DECISION

Speedotrans S.A. (BVI) v Dave Behar

Claim Number: FA0303000150403

PARTIES

Complainant is Speedotrans S.A. (BVI), Wickhams Cay, Tortola, BRITISH VIRGIN ISLANDS (“Complainant”) represented by John L. Wollman, of Mundell Odlum & Haws LLP.  Respondent is Dave Behar, San Pedro, CA, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <idig.com>, registered with Register.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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

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

On March 17, 2003, Register.Com confirmed by e-mail to the Forum that the domain name <idig.com> is registered with Register.Com and that Respondent is the current registrant of the name.  Register.Com has verified that Respondent is bound by the Register.Com 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 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 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@idig.com by e-mail.

A timely Response was received and determined to be complete on April 14, 2003.

A timely Additional Submission was received April 18, 2003.

On April 18, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name <idig.com> be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1.  The domain name in dispute, <idig.com>, is identical or confusingly similar to a mark in which Complainant has rights.           

2.  Respondent has no rights or legitimate interests in the domain name.

3.  Respondent registered the disputed domain name in bad faith.

B. Respondent

1.  The mark is not identical or confusingly similar under the circumstances presented.

2.  Respondent has rights in and to the disputed mark.

3.  The disputed domain name was not registered in bad faith.

C. Complainant’s Additional Submissions

1.  Respondent’s factual assertions regarding his use of the disputed domain name are untrue.

2.  Cybersquatting is determined without regard to the goods or services of the parties.

3.  Respondent’s claims that he is owed over $500,000 from Complainant, and holds a license agreement to the mark, are irrelevant.

FINDINGS

The Panel finds for the Complainant, and determines that the domain name should be transferred.

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

Complainant, Speedotrans S.A. (BVI), holds trademark registrations for the IDIG mark, registered on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”) as registration numbers 2,077,253 and 2,687,493. Additionally, Complainant claims that the IDIG mark has been in continuous use since August 18, 1984. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place).

Respondent’s <idig.com> domain name is identical to Complainant’s IDIG mark because, for the purposes of Policy ¶ 4(a)(i), top-level domains (such as “.com”) are considered inconsequential. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Interstellar Starship Services Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (<epix.com> "is the same mark" as EPIX).

Rights or Legitimate Interests

Complainant asserts that Respondent lacks rights and interests in the domain name because Respondent “has assigned away all of his rights, interest, and goodwill in the ‘idig’ mark for $35,000.” Complainant submitted documentary proof tending to show a chain of title that illustrates that rights to the IDIG mark transferred from Respondent to Complainant. Specifically, on February 28, 1992, Respondent assigned “the entire right, title and interest . . . together with the goodwill” to the IDIG trademark to an entity called Sports By Design. On June 25, 1995, Sports By Design purportedly assigned all of its rights, interest and goodwill in the IDIG mark to Mayan Wasel Raslan, and on December 26, 1995, Ms. Raslan subsequently assigned all of her rights in the IDIG mark to Complainant.

Complainant further proved that Respondent’s <idig.com> domain name misdirects Internet users to Respondent’s <ions.com> domain name and corresponding website.  Such circumstances put into question Respondent’s rights under Policy ¶ 4(a)(ii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of Respondent and that Respondent would only legitimately choose to use Complainant’s mark in a domain name if Respondent was seeking to create an impression that the two businesses were affiliated); see also Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).

Registration and Use in Bad Faith

Complainant asserts that Respondent has registered and used the <idig.com> domain name in bad faith. Respondent admittedly had knowledge of Complainant’s rights in the IDIG mark. Therefore, Respondent’s subsequent registration of the domain name, despite knowledge of Complainant’s rights, constitutes bad faith registration under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

There is no doubt of Respondent’s actual knowledge of Complainant’s rights in the IDIG mark due to the circumstances surrounding this dispute. See generally Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where Respondent was employed by Complainant’s business, was fully aware of the name of her employer, and made no use of the infringing domain name); see also Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3, 2000) (finding that because Respondent was hired by Complainant to help design and register Complainant’s websites, Respondent had intimate knowledge of Complainant’s business and use of its TEENFLO mark.   Therefore, Respondent’s registration of <teenflo.com> was in bad faith).

Further, Respondent has also registered the <idig.us> domain name, but has yet to create any website in conjunction with the domain name. The Panel finds that Respondent’s registration of two domain names that incorporate Complainant’s IDIG mark satisfies the requirements of Policy ¶ 4(b)(ii). More specifically, it finds that Respondent has exhibited a pattern of registering domain names with the intent to prevent Complainant from reflecting its IDIG mark in a domain name. See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that, where Respondent registered many domain names, held them hostage, and prevented the owners from using them, the behavior constituted bad faith).

Respondent has intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark. Respondent’s <idig.com> domain name misdirects potential “idig” customers to Respondent’s <ions.com> domain name and corresponding website. Such use constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

DECISION

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

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

John J. Upchurch , Panelist
Dated: May 12, 2003

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