DECISION

Rapid Settlements, Ltd. and Rapid Management Corp. v. Worldwide Media, Inc.

Claim Number: FA0409000320227

PARTIES

Complainant is Rapid Settlements, Ltd. and Rapid Management Corp. (“Complainant”), represented by Stewart A. Feldman, of The Feldman Law Firm LLP, 5051 Westheimer, Suite 1850, Houston, TX 77056.  Respondent is Worldwide Media, Inc. (“Respondent”), represented by Stephen H. Sturgeon, of Law Offices of Stephen H. Sturgeon & Associates, PC, 11116 Hurdle Hill Drive, Potomac, MD 20854.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rapidsettlement.com>, registered with The Registry At Info Avenue d/b/a IA Registry.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Hon. Charles K. McCotter, Jr.,  Mark V.B. Partridge, Esq. and David S. Safran, Esq. (Chairman) as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 1, 2004; the Forum received a hard copy of the Complaint on September 3, 2004.

On September 2, 2004, The Registry At Info Avenue d/b/a IA Registry confirmed by e-mail to the Forum that the domain name <rapidsettlement.com> is registered with The Registry At Info Avenue d/b/a IA Registry and that the Respondent is the current registrant of the name.  The Registry At Info Avenue d/b/a IA Registry has verified that Respondent is bound by the The Registry At Info Avenue d/b/a IA Registry 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 September 13, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 4, 2004 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@rapidsettlement.com by e-mail.

A timely Response was received and determined to be complete on October 4, 2004.

An Amended Complaint was also received from Complainant.

On October 20, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed the Hon. Charles K. McCotter, Jr.,  Mark V.B. Partridge, Esq. and David S. Safran, Esq. (Chairman) as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts that the domain name is identical to the Complainant’s domain site, except that this domain site does not have the final letter “s”; that Respondent has not used the domain name in connection with a bona fide offering of goods or services; that Respondent has not been commonly known by the domain name and is simply holding those rights without any bona fide interest in the same for the purpose of commercial gain; that bad faith on the part of Respondent can be imputed by its being in the business of selling domain names for valuable consideration well in excess of its out-of-pocket costs; and that Complainant believes Respondent is using the domain name to disrupt Complainant’s business by selling links for Respondent’s commercial gain to Complainant’s competitors.

B. Respondent

Respondent contends that the UDRP was established to permit the expedited disposition of clear abuses and that a clear abuse is not present in the present case.  Furthermore, it is Respondent’s position that Complainant did not acquire any rights in its name and domain until approximately thirty-one months after Respondent registered the domain name on March 10, 2001, and that the UDRP is designed to provide a remedy only for Complainants that have pre-existing trademark rights. Moreover, Respondent could not have registered the domain name <rapidsettlement.com> with knowledge of any claim of Complainant regarding the term “RAPID SETTLEMENT” because the Complainant and its alleged trademark rights were not in existence at the time of the registration of the domain name.   Still further, it is Respondent’s contention that the term “RAPID SETTLEMENT” is extremely generic and merely descriptive of the types of services that Complainant and many other organizations provide; that the consuming public does not associate the term “RAPID SETTLEMENT” with the Complainant; and to the contrary, the term “RAPID SETTLEMENT” has widespread use on the Internet which is unrelated to the Complainant.    Additionally, Respondent argues that Complainant has filed the Complaint with the intent to reverse domain name hijack the domain name <rapidsettlement.com>. 

FINDINGS

The panel finds that Complainant did not acquire any rights in its name and domain until long after Respondent registered the domain name <rapidsettlement.com> on March 10, 2001, so that Respondent could not have registered the domain name <rapidsettlement.com> with knowledge of any claim of Complainant regarding the term “RAPID SETTLEMENT.”  On the other hand, the record shows that Complainant clearly knew that the domain name had been registered before Complainant even existed, was confronted with the fact by Respondent, and nevertheless proceeded with the Complaint without an objective basis for its claim so that the panel finds that Complainant has attempted to use the Policy in bad faith for the purpose of trying to deprive Respondent of its domain name, i.e., to reverse domain name hijack the domain name <rapidsettlement.com>. 

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

No determination is deemed necessary in view of the determination of a lack of bad faith below.

Rights or Legitimate Interests

No determination is deemed necessary in view of the determination of a lack of bad faith below.

Registration and Use in Bad Faith

The Panel finds that Respondent could not have violated paragraph 4(b)(i) of the Policy because, even though it may have offered the domain name registration for sale for an amount in excess of its out-of-pocket expenses, it  cannot be seen how Respondent could have registered the domain name primarily to sell the registration to Complainant or a competitor of Complainant since Complainant’s business and mark were not yet in existence at the time of registration.  See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (finding that “the mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling . . . the domain name to the Complainant”); see also Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000) (finding no bad faith even though Respondent’s ownership and purported use of the domain name frustrates Complainant’s efforts where the record does not indicate any purpose or intent on the part of Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion).

Additionally, the Panel finds that bad faith registration has not been established because the disputed domain name registration predates Complainant’s rights in the mark, so that Respondent could not have violated paragraph 4(b)(iv) of the Policy.  See Jensen Research Corp. v. Future Media Architects, Inc., CPR00 0310 (CPR May 20, 2003) (“Some panelists have interpreted paragraph 4(a)(i) of the Policy to require proof of trademark rights in existence as of the date on which the disputed domain name was registered or acquired. Other panelists consider present-day trademark rights sufficient under paragraph 4(a)(i), but require proof of trademark rights that predate the domain name in order to satisfy the bad faith registration requirement contained in paragraph 4(a)(iii).”); see also Reid v. Chao, FA 154587 (Nat. Arb. Forum May 29, 2003) (finding that Respondent could not have registered the disputed domain name in bad faith where its registration came months before Complainant filed its trademark application and no evidence of common-law rights in the mark were submitted to the Panel); see also Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“We are of the unanimous view that the trademark must predate the domain name.”); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent registered the domain prior to Complainant’s use of the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is impossible for Respondent to register a disputed domain name in bad faith if Complainant's company did not exist at the time of registration); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where Respondent registered the domain name in question before application and commencement of use of the trademark by Complainant); see also Matchmaker Int’l Dev. Corp. v. Kaiser Dev. Corp. Inc., FA 146933 (Nat. Arb. Forum May 9, 2003) (“If Respondent registered the domain name for legitimate purposes, or if it reasonably believed at the time of registration that those purposes were legitimate, then the registration was not in bad faith.”).

DECISION

Since Complainant has failed to establish that the domain name was registered in bad faith as required under the ICANN Policy, the Panel concludes that relief shall be DENIED.  Furthermore, the Panel finds Complainant to be guilty of attempted reverse domain name hijacking.

Accordingly, it is Ordered that the <rapidsettlement.com> domain name be retained by Respondent.

                                               

David S. Safran, Esq. (Chairman) for the Panel

Hon. Charles K. McCotter, Jr., 

Mark V.B. Partridge, Esq.

Dated: November 2, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/1465.html