Generic Top Level Domain Name (gTLD) Decisions

The Complainants, The Woodlands Operating Company L.P. and The Woodlands Land Development Company L.P., are private companies located in The Woodlands, Texas, USA.

The Respondent James Nelson is a resident of Spring, Texas, USA.

The Domain Name at issue is <thewoodlands.biz> (the Domain Name).

The Registrar is Network Solutions, Inc. in Virginia, USA.

The Complaint was received by the World Intellectual Property Organisation Arbitration and Mediation Center, ("the Center") on December 14, 2001.

On January 4, 2002, by email and on January 15, 2002, in hard copy, the Complainant filed an amended Complaint. On January 17, 2002, the Center requested a second amendment to Complaint. The second amended Complaint was received by the Center on January 23, 2002, by e-mail and on February 1, 2002, in hardcopy.

On February 6, 2002, the Center notified the Respondent of the Complaint and of the formal commencement on that day of an administrative proceeding under the Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("the STOP"), the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("the STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("the WIPO Supplemental STOP Rules").

The Response was received on February 13, 2002.

Complainant's reply to the Response was received on February 26, 2002. A response to the reply was received on February 27, 2002.

Mark V. B. Partridge was appointed Sole Panelist on April 4, 2002.

The Panel finds that the actions of the Center comply with the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.

Complainants developed and operate a planned community named The Woodlands located about 30 miles north of Houston, Texas. The mark THE WOODLANDS was first used in 1974 and is the subject of several registrations issued by the United States Patent and Trademark Office to Complainants or a related company for various services. The earliest registration was issued December 3, 1985. The services covered by Complainants' registrations include: monitoring burglar and fire alarm systems; real estate brokerage services; residential planning services; leasing warehouse space; providing recreational facilities; and hotel services.

Respondent lives in a town next to the community of The Woodlands. His business, IFICS, is a web site design company and builder of internet directory services. The Domain Name was registered on November 19, 2001, is now on hold as a result of this proceeding and has not yet been used by Respondent.

Complainants contend that the Domain Name is identical to a mark in which Complainants have rights; that the Respondent has no rights or legitimate interests in the Domain Name; and that the Domain Name was registered in bad faith.

Respondent contends that he registered the Domain Name in good faith to provide Internet directory services for businesses located in the town of The Woodlands.

I find that the Domain Name is identical to a mark in which Complainants have rights based on federal registration. I also find that the Domain Name is not in use for a bona fide purpose, there is no indication that Respondent was previously known by that name, and Respondent has not presented evidence of a demonstrable plan to use the Domain Name for a bona fide purpose. Therefore, it appears that Respondent lacks rights or a legitimate interests in the Domain Name.

With regard to the element of bad faith, Complainants rely on the fact that Respondent has constructive notice as a matter of law of Complainants' registrations and the fact that Respondent has actual knowledge of the town developed by Complainants. I do not find those facts in themselves sufficient to establish bad faith registration. It is possible that a person with knowledge of Complainants' use and registration of THE WOODLANDS could legitimately adopt the same name for a bona fide, non-infringing purpose.

Here, Respondent asserts that it intends to provide directory services for businesses located in the town of The Woodlands. There is no reason to conclude that explanation of intent is a sham. Complainants' registrations do not specifically cover the provision of directory services or any other services closely related to directory services. Therefore, it appears that Respondent could have registered the Domain Name in good faith with the reasonable belief that its proposed use would not infringe Complainants' trademark rights.

Respondent admits he intends to use the Domain Name as a reference to the town developed by Complainants. That also does not establish bad faith. Complainants cite no facts or case authority to show why they would have rights in the mark THE WOODLANDS beyond the scope of rights covered by the registrations. Further, Complainants have made no showing as to why they would have the right to prevent others making reference to the town name for non-infringing purposes.

There seems to be no other basis for finding bad faith. There is no indication that Respondent seeks to profit from selling the Domain Name, engages in a pattern of conduct that prevents others from registering their marks as domain names, or intends to disrupt the business of a competitor.

It is possible that Respondent's actual use of the Domain Name may be an infringement of Complainants' rights or a violation of the Policy. However, based on the record presented, including Respondent's undisputed explanation of his intent, I find that Complainants have failed to meet their burden of establishing bad faith registration by a preponderance of the evidence.

For the reasons stated above, Complainants' request for transfer of the Domain Name <thewoodlands.biz> is denied.