Domain name -  U.S. Trademark - Common law trademark - Cybersquatter- Identical - Confusingly Similar - Right and Legitimate Interest - Bad faith registration - Bad faith use - Hyphenated term - Default - Offer to sell - Ownership of other domains.

Complainant was owner of many U.S. and state trademark registrations containing the words LES SCHWAB for use in tire, battery and other automobile related services.  Complainaint  maintains the website lesschwab.com for sales and marketing its products and services. 
Respondent registered the domain names in question.  Respondent called Complainant to sell les-schwab.com.  Complainant refused.  Two of the domain names in question redirect Internet users to the website of the Complainant's major competitors. 

Held, Name Transferred to Complainant.

The domain names in question are identical to Complainant's registered mark LES SCHWAB except for the hyphen between the two terms.  A hyphen between words of the Complainant's registered mark is confusingly similar.

Respondent has no rights or legitimate interest in either of the registered domain names. Respondent is not commonly known by the name, nor is Respondent using the site in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.  The
failure of Respondent to produce sufficient evidence to rebut Complainant's allegations entitles the Panel to conclude that Respondent has no such rights or legitimate interests in respect of the domain name at issue.

Respondent registered and is using the domain names in bad faith.  Based on Respondent's offer to sell the domain names to Complainant, it is presumed that Respondent registered and used these three domain names to make a profit.  Even though Respondent never made an actual offer for valuable consideration in excess of out of pocket costs, bad faith was found because Respondent offered to sell the domain name. Furthermore, the registration of numerous domain names of famous trademarks reveals bad faith.  By transporting users to the Pep Boys website, Respondent is confusing Internet as to the affiliation of the services therein provided.

Policies referred to 
ICANN's Rules for Uniform Domain Name Dispute Resolution Policy
National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy 

Cases referred to
The Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd, , AF?0145 (eResolution May 3, 2000)
Parfums Christian Dior v. QTR Corp., No. D2000?0023 (WIPO Mar. 9, 2000)
Microsoft Corp. v. Amit Mehrotra, D2000?0053 (WIPO April 10, 2000)
Nabisco Brands Co. v. The Patron Group, Inc, D2000-0032 (WIPO Feb 23, 2000)
Hewlett?Packard Co. v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000)

Panel Decision referred to 

- Carmody Panelist: -
 

PARTIES

The Complainant is Les Schwab, Prineville, OR, USA ("Complainant"). The Respondent is Lance Stanley, OR, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain names at issue are "LES?SCHWAB.COM," "LES?SCHWAB.NET," and "LES?SCHWAB.ORG," registered with Register.com.

PANELIST

Hon. James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on June 19, 2000; The Forum received a hard copy of the Complaint on June 19, 2000. 

On June 20, 2000, Register.com confirmed by e?mail to The Forum that the domain names "LES?SCHWAB.COM,"  "LES?SCHWAB.NET," and "LES?SCHWAB.ORG" are registered with Register.com and that the Respondent is the current registrant of the name. 
 

On June 22, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 12, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts by email. 

On July 12, 2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default. 

On July 13, 2000, pursuant to Complainant's request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody as Panelist. 

Having reviewed the communications records in the case file, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum's Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from the Respondent to the Complainant. 

PARTIES' CONTENTIONS

A. Complainant

The Complainant contends that the Respondent is a "cybersquatter".  The Complainant contends that the Respondent has registered domain names that are identical to its trademark registered for and in use by the Complainant.  Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain names, and that the respondent has registered and is using the domain names in bad faith. 
 

B.     Respondent

The Respondent submitted no response in this matter and, accordingly, all reasonable inferences of fact in the allegations of the Complaint will be deemed to be true.

FINDINGS
 

The Complainant owns the rights in many U.S. and state trademark registrations containing the words LES SCHWAB for use in tire, battery, and other automobile related services.  The Complainant has been in the automotive services industry for almost fifty years.  The Complainant presently maintains the website  <lesschwab.com> for sales and marketing its products and services on the Internet.

The Respondent registered the domain names in question on February 4, 2000.  The Complainant received a phone call from someone identifying himself as "Lance," offering the  <les?schwab.com>  website for sale.  The Complainant refused the offer.  Two of the domain names in question redirect Internet users to the website of the Complainant's major competitor, The Pep Boys Manny, Moe and Jack.

DISCUSSION 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements in order to demonstrate claims 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; and

(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

The Complainant has rights in the registered mark LES SCHWAB.  The Respondent's domain names are identical to the Complainant's mark except for the hyphen between the two terms. 
See The Pep Boys Manny, Moe, and Jack v. E?Commerce Today, Ltd., AF?0145 (eResolution May 3, 2000) (finding that a hyphen between words of the Complainant's registered mark is
confusingly similar). 

Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain names in question.  The Respondent has not denied that assertion.

The name does not reflect a name by which the Respondent is commonly known, nor is the Respondent using the site in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.  Policy  4(c)(i)?(iii).  Rather, the Respondent is using the Complainant's registered mark for the Respondent's profit and the profit of the Complainant's
competitor.
 

The failure of Respondent to produce evidence sufficient to rebut Complainant's allegations entitles the Panel to conclude that Respondent has no such rights or legitimate interests in respect of the domain name at issue. See Parfums Christian Dior v. QTR Corp., No. D2000?0023 (WIPO Mar. 9, 2000). 

Bad Faith

The Respondent has not responded to the Complaint and, therefore, does not deny that the domain name was registered and is being used in bad faith, as alleged by Complainant.

The Respondent registered the domain names in question for the purpose of selling them to the Complainant.  It is not alleged that the Respondent offered the domain names for consideration in excess of his out of pocket costs.  Yet, based on the Respondent's offer to sell the domain names to the Complainant, it is presumed that the Respondent registered and used these three domain names to make a profit.  See Policy  4(b)(i); Microsoft Corp. v. Amit Mehrotra, D2000?0053 (WIPO April 10, 2000) (finding bad faith where the Respondent listed the registrant as "If you want this domain name, please contact me", even though the Respondent never made an actual offer for valuable consideration in excess of out of pocket costs). 

Further, the registration of numerous domain names reveals bad faith.  See Nabisco Brands Co. v. The Patron Group, Inc, D2000?0032 (WIPO Feb 23, 2000). 

The Respondent is using the domain names to attract for commercial gain, Internet users to another online location, by creating a likelihood of confusion as to the source of the products and services.  Policy  4(b)(iv).  By transporting users to the Pep Boys website, the Respondent is confusing Internet as to the affiliation of the services therein provided.  See Hewlett?Packard
Co. v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000).

Based on the above, the panel concludes that the domain names were registered and used in bad faith. 

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted. 

Accordingly, for all of the foregoing reasons, it is ordered that the domain names, "LES?SCHWAB.COM," "LES?SCHWAB.NET," and "LES?SCHWAB.ORG", be transferred from the Respondent to the Complainant.

James A. Carmody, Judge (Ret.), Arbitrator
Dated: July 15, 2000
 
 

Domain Name Transferred