DECISION

Susan Allen Morgan d/b/a Transnetmedia.com v. Bob Parke d/b/a Transnet Media

Claim Number: FA0311000211938

PARTIES

Complainant is Susan Allen Morgan d/b/a Transnetmedia.com, Phoenix, AZ (“Complainant”) represented by Jerry D. Hunt, 3055 N. Red Mountain Road, Suite 162, Mesa, AZ 85207.  Respondent is Bob Parke d/b/a Transnet Media, 1/20 Napier Street, Ascot, Brisbane, 4007, Australia (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <transnetmedia.net>, registered with Enom, Inc.

PANEL

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

Alan L. Limbury as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 14, 2003; the Forum received a hard copy of the Complaint on November 14, 2003.

On November 18, 2003, Enom, Inc. confirmed to the Forum that the domain name <transnetmedia.net> is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 18, 2003, the Forum drew to Complainant’s attention certain formal deficiencies in the Complaint and on November 19, 2003 Complainant filed an amended Complaint.

On November 20, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 10, 2003 by which Respondent could file a Response to the amended 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@transnetmedia.net by e-mail.

A timely Response was received by November 24, 2003.  However, the Response did not comply with Paragraph 5(b) of the Rules for Uniform Domain Name Dispute Resolution Policy, which requires the Response to be submitted in hard copy.  In the exercise of its discretion, the Panel has admitted the Response. See Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that "[r]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process”).

On December 2, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant has used the name TRANSNET MEDIA since February 5, 1995 in connection with the design and establishment of web sites.  She registered TRANSNET MEDIA as a service mark with the USPTO on July 7, 2002 (Reg. No. 2591761). TRANSNET MEDIA is inherently distinctive; has acquired distinctiveness over the years; has been used in commerce for over eight years in a wide geographic area via the internet; is well recognized in marketing channels and is widely used by customers from different countries.

Complainant registered the domain name <transnetmedia.com> on April 4, 1997 and the domain names <transnetmedia.biz> and <transnetmedia.info> on November 20, 2001. She procured from former owners <transnetmedia.org> on January 18, 2002 and <transnetmedia.us> on April 24, 2002.

On September 10, 2001, Complainant was informed that a prior registrant of the disputed domain name <transnetmedia.net> was not using that domain name in commerce, from which Complainant inferred that the then current registration would not be renewed. 

Complainant instructed her ISP to secure registration of the disputed domain name upon expiry of the previous registration on or about February 12, 2002, but the ISP erroneously registered <transnetmrdia.net> instead.  By the time the error was realized, Respondent had registered the disputed domain name <transnetmedia.net> on February 13, 2002. The website at the disputed domain name offers web design services from a team of web designers and networking consultants located in the Brisbane area of Australia.

Respondent has no rights or legitimate interests in the disputed domain name. It is only by willfully trading on the valuable and famous name of TRANSNET MEDIA that Respondent generates business to his website. Complainant has received telephone calls about establishing an “adult” or “pornographic” website based on an advertisement run by Respondent, a type of marketing which tarnishes Complainant’s mark. Complainant has sent Respondent many cease and desist letters, with no response.

Respondent has used the disputed domain name in bad faith. Respondent had clear knowledge of Complainant’s high quality reputation, which was known in Respondent’s marketing territory, and chose to try and take advantage of Complainant’s reputation by an unfortunate error made by Complainant’s ISP in failing to register the name.

B. Respondent

I have operated an IT related business since the mid 1990’s.  I registered my business name Transnet Media (Bus. No. 17079240) in the State of Queensland, Australia in February of 2000 and proceeded to register the domain name <transnetmedia.com.au> in April of 2000.

In February of 2002 I was looking for a domain to use as a name server in conjunction with my business.  I registered <tran[s]netmedia.net> when it was available and it was relevant to my business name.

FINDINGS

Complainant has failed to establish all the elements necessary to entitle it to relief.

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 disputed domain name is clearly identical to Complainant’s registered service mark. Complainant has established this element.

Rights or Legitimate Interests

Complainant’s mark is not inherently distinctive, being a combination of ordinary words which, without being fully descriptive, nevertheless conveys the notion of a means of communication over the Internet. Its use in connection with the design and establishment of web sites is not surprising. There is no evidence to support Complainant’s assertion that its service mark was famous, nor that it was known in Australia prior to Respondent’s registration of the disputed domain name. It is not implausible that Respondent could have chosen that name for his own IT related business without knowledge of Complainant’s mark.  Although Respondent has not produced evidence of having registered the business name in 2000, the onus is on Complainant to establish a prima facie case that Respondent had no rights or legitimate interests in the name, before the onus shifts to Respondent to establish by concrete evidence that he did have rights or legitimate interests in the name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 23, 2000). Complainant has failed to show that Respondent knew of Complainant’s mark before he registered the disputed domain name and has accordingly failed to establish this element.

Registration and Use in Bad Faith

For the same reason, Complainant has failed to establish bad faith on the part of Respondent. It is common knowledge that there are software programs that enable domain names to be snapped up the moment their prior registrations expire. Indeed, Complainant’s ISP sought to secure the disputed domain name for Complainant but failed to do so. The fact that Respondent succeeded does not entitle the Panel to infer that Respondent either knew of Complainant’s mark or was motivated by bad faith in seeking to register a domain name the moment it became available and thereafter to use it for an IT-related business.  Complainant had failed to establish this element.

It is the relationship between Complainant’s service mark TRANSNET MEDIA and its domain name <transnetmedia.com> and Respondent’s domain name <transnetmedia.net> that explains why Complainant has received calls from people who have been confused by the similar businesses operated under similar domain names. Contrary to Complainant’s submission, in the absence of any evidence establishing knowledge by Respondent of Complainant’s mark before registration of the disputed domain name, the close identity of the domain names does not establish either illegitimacy or bad faith.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Alan L. Limbury, Panelist
Dated: December 14, 2003.

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