Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Mikel Fair, Houston, TX, USA ("Complainant") represented by J. Scott Rudsenske, of The Law Office of J. Scott Rudsenske. The Respondent is Eileen Bonfiglio, PuterGirl.com, Coral Springs, FL, USA ("Respondent").

The domain name at issue is <303infinity.com>, registered with Register.com.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on March 20, 2001; the Forum received a hard copy of the Complaint on March 20, 2001.

On March 27, 2001, Register.com confirmed by e-mail to the Forum that the domain name "303infinity.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 March 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 17, 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@303infinity.com by e-mail.

A timely response was received and determined to be complete on April 17, 2001.

An additional submission was received from the Complainant on April 24, 2001.

On April 26, 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 alleges that he is the first user of "303 INFINITY" ("the Mark"), having used it in connection with his musical compact disks as early as October of 1997 to identify himself as a customer of a recording studio in Florida at that time. Complainant is the owner of a State of Texas registration of the Mark (unsuccessfully opposed by Respondent) and is the registrant of the domain names <303infinity.net> and <303infinity.org>. Complainant has applied for registration of the Mark with the U.S. Patent and Trademark Office, and Respondent has filed an opposition. Further, Complainant asserts that the domain name at issue, <303infinity.com>, registered and claimed by Respondent, is identical or confusingly similar to his trademark. Complainant says that Respondent has no rights or legitimate interests with respect to the domain name at issue, due to his own prior use of the Mark and his relationship with Respondent who was to perform website design and other services involving the Mark and the domain name at issue. Finally, since Respondent publicly offered to sell the domain name at issue for $10,000, Complainant alleges that Respondent registered and is maintaining the domain name at issue in bad faith.

B. Respondent

Respondent claims to be the prime user of the Mark with a date of first use of May 15, 1999 and has opposed efforts of Complainant to register the Mark. Respondent alleges that she conceived of the name in 1999 following repeated viewings of the movie, "Toy Story." That the Mark and the domain name at issue are identical or confusingly similar is not denied. Although she admits that there was a contractual relationship between her business and Complainant to develop websites for his music, Respondent asserts that the conception of the Mark was her own, and that any current or future business involving the domain name at issue is in her own legitimate interest. Respondent does not deny offering the domain name at issue for auction for $10,000, but she denies that she offered it to Complainant for that price and denies that she is guilty of bad faith registration or maintenance of the domain name at issue.

C. Additional Submissions

Complainant has timely filed its Reply to Respondent’s Response. The essence of this submission is to advise that the State of Texas has granted registered status to Complainant for the Mark, despite Respondent’s opposition, and to provide affidavits and invoices as proof of prior use of the Mark by Complainant in 1997—two years earlier than the first use claimed by Respondent.

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 identical to the Mark "303 Infinity", which was registered in the State of Texas on March 5, 2001 and was first used by Complainant at least as early as October of 1997, long prior to Respondent’s first claimed use. The parties do not dispute that the Mark and the domain name at issue are identical or confusingly similar.

This Panelist finds that Paragraph 4 (a)(i) has been satisfied by Complainant.

This Panelist finds that Respondent knew of Complainant’s prior use of the Mark, "303 Infinity," and hired Respondent to register the domain name at issue, create a website and perform related services for him. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) ("…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy").

Respondent is not making a legitimate non-commercial or fair use of the domain name, because she is misleadingly attempting to divert consumers or to tarnish the trademark or service mark at issue. See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of domain names confusingly similar to Complainant’s mark to sell competing goods was an illegitimate use and not a bona fide offering of goods).

This Panelist finds that Paragraph 4 (a)(ii) has been satisfied by Complainant.

The domain name was registered in bad faith because Complainant hired Respondent to register the domain name for him. Respondent registered <303infinity.com> in her own name and, despite the fact she acted as an agent for Complainant, now sets up her own claim of title to the domain name at issue. See Nasaco Electronics Pte Limited v A&O Computer AG, D2000-0374 (WIPO July 14, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where the Respondent’s former employee registered the domain name and transferred it to the Respondent, who has since made no use of the domain name).

Further, ample evidence has been offered (and not disputed) that Respondent offered the domain name at issue to the public for $10,000. Since the Mark was the property of Complainant, this Panelist finds that Respondent registered the domain name for the primary purpose of selling the domain name in excess of out of pocket costs directly related to registration. See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use).

This Panelist finds that Paragraph 4 (a)(iii) has been satisfied by Complainant.

Having established all three of the elements under the ICANN Policy, this Panelist concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the domain name <303infinity> be transferred from Respondent to Complainant.