DECISION

Hand and Associates Marketing Communications v. Scott Mindemann a/k/a Digital Nexus, Inc.

Claim Number: FA0202000105192

PARTIES

The Complainant is Hand and Associates Marketing Communications, Dallas, TX (“Complainant”).  The Respondent is Scott Mindemann Digital Nexus, Inc., Richardson, TX (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

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

PANEL

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.

Edmund P. Karem is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 26, 2002; the Forum received a hard copy of the Complaint on February 26, 2002.

On February 27, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <spikefest.com> is registered with Verisign - Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Verisign - Network Solutions, Inc. has verified that Respondent is bound by the Verisign - Network Solutions, Inc. 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 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 25, 2002 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@spikefest.com by e-mail.

A timely response was received and determined to be complete on March 25, 2002.

On April 5, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Edmund P. Karem as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant Hand and Associates contends that it has trademark rights in the name Spikefest by virtue of registration Number 1824689 filed June 17, 1993.  It is Hand’s further contention that Mindemann/Digital Nexus, Inc., deceptively acquired the spikefest.com domain name while acting as a web site designer and host agent for Hand.  It is contended that this deception occurred as a result of Mindemann placing himself as administrative and billing contact on an invoice from Network Solutions.  Hand denies ever agreeing to such a designation and acknowledges that it does not know how Mindemann managed to accomplish this switch with Network Solutions and states that it was not even aware until last year that Mindemann was listed as the registrant of the spikefest.com name because several freelance web designers have worked on the spikefest site. 

Hand and Associates attempted to resolve this matter, making repeated requests that Mindemann voluntarily relinquish the domain name however no response to these requests was ever forthcoming.  Hand asserts that the holding of the domain name by Mindemann interferes with Hand’s trademark and its ability to conduct operations and commerce for the spikefest volleyball event, the purpose of which the trademark was acquired.

The motivation for this, contends Hand, is to force Hand to use Mindemann’s hosting service which in turn allows Mindemann to place a hot link on his own volleyball site titled www.VBallNet.com. 

                              

B. Respondent

Mindemann contends his company Digital Nexus created and registered spikefest on May 25, 1998 for use independent of Hand and independent of any organization conducting volleyball tournaments in Texas or anywhere.  When registering the domain name Mindemann contends they used appropriate contacts for Administrative, Technical and Billing with the registry and those contacts have not changed since the creation of the domain name.  The annual registrant billing invoices and payments have been processed by Nexus. 

The domain name is used by Respondent for multiple nonprofit student film projects in a tribute to legendary film producer, Spike Lee, at various festivals nationally and internationally.  Thus Mindemann/Nexus contends it is making a legitimate noncommercial and fair use of the domain name with multiple nonprofit student film projects and other activities unrelated to any organization of or conducting volleyball tournaments. 

Respondent denies that Nexus is a web site designer or a host agent and did not use such status to manipulate a domain name already owned by Hand.  Nexus alleges that Hand has utilized a single primary web designer since 2000, not several freelance designers and with the assistance of this web designer Hand initiated two hijacking attempts of the spikefest.com domain name from Nexus.

            DISCUSSION

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.

Identical and/or Confusingly Similar

The Panel finds that Respondent’s spikefest.com domain name is identical to Complainant’s spikefest mark because it incorporates the entirety of Complainant’s mark and merely adds the generic top level domain name “.com”.  The addition of a top level domain name such as “.com” or “.net” is not relevant when assessing whether a domain name is identical or confusingly similar and therefore does not create a distinct mark.  See Pomellato  S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) See also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9^th Cir. Feb. 11, 2002)  Internet users searching for a company’s website assume as a rule of thumb that the domain name of a particular company will be the company name (or trademark) followed by “.com”. 

            Rights or Legitimate Interests

The Respondent does have rights or legitimate interests in respect of the domain name.  Respondent used the name in relation to various Spike Lee film festivals in California and throughout the country.  Complainant initially rented the domain name on an annual basis for use with its annual volleyball tournament.  The film festivals were the primary purpose and the reason for the registering of the domain name and are nonprofit in nature.  The Panel finds that Respondent is not diverting Complainant’s customers for a commercial gain.  Respondent is not a web design company nor a hosting service.  It is not an employee of Complainant nor has it ever been.  Complainant has merely rented the disputed domain name from Respondent annually in order to display promotional materials for its volleyball tournament.  These findings are born out by the email correspondence between the parties (Respondent’s exhibits 1 through 18).   

 

Registration and Use in Bad Faith

Respondent did not register the disputed domain name in bad faith because it was registered and is used in connection with film festivals.  Complainant is unable to present evidence to support its contention that Mindemann accomplished a switch in the designation with Network Solutions.

Respondent does not operate the domain name for commercial gain nor is Complainant a competitor.  Therefore Respondent registered the disputed domain name in good faith.  See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO October 12, 2001).  That case held that where Respondent had not attempted to sell a domain name for profit, did not engage in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of Complainant nor seeking to disrupt Complainant’s business and is not using the domain name to divert Internet users for commercial gain lack of bona fide use on its own is insufficient to establish bad faith.             

DECISION

It is the decision of the Panel that the Complaint be denied and that the disputed domain name remain registered to the Respondent Digital Nexus, Inc.

                                                           

                                                Edmund P. Karem, Panelist

                                                Date:   April 17, 2002