[Indexed as: Carpenter v. Clement]
[Indexed as: Spotup.com]
eResolution
Administrative Panel Decision

Case No. AF-0148
Commenced: March 24, 2000
Judgment: 14 May 2000

Presiding Panelist: Enzo Fogliani

Domain name - Domain name dispute resolution policy - U.S. Trademark - Identical - Confusingly similar -No legitimate rights or interests - Inactive web page - Bad faith registration and use - Practice - Late Response Form submission.

Complainant was registrant of United States trademark, SPOT UP. Respondent registered the domain name, spotup.com. Complainant alleged that its registered trademark and the registered domain name were identical, that Respondent had no rights or legitimate interests in respect of the domain name at issue and had registered said domain name in bad faith. 

Since Respondent submitted his response via eResolution's Internet site after the deadline, the Clerk's Office informed Respondent that it would be up to the Panelist to decide whether or not to consider the Response form. 

Held, Domain Name Transferred to Complainant.

The domain name SPOTUP.COM is nearly identical to the trademark registered and used by Complainant, SPOT UP, the only difference being the tag ".com" and the lack of a blank space between the two words "spot" and "up," which does not alter the substance of these two words. Since it is commonly known that a Domain Name cannot contain blank space in it, the Domain Name spotup.com creates confusion in the marketplace. 

It is also clear that Respondent has no rights or legitimate interest in respect of the domain name. The contested Domain Name resolves to an inactive Web page. Together with the Complainant's statements that the Respondent has no rights or legitimate interests in the Domain Name "spotup.com", this fact is evidence that the Respondent is not making legitimate noncommercial or fair use of the Domain Name.

eResolution Supplemental Rules provides that time limits established in the Rules are mandatory and that the response shall not be considered during the administrative proceeding if it is not in conformity with the applicable administrative requirements. Since Respondent did not file the Response form by the deadline and the Clerk's Office had not received a signed version thereof, the Panel did not consider the Response form and takes for truth the affirmations of fact contained in the Complaint, pursuant to ICANN Policy. 

In the absence of any Response, this Panel accepts the statements of the Complainant that the Respondent has requested monetary compensation in excess of documented out-of-pockets cost related to the Domain Name. This circumstance is considered sufficient to prove that the Domain Name has been registered and used in bad faith, according to the ICANN Policy. 
 

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Registration Agreements referred to
--

Cases referred to
--

Panel Decision referred to
--

Fogliani, Panelist: -

            
1. Parties and Contested Domain Name 

The Complainant is Walter Carpenter Jr., an individual resident in Los Angeles, California, U.S.A. 

The Respondent is J.D. Clement, an individual resident in Dearborn, Florida, U.S.A. 

The Domain Name at issue is spotup.com , registered by the Respondent with Network Solutions, Inc., based in Herndon, Virginia, U.S.A. 

The remedy sought is the transfer of Domain Name spotup.com from the Respondent to the Claimant. 

2. Procedural History 

 The complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy ("ICANN Policy") adopted by the Internet Corporation for Assigned Names and Numbers on October 24, 1999. 

 The electronic version of the Complaint form was filed online through eResolution's Website on March 14, 2000. The hardcopy of the Complaint Form was received on March 21, 2000. Payment was received on the same date. 

Upon receiving all the required information, eResolution's clerk proceeded to: 

               - confirm the identity of the Registrar for the contested Domain Name; 

               - verify the Registrar's Whois Database and confirm all the required contact information for Respondent; 

               - verify if the contested Domain Name resolved to an active Web page; 

               - verify if the Complaint was administratively compliant. 

The inquiry led the Clerk of eResolution to the following conclusion: The Registrar is Network Solutions, Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant. 

The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with Paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. 

The Clerk fulfilled all her responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on March 24, 2000. That date is the commencement date of the administrative proceeding. 

On March 24, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding. 

On April 17, 2000, the Respondent asked the Clerk's Office to extend the deadline for filing the Response form to 20 days. The Clerk's Office decided not to grant the requested extension but sent to the Respondent a login and password. The Respondent was granted a period of 10 days, from April 17, to April 27, to file a Response form. 

On April 28, 2000, the Clerk's Office contacted Mr. Enzo Fogliani, and asked him to act as Panelist in this case. 

On May 2, 2000, Mr. Enzo Fogliani, agreed to act as Panelist in this case and filed the necessary Declaration of Independence and Impartiality. 

On May 2, 200, the Respondent submitted his response via eResolution's Internet site. To date the Clerk's Office has not received a signed version of the response. Since the Response form was not submitted by the deadline, the Clerk's Office informed the Respondent that it would be up to the Panelist to decide whether or not to consider the Response form. 

On May 2, 2000, the Clerk's Office forwarded a user name and a password to Mr. Enzo Fogliani, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System. 

On May 2, 2000, the parties were notified that Mr. Enzo Fogliani had been appointed and that, barring exceptional circumstances, his decision would be handed down on May 16, 2000. 

3. Factual Background 

Paragraph 3 (a) of eResolution Supplemental Rules provides that time limits established in the Rules are mandatory. Paragraph 7, (c) provides that the response shall not be considered during the administrative proceeding if it is not in conformity with the applicable administrative requirements stated in the Rules. The Respondent did not file the Response form by the deadline and to date the Clerk's Office had not received a signed version thereof. Accordingly, this Panel did not consider the Response form and takes for truth the affirmations of fact contained in the Complaint, pursuant to Paragraph 14 (a) of the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999. 

The Complainant presents evidence in the form of a certificate issued by the U.S. Patent and Trademark Office showing that the Complainant, Walter Carpenter Jr., is the present title owner of a trademark that had been registered with the U.S. Patent and Trademark Office on March 18, 1997, and that such trademark had been in use since April 15, 1996. Upon receiving the Complaint, eResolution verified that J.D. Clement had registered the spotup.com Domain Name with Network Solutions, Inc. on July 9, 1998.

 4. Parties' Contentions 

The Complainant claims the Domain Name spotup.com is identical to the trademark he registered with the United States Patent and Trademarks Office on March 18, 1997. 

Furthermore, the Complainant claims that Respondent 

a) has no right to use the spotup.com Domain Name because it is a registered   
Trademark; 

               b) has no interest in the Domain Name because nothing has been advertised or 
   posted on the website since its creation on July 9, 1998. 

Finally, the Complainant claims that Respondent is in bad faith because he "has requested monetary compensation in excess of documented out-of-pocket costs related to the Domain Name, therefore disrupting potential e-commerce as well as brand recognition." 

5. Discussion and Findings 

Under Paragraph 4 (a) of the ICANN Rules, the Complainant is required to prove, with respect to the Domain Name at issue, (a) that the Domain Name is identical or confusingly similar to the Complainant's trademark; (b) that the Respondent has no rights or legitimate interests in the Domain Name; and (c) that the Domain Name has been registered and is being used in bad faith. 

These are the three matters at issue in this case. 

(a) Identity or Confusing Similarity 

As to the matter of similarity, it is clear to this Panel that the mark "spot up" is nearly identical to the Domain Name "spotup.com", the only difference being the tag ".com" and the lack of a blank space between the two words "spot" and "up" (which does not alter the substance of these two words). Since it is commonly known that a Domain Name cannot contain blank space in it, this Panel believes that the Domain Name spotup.com creates confusion in the marketplace. 

(b) Rights or legitimate interests 

The Complainant has proved his title on the trademark "spotup." On March 21, 2000 eResolution's Clerk verified that the contested Domain Name resolves to an inactive Web page. Together with the Complainant's statements that the Respondent has no rights or legitimate interests in the Domain Name "spotup.com", the Panel takes this fact as evidence that the Respondent is not making legitimate noncommercial or fair use of the Domain Name. 

(c) Bad Faith Registration and Use 

 As previously noted, this Panel cannot consider the Response form and accordingly shall decide the dispute case based on the complaint, as provided by Paragraph 5(e) of the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999. 

In the absence of any Response, this Panel accepts the statements of the Complainant that the Respondent has requested monetary compensation in excess of documented out-of-pockets cost related to the Domain Name. This circumstance is considered sufficient to prove that the Domain Name has been registered and used in bad faith, according to Paragraph 4,(b)(i) of the Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999. 

6. Conclusion 

The Panel concludes that (a) the Domain Name registered by J.D. Clement and at issue herein is confusingly similar to the registered trademark "spotup" owned by W. Carpenter Jr.; that (b) of the J.D. lement has no rights or legitimate interests in respect of the Domain Name; and that (c) the Domain Name at issue was registered and is being used in bad faith by J.D. Clement. 

Accordingly, the Complainant's request is granted and, pursuant Paragraph 3 (c), the Panel orders that the registration of the Domain Name at issue, spotup.com, be transferred from Mr. J.D. Clement to Mr.W. Carpenter Jr. 

Rome, 14 May 2000 
Enzo Fogliani
Presiding Panelist

Domain Name Transferred