Generic Top Level Domain Name (gTLD) Decisions

Complainant is Tim McClure, Austin, TX, USA ("Complainant") represented by Molly Buck Richard, of Strasburger & Price, L.L.P. Respondent is Christopher Levy Clickhear Productions, San Diego, CA, USA ("Respondent").

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

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 April 3, 2001; the Forum received a hard copy of the Complaint on April 4, 2001.

On April 9, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <cityofideas.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. 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 April 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 30, 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@cityofideas.com by e-mail.

Having received no Response from Respondent, 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 May 9, 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.

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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

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

A. Complainant

B. Respondent

By agreement with the City of Austin, McClure is the owner of the CITY OF IDEAS mark. On August 17, 1998, Complaint filed a trademark application with the United States Patent and Trademark Office for the CITY OF IDEAS mark.

On June 19, 2000, Complainant sent a cease and desist letter to the domain registrant, and to Respondent, who was listed as the administrative contact at that time, and requested the transfer of the disputed domain name to Complainant. At some point thereafter, Respondent contacted Complainant and offered to negotiate a settlement to the domain name dispute and admitted to registering the domain name after becoming aware that the CITY OF IDEAS mark was being used in conjunction with Complainant’s advertisement campaign.

On August 21, 2000, Respondent reregistered the domain name, this time under the name Clickhear Productions.

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 Respondent's 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) 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.

Respondent’s domain name <cityofideas.com> is identical to Complainant’s CITY OF IDEAS mark. See State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that Complainant has rights in the registered marks, STATE FAIR OF TEXAS and TEXAS STATE FAIR and therefore, Respondent’s domain names <statefairoftexas.com> and <texasstatefair.com> are identical to Complainant’s mark).

Therefore, the domain name <cityofideas.com> is identical and confusingly similar to the Complainant’s mark, and Complainant has met the burden set forth under Policy 4(a)(i).

Because of Respondent’s failure to respond, the Panel accepts as true Complainant’s contention that Complainant had prior rights to the CITY OF IDEAS mark, and that Respondent passively held the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint").

Complainant has demonstrated that Respondent has not used the domain name. Passive holding is not a bona fide offering of goods or services under Policy 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name under Policy 4(c)(iii). See Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where "Respondent registered the domain name and did nothing with it").

Additionally, Respondent has not been commonly known by the name "cityofideas". See Strojirny v Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question).

Therefore, the Panel concludes that Respondent does not have any rights or legitimate interests in the <cityofideas.com> domain name, and Complainant has met the burden set forth under Policy 4(a)(ii).

Respondent demonstrated bad faith by registering a domain name utilizing a mark which Respondent knew was being used by Complainant. See Ty. Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and thus Respondent should have been aware of it)

Respondent’s passive holding of the domain name is evidence of bad faith registration and use. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of Policy 4(a)(iii)); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Therefore, the Panel concludes that Respondent registered and used the domain name in bad faith, and Complainant has met the burden set forth under Policy 4(a)(iii).

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

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