COMBINED

RESTRICTIONS DISPUTE RESOLUTION POLICY

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

DECISION

Nashua Corporation v. Alex Pujari and Internet Incubators, Inc.

Claim Number:  FA0303000149413

PARTIES

Complainant is Nashua Corporation, Nashua, NH (“Complainant”) represented by Jason A. Duva, of Testa Hurwitz & Thibeault, LLP. Respondent is Alex Pujari and Internet Incubators, Inc., Robards, KY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nashua.biz>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 14, 2003; the Forum received a hard copy of the Complaint on March 17, 2003.

On March 14, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <nashua.biz> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Restrictions Dispute Resolution Policy (the “RDRP”) and the Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 14, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent pursuant to paragraph 2(a) of the Rules for the Uniform Dispute Resolution Policy as supplemented by the Supplemental Restrictions Dispute Resolution Policy.

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 April 30, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon Ralph Yachnin 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <nashua.biz> domain name is identical to Complainant’s NASHUA mark.

2. Respondent does not have any rights or legitimate interests in the <nashua.biz> domain name.

3. Respondent registered and used the <nashua.biz> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Nashua Corporation, holds several federal trademark registrations for the NASHUA mark in Respondent’s country of domicile (e.g., U.S. Reg. No. 579,753). Complainant has used the NASHUA mark since as early as 1911 in connection with a series of goods ranging from toner (for both copiers and printers), projection screens, and paper products. Complainant attempted to register the disputed domain name on September 14, 2001, but due to an unexplained error on the part of NeuLevel, Complainant’s application for registration was never finalized.

Respondent, Alex Pujari and Internet Incubators, Inc., registered the <nashua.biz> domain name on November 7, 2001. Complainant contacted Respondent on January 9, 2002 in an attempt to acquire Respondent’s domain name registration. Respondent responded to Complainant’s communication with an offer to transfer its registration in exchange for the ability to be hired on as Complainant’s web designer for the domain name. Respondent also noted that if Complainant did not agree to these terms, the domain name would be used to host a website for either the city of Nashua, New Hampshire (which already has an official website), or a city of that name in the Bahamas (which does not exist). Since its registration of the domain name, Respondent has not posted a website.

DISCUSSION

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the RDRP Policy defines “bona fide business or commercial use” as the bona fide use or bona fide intent to use the domain name or any content software, materials, graphics or other information thereon, to permit Internet users to access one or more host computers through the DNS:

(i)   to exchange goods, services, or property of any kind; or

(ii)  in the ordinary course of trade or business; or

(iii) to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business.

Bona Fide Business or Commercial Use

Respondent’s registration of the <nashua.biz> is subject to the requirements of the RDRP Policy. The RDRP requires that the domain name be used in connection with a bona fide business or commercial use. The RDRP Policy ¶ 4(c) provides a list of situations that will not be considered to be a bona fide business or commercial use of a domain name. Paragraph 4(c)(i) specifically notes that it does not constitute a bona fide business or commercial use of a domain name when a respondent registers the domain name solely for the purpose of “selling, trading or leasing the domain name for compensation.”

In the present dispute, Complainant initiated an email exchange with Respondent to determine if and how the disputed domain name could be transferred to Complainant. Respondent’s reply indicated that it was willing to transfer its domain name registration, but only in exchange for compensation. Specifically, Respondent was to be the web designer for Complainant once the transfer was completed. Respondent also notified Complainant that if it was not interested in the offer, Respondent was ready to build a website for either the city of Nashua, New Hampshire (which already had an official website), or Nashua, Bahamas (a city which does not exist).

As Respondent was initially contacted by Complainant, and not vice-versa, Respondent’s offer to trade its domain name registration for its web design services does not fall under RDRP Policy ¶ 4(c)(ii), which specifically notes that an offer to sell, trade, or lease a domain name must be unsolicited by the third party. However, Complainant’s uncontested allegations do indicate that Respondent’s sole purpose in registering the domain name was to procure some sort of transfer agreement from a third party, trading its domain name registration in exchange for compensation. Respondent’s willingness to transfer its registration for compensation to Complainant, its statement to Complainant of its plan to use the domain name in a similar manner for other parties who could be interested in the <nashua.biz> domain name and Respondent’s non-use of the domain name for any other purpose all support the inference that Respondent registered the domain name with the intent to trade it off for compensation. As stated above, registration of a domain name for this purpose is not a bona fide business or commercial use of a domain name pursuant to RDRP Policy ¶ 4(c)(i).

Accordingly, the Panel finds that Respondent has failed to use the  <nashua.biz> domain name in relation to a bona fide business or commercial use and RDRP Policy ¶ 4(a) is satisfied.

As Complainant has sufficiently demonstrated that it has rights in the NASHUA mark, the Panel finds that transfer of the disputed domain name is appropriate in this dispute. As Complainant has prevailed on its claim under the RDRP, the Panel need not consider Complainant’s claim under the UDRP at this time.

DECISION

Having established all elements required under the RDRP Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <nashua.biz> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  May 1, 2003

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