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Universal Solutions of North Carolina, Inc. & v. Damage Research Inc. [2003] GENDND 49 (15 January 2003)

CPR Institute for Dispute Resolution

Before Thomas M. Pitegoff, Esq., Arbitrator

PROCEDURAL HISTORY

The Complaint was filed with CPR Institute for Dispute Resolution (CPR) on December 9, 2002. After review for administrative compliance, CPR transmitted a copy of the Complaint to Respondent and Respondent filed a Response on the same date, December 9, 2002. On January 10, 2003, CPR appointed me as Arbitrator pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Rules for UDRP (the “Rules”) promulgated by the Internet Corporation for Domain Names and Numbers (ICANN).

Upon the written submitted record including the Complaint and its attachments (8 pages plus Appendices A through J), the Response (4 pages), and the Procedural History provided by CPR, I find as follows:

FINDINGS

Complainant Universal Solutions of North Carolina, Inc. owns the trademark “DAMAGE TRACK”, registered on the Principal Register of the United States Patent and Trademark Office under registration number 1,863,895 on November 22, 1994. The mark is registered for use in connection with a computerized database of damaged product information in class 35, administering damage reimbursements in class 36, and consulting services in the field of product damage in class 42. The mark has been used since 1988 in connection with the services covered by class 35, and since 1989 in connection with the services covered by classes 36 and 42. In addition, it was used continuously for five years after its registration and has achieved incontestable status under 15 U.S.C. § 1065.

Complainant Universal Solutions International, Inc. is the parent company of the trademark owner, Complainant Universal Solutions of North Carolina, Inc.

Complainant alleges that the domain name DAMAGETRACK.COM is identical to Complainant’s registered mark. For purposes of determining identity or confusing similarity, the .com extension is disregarded. The domain name DAMAGETRACK.COM simply combines the word “damage” with the word “track”. Therefore, I conclude that the registered domain name is identical or confusingly similar to Complainant's protected mark.

RIGHTS AND LEGITIMATE INTERESTS

Complainant alleges that Respondent has no rights or legitimate interest in the domain name DAMAGETRACK.COM. In support of this allegation, Complainant notes that the domain name does not resolve to an active website and contends that Respondent has not used or made preparations to use the DAMAGETRACK.COM domain name.

UDRP Paragraph 4(c) provides that Respondent’s rights or legitimate interests in a domain name may be demonstrated, for example, by any of the following circumstances: (a) before notice to Respondent of the dispute, Respondent is using or has made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (b) Respondent has been commonly known by the domain name; or (c) Respondent is making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent alleges that Respondent intends to use the domain name DAMAGETRACK.COM. However, Respondent has presented no evidence demonstrating that Respondent has taken any steps to make use of that domain name. Respondent has not demonstrated that it has been commonly known by the domain name, nor that Respondent is making legitimate noncommercial or fair use of the domain name.

I therefore conclude that Respondent does not have any rights or legitimate interests with respect to the domain name at issue.

BAD FAITH

Paragraph 4(b) of the UDRP provides that indications of bad faith include, without limitation, (a) registration for the purposes of selling, renting or transferring the domain name to the Complainant for value in excess of Respondent’s cost; (b) a pattern of registration in order to prevent Complainant from reflecting the mark in a corresponding domain name; (c) registration for the primary purpose of disrupting the business of a competitor; or (d) an intentional attempt to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site or location, or of a product or service on Respondent’s web site or location.

Complainant alleges that Complainant originally registered the domain name DAMAGE-TRACK.COM with Network Solutions, which improperly released the domain name in May of 2001, notwithstanding the fact that Complainant had paid the required fees to Network Solutions to renew the domain name.

Complainant presented a copy of the renewal notice dated February 8, 2001, for the DAMAGETRACK.COM domain name, requiring payment of $70.00 by March 12, 2001. The renewal notice indicated that the domain name was owned by Universal Solutions, Inc., in Winston Salem, North Carolina. Universal Solutions, Inc. is not one of the Complainants, and Complainant does not explain its relationship to Complainants. However, because of the similarity of company name and location, the allegation that the domain name once belonged to Complainant and the fact that the $70.00 check submitted in payment of the renewal fee was issued by Complainant Universal Solutions International, Inc., we conclude that Universal Solutions, Inc. is either the same company (incorrectly listed) or an affiliate of Complainant.

Complainant alleges that Network Solutions did not correctly associate the check with the domain name DAMAGETRACK.COM, and believed that no payment had been received for the registration renewal. Accordingly, Network Solutions released the domain name in May of 2001. Respondent registered the domain name on June 13, 2001. In the meantime, Complainant moved the contents of its website to a new domain name, USIINC.NET.

Complainant further alleges that Respondent registered the domain name DAMAGE-TRACK.COM with the knowledge that the domain name had been used by Complainant and that Complainant owned the registered trademark DAMAGE TRACK which Complainant was using in commerce. As evidence, Complainant presented written correspondence from 1996 and 1997 between the trademark owner and Mr. Ghassali, who was then an employee of Thomas J. Lipton Company. In this role, Mr. Ghassali learned about the products and services sold by Complainant under the DAMAGE TRACK trademark. Complainant alleges that, sometime in the summer of 2000, Mr. Ghassali left Thomas J. Lipton Company and started his own business, Respondent Damage Research, Inc., to compete directly with Complainant.

Complainant alleges that by registering the DAMAGETRACK.COM domain name, Respondent was attempting to take unfair advantage of the goodwill associated with the mark by diverting Complainant’s customers to Respondent’s website. Until receiving Complainant’s letter of August 22, 2001, requesting that Respondent cease using the mark, Respondent rerouted Internet users from DAMAGETRACK.COM to Respondent’s other website, DAMAGETRACE.COM.

I conclude that Respondent registered and used the disputed domain name in bad faith, as that term is defined in the ICANN policy.

CONCLUSION

In light of the findings above that (a) the registered domain name is identical or confusingly similar to Complainant’s protected mark; (b) Respondent does not have rights or legitimate interest with respect to the domain name at issue; and (c) Respondent did register and use the domain name in bad faith, as that term is defined in the ICANN Policy, I find in favor of Complainant.

REMEDY

Complainant’s request to transfer the domain name DAMAGETRACK.COM to Complainant is GRANTED. Complainant is comprised of two companies, but the complaint does not specify which Complainant it is requesting to be the transferee of the domain name. Because only one Complainant is the owner of the registered trademark, the domain name will be transferred to the trademark owner, Complainant Universal Solutions of North Carolina, Inc.

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Date: January 15, 2003
Thomas M. Pitegoff, Esq.