Brite-Lite, Inc. v. Von Wolf FX
[Indexed as: Brite-Lite v. Von Wolf]
[Indexed as: brite-lite.com]
The National Arbitration Forum
Administrative Panel Decision
Case No. FA0004000094641
Commenced: 19 April, 2000
Judgment: 6 June, 2000
Presiding Panelist: Honorable Richard B. Wickersham, Arbitrator
Domain name - Domain name dispute resolution policy - Trademark -
Servicemark - Identical - Confusingly similar - Bad faith registration
- Bad faith use - Source - Sponsorship - Affiliation - Endorsement.
Brite-Lite, Inc. is a 20 year old company selling wholesale lighting
throughout Canada and the United States as well as abroad. Brite-Lite,
Inc. registered brite-lite.com by Telus.
In late 1999 Network Solutions the registrar of brite-lite.com invoiced
Telus Advertising Services in the amount of $35.00 for renewal of brite-lite.com
(Telus was the billing contact of this domain). The renewal fee was
not paid as a result of error the domain name became available. On
March 11, 2000, Respondent registered brite-lite.com with Register.com.
The site was never developed by Respondent.
Held, Name Transferred to Complainant.
Respondent's domain name is confusingly similar to Complainant's
trademark or service mark in which Complainant has all rights, title and
interest.
Respondent is deemed to have no rights or legitimate interests in
said domain name.
Respondent's domain name has been registered and is being used in
bad faith. Respondent registered the domain name in order to sell
the name to its rightful owner for consideration in excess of out-of-pocket
costs. Further, Respondent intended to divert consumers away from
Complainant's business for the purpose of financial gain, and in order
to prevent Complainant's use of the domain name, the trademark to which
it has full rights.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decision referred to
--
Wickersham, Panelist--
The above entitled matter came on for an administrative hearing on June
1, 2000 before Richard B. Wickersham, Arbitrator, assigned to this matter
on the Complaint of Brite-Lite, Inc. (Complainant) against Von Wolf FX
(Respondent). Upon the written submitted record, including the Complaint
and the Response to the Complaint the following Decision is rendered.
2. PROCEDURAL FINDINGS
Domain Name:
brite-lite.com
Registrar's Name:
Register.com
Date of Domain Name Registration: March 11,
2000
Date Complaint Filed:
April 19, 2000
After reviewing the Complaint and determining it to be in administrative
compliance, the National Arbitration Forum (the "Forum") forwarded the
Complaint to Respondent in compliance with Rule 2(a) and the administrative
proceeding was commenced pursuant to Rule 4(c). The Forum immediately
notified Register.com, the Internet Corporation for Assigned Names and
Numbers ("ICANN") and the Respondent that the administrative proceeding
had commenced pursuant to Rule 4(d). Respondent has submitted a Response
to the Forum within twenty (20) days pursuant to Rule 5(a), which time
has now expired. The Complaint and the Response and all Exhibits
were forwarded to the Arbitrator for decision.
On March 11, 2000, Respondent registered the domain name with
the domain name registrar Register.com, the entity that is the registrar
of the domain name. Register.com verified that Respondent is the
registrant for the domain name and by registering its domain name
with Register.com, Respondent agreed to resolve any disputes regarding
its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution
policy. Neither the Complainant nor the Respondent has contested
the jurisdiction of the Forum or the Arbitrator assigned to resolve this
controversy.
3. DECISION
1. A Domain Name Dispute
Complaint was submitted in accordance with ICANN's Uniform Domain Name
Dispute Resolution Policy and Rules by Brite-Lite, Inc., contact person
Brian Roach, of Calgary, Alberta, Canada.
2. Brite-Lite, Inc.
is a 20 year old company selling wholesale lighting throughout Canada and
the United States as well as abroad. The company noticed, in 1996,
that the Internet was "taking off" and accordingly on December 19, 1996
Brite-Lite, Inc. had registered by Telus Yellow Pages. They
were told not to register their name with the hyphen but later, on April
16, 1997, Brite-Lite, Inc. had brite-lite.com registered by Telus.
In 1999 Telus transferred their sites over to "Softcom.ca" so that Softcom.ca
could host them. Further, they had Softcom.ca set up as an
alias. Thereafter, the alias redirected all email and entrees
to brite-lite.com.
3. In late 1999, November
23, 1999 and December 22, 1999, Network Solutions the registrar of, at
that time, invoiced Telus Advertising Services in the amount of $35.00
for renewal of (Telus was the billing contact of this domain).
The renewal fee was not paid and became available. On March 11, 2000,
Von Wolf FX Respondent, by Gerald Szlatiner, contact person, registered
with Register.com as it was available.
4. Thereafter Brian
Roach and Gerald Szlatiner were in contact with one another by phone and
e-mail but have been unable to resolve their differences. Mr. Szlatiner
was informed by Mr. Roach that the invoice to Telus was not paid in error
(Telus had not forwarded the invoice to Brite-Lite, Inc., Complainant)
and offered to pay all fees and expenses to return the domain name to Brite-Lite,
Inc.
5. Gerald Szlatiner
rejected a $200 offer to resolve the problem. Brite-Lite, Inc., rejected
the Gerald Szlatiner position of "waiting for a substantial offer," feeling
it was a type of blackmail or extortion, based upon all of its years of
maintaining both names and brite-lite.com over the past 4 years and over
20 years of business of Brite-Lite, Inc., throughout Canada and the United
States.
6. In its Complaint
Brian Roach notes that Von Wolf FX (Gerald Szlatiner) has no legitimate
interest or rights in the domain name "as it is our name," and they (Von
Wolf FX) are not in the Lighting Business.
4. CONCLUSION
The undersigned certifies that he has acted independently and has no known
conflict of interest to serve as the Arbitrator in this proceeding.
Having been duly selected, and being impartial, the undersigned makes the
following findings and conclusions:
1. It is important to
note that this proceeding is based upon the Rules and the Policy previously
defined to which the parties contractually agreed to submit themselves
in the event of a domain name dispute. In this mandatory administrative
proceeding, the Complainant, Brite-Lite, Inc., has asserted in its Complaint
that Von Wolf FX, Respondent, has a domain name () which is identical or
confusingly similar to a trademark or servicemark in which the Complainant
has rights, i.e., Brite-Lite, Inc.; further, that Von Wolfe FX, Respondent,
has no rights or legitimate interests in respect of the domain name , and
further that said domain name has been registered and is being used in
bad faith. As we noted above, the domain name was registered with
Register.com, March 11, 2000, by Von Wolf FX, Respondent. In this
administrative proceeding, the Complainant Brite-Lite, Inc. must prove
and we find that Complainant has proved that each of these three elements
are present.
2. For the purposes
of proving that Respondent's domain name has been registered and is being
used in bad faith the following circumstances have been considered by and
found by the Arbitrator that Respondent, Von Wolf FX, has registered and/or
acquired the domain name () primarily for the purpose of selling, renting,
or otherwise transferring the domain name registration to the Complainant
who is the owner of the trademark or servicemark for valuable consideration
in excess of documented out-of-pocket costs directly related to the domain
name; further, that Von Wolf FX, Respondent, has registered the domain
name in order to prevent the owner of the trademark or servicemark
from reflecting the mark in a corresponding domain name; and further, by
using the domain name, Von Wolf FX, Respondent, has intentionally attempted
to attract, for commercial gain, Internet users to its web site or other
on-line location, by creating a likelihood of confusion with the Complainant's
mark, as to the source, sponsorship, affiliation or endorsement of its
web site or location or of a product or service on its web site or location.
Factually, the Arbitrator finds from the evidence that as far back as December
19, 1996 Brite-Lite, Inc. registered the domain name by Telus Yellow
Pages and subsequently on April 16, 1997, Complainant Brite-Lite, Inc.
registered brite-lite.com by Telus Yellow Pages. Further, in 1999,
Telus transferred said sites over to Softcom.ca so that Softcom.ca could
host them. In addition, Brite-Lite, Inc., Complainant, had Softcom.ca
set up as an ALIAS. This was done in case users might only
key in without a hyphen. The ALIAS thereafter redirected all
e-mail and entrees to brite-lite.com.
3. Through a misadventure,
a thirty-five ($35.00) dollar renewal invoice, sent by Network Solutions
to Telus Advertising Services (the billing contact of the domain), was
misdirected and not paid by accident.
4. On March 11, 2000,
Respondent, Von Wolf FX, by Gerald Szlatiner, contact person, registered
, as it was then available; and when one went to the site after March 11,
2000, such person was greeted with the message "Welcome to - web
site coming soon - this web-page will be up and running soon. For
investment or purchasing interests, please contact me using the e-mail
address below." (Garando@hotmail.com).
5. Respondent's domain
name is confusingly similar to Complainant's trademark or servicemark
in which Complainant has all rights, title and interest and consumers are
likely to be confused into believing that there is some affiliation, connection,
sponsorship, approval or association between Respondent and Complainant,
when in fact no such relationship exists. See Rule 4(a)(i).
6. Respondent does not
have any right or legitimate interest in respect to the domain name .
See Rule 4(a)(ii).
7. Under all of the
circumstances set forth hereinabove the Arbitrator finds that the domain
name has been registered by Register.com at the instance of Von Wolf
FX, by Gerald Szlatiner, contact person, e-mail address Garando@hotmail.com
and that such registration and use of such domain name is considered by
the Arbitrator as having been registered and used in bad faith, and further,
Respondent is deemed to have no rights or legitimate interests in said
domain name, and further, the domain name is identical to the mark
of Complainant, Brite-Lite, Inc.
8. Based upon the above
findings and conclusions and pursuant to Rule 4(i) of the ICANN's Rules
for Uniform Domain Name Resolution Policy and the National Arbitration
Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy,
it is decided as follows:
9. The domain name
registered by Respondent, Von Wolf FX, shall be and is hereby transferred
forthwith to Brite-Lite, Inc., Complainant.
10. Respondent, Von Wolf
FX, shall forthwith cease and desist from any and all use of the domain
name .
Domain
Name Transferred
