of the Policy so as to establish a prima facie case upon which the relief it now seeks can be granted.

It is the decision of this Panel that the Domain Name at issue, SAFEDIG.COM, be transferred from Respondent to Complainant.