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NTSI Corp. v. John Segreti [2004] GENDND 1322 (26 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NTSI Corp. v. John Segreti

Case No. D2004-0632

1. The Parties

The Complainant is NTSI Corp., Tucson, Arizona, United States of America, represented by Law Offices of James P. Lynn, United States of America.

The Respondent is John Segreti, Colts Neck, New Jersey, United States of America, represented by Baker & Hostetler, LLP, United States of America.

2. The Domain Names and Registrar

The disputed domain names <ntsitraining.com> and <nyinsurancereduction.com> are registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2004. On August 16, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain names at issue. On August 18, 2004, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 25, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 26, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was September 15, 2004. The Response was filed with the Center on September 14, 2004. Pursuant to the request of the Complainant, the proceeding was suspended until October 23, 2004. On October 7, 2004, the Complainant filed a request for reinstatement of the Administrative Proceeding.

The Center appointed Nels T. Lippert as the Sole Panelist in this matter on October 12, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

4. Factual Background

Complainant, NTSI Corp., is a California corporation with an office in New York, New York. Complainant is also known as National Traffic Safety Institute and owns two United States trademark registrations, No. 2,141,090 dated March 3, 1998, for NTSI and No. 2,142,843 issued March 10, 1998, for NTSI and Design.

The disputed domain names were originally registered by Complainant.

Respondent, John Segreti, is an individual who was the president of Complainant from July 1986 until January 2003. Respondent is currently the record owner of the disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainant contends:

- On July 18, 2002, Mr. Segreti, without the knowledge or authorization of NTSI, transferred the domain name <ntsitraining.com> to Register.com and in the process changed the registrant of the domain name to himself.

- Subsequent to termination by NTSI, Mr. Segreti removed the NTSI website from the “www.ntsitraining.com” URL and replaced it with a new webpage, which states that the site is under construction and gives a telephone number of a company called American Safety Training Program, apparently a business in competition with NTSI.

- Respondent, without the knowledge or authorization of Complainant, transferred the domain name <nyinsurancereduction.com> to Register.com and in the process changed the Registrant of the domain name to himself.

- Respondent has no rights or legitimate interests in respect to the disputed domain names because while an employee of Complainant, Respondent fraudulently transferred the domain names to himself without the knowledge or authorization of Complainant.

- The disputed domain names were registered and are being used in bad faith because Respondent fraudulently transferred the domain names to himself without the knowledge or authorization of Complainant and were transferred primarily for the purpose of disrupting the business of Complainant. Furthermore, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line locations by creating a likelihood of confusion with the Complainant’s mark.

B. Respondent

The Respondent contends:

- The disputed domain names were inadvertently transferred to Register.com by Complainant’s administrative staff.

- The disputed domain names should be owned by Complainant.

- The disputed domain names were inadvertently transferred without any evidence of bad faith on the part of the administrative staff of Complainant.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, all three of the following elements:

(i) The domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) The 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 Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by the Respondent, would demonstrate the Respondent’s rights or legitimate interests in the domain name for purposes of Paragraph 4(a)(ii).

Respondent does not contest that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Indeed, the <ntsitraining.com> domain name wholly incorporates the registered trademark of Complainant and both disputed domain names are identical, in fact they are the same, as the domain names previously owned by Complainant and to which Complainant has rights. As such, the Panel finds that the disputed domain names satisfy the requirements of Policy Paragraph 4(a)(i).

Respondent does not contest and, in fact, admits that he has no rights or legitimate interest in respect of the disputed domain names. Accordingly, the Panel finds that the Complainant has established the requirements of Policy Paragraph 4(a)(ii).

The Panel further finds that the disputed domain names were registered and are being used in bad faith. Other than a general denial, Respondent has not provided evidence refuting the Complainant’s contentions. In any event, with respect to the disputed domain name <ntsitraining.com>, the original redirection of that domain name to a site, even one that is under construction, of a potential competitor amounts to bad faith use and registration under Policy Paragraph 4(b)(iv), see, Bancolombia S.A. v. Elpidia Finance Corporation, WIPO Case No. D2000-0545 (July 19, 2000). Neither of the disputed domain names currently resolve to an active website. However, passive holding of a domain name that is confusingly similar to another’s trademark, as is the case here, is not a bona fide use. Acu-Sort Systems, Inc. v. Acu-Sort Inc., NAF Claim No. FA164568 (August 7, 2003).

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <ntsitraining.com> and <nyinsurancereduction.com> be transferred to the Complainant.

Nels T. Lippert
Sole Panelist

Dated: October 26, 2004