Domain name - Domain name dispute resolution policy - U.S. Trademarks - Identical - Legitimate interest - Bad faith registration - Bad faith use - Passive holding - Respondent was independent contractor for Complainant.

Respondent registered domain names STATEFAIROFTEXAS.COM and TEXASSTATEFAIR.COM while working as an independent contractor for Complainant.  Complainant was owner of United States and Texas trademarks for State Fair of Texas and Texas State Fair. 

Held, Name Transferred to Complainant.

Respondent registered domain names that were clearly identical to Complainant's registered marks. The addition of the domain name level designation <.COM> does not affect the domain name for the purpose of finding it identical or confusingly similar to a registered trademark.

Respondent was not commonly known by the domain names.  Respondent had made no legitimate or fair use of the domain names whether by providing goods or services or by developing the website.  Respondent was found to have no rights or legitimate interest in the domain names.

Respondent was clearly aware of Complainant's marks, as Respondent had signed an agreement regarding the use of those marks.  Respondent's registration of the domain names was in violation of this agreement because Complainant had not approved this use of its marks.  Respondent's non-use of the domain names was passive holding and evidence of bad faith use.

Policies referred to

Uniform Domain Name Resolution Policy, adopted August 26, 1999

Panel Decisions referred to

Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
Ziegenfelder Co. v. VMH Enterprises, Inc., D2000-0039 (WIPO Mar. 14, 2000)
Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000)
 

PARTIES

The Complainant is State Fair of Texas, Dallas, TX, USA ("Complainant"). The Respondent is State Fair Guides, Dallas, TX, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain names at issue are "STATEFAIROFTEXAS.COM" and         "TEXASSTATEFAIR.COM", registered with Network Solutions Inc. ("NSI").

PANELIST(s)

Hon. James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on June 26, 2000; The Forum received a hard copy of the Complaint on June 26, 2000. 

On June 28, 2000, NSI confirmed by e-mail to The Forum that the domain names
"STATEFAIROFTEXAS.COM" and "TEXASSTATEFAIR.COM" are registered with NSI and that the Respondent is the current registrant of the name.

NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's UDRP.

On June 28, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 18, 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 18, 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 21, 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 has registered a domain name                     that is 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 name, and that the respondent has registered and is using the domain name in bad faith. 

A. Respondent 
The Respondent submitted no response in this matter. As a result, all reasonable                     inferences of fact in the allegations of the Complainant will be deemed true.

FINDINGS

The Complainant owns the U.S. and Texas trademark registrations for the marks STATE FAIR OF TEXAS and TEXAS STATE FAIR. The Complainant has been involved with various state fair activities since 1886 when the first State Fair of Texas opened. 

In July 1996, Bronson Havard ("Havard") worked as an independent contractor for the Complainant to produce 1994-1997 Official Visitor Guides of the State Fair of Texas. Havard does business as State Fair Guides. The agreement that the Complainant and Respondent signed in 1994 stated that Havard was an independent contractor and that he had permission to use the Complainant's registered marks to produce the Official Visitor Guide. In the agreement, the Complainant retained the right of approval for the use of the registered marks, and Havard agreed that use of the registered marks terminated upon         the termination of the agreement.

The Respondent registered the domain names in question on July 26, 1996 and renewed the registrations on June 26, 1998.

The Complainant contacted Havard on December 17, 1999 and offered him $250 per domain name. The Complainant received no response. The Complainant made an identical offer on March 9, 2000. The Respondent rejected the offer but promised to prepare an          accounting of expenses in obtaining the domain names. Havard has not followed up with this information and has not returned the Complainant's phone calls or letters.

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 to support a           claim 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

The Complainant has rights in the registered marks, STATE FAIR OF TEXAS and TEXAS STATE FAIR.  The Respondent's domain names are identical to the          Complainant's mark, except for the addition of the domain name level designation "com". See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as "net" or "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Rights or Legitimate Interests

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

The Respondent is not commonly known by the Complainant's marks. Policy  4 (c)(ii). Rather, the Respondent is known by the name State Fair Guides.

The Respondent has made no bona fide offering of goods or services nor has made a legitimate noncommercial or fair use of the domain names. Policy  4(c)(i), (iii). The           Respondent has not developed the websites located at the domain names at issue. See Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO Mar. 14, 2000)           (holding that failure to provide a product or service or develop the site demonstrates that the respondent has no established rights or legitimate interests in the domain name). 

The panel finds that the Respondent has no rights or legitimate interests in the domain names at issue. 

Registration and Use in 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.

Since the Respondent was an independent contractor for the Complainant and had signed the aforementioned agreement, it is clear that the Respondent knew of the         Complainant's marks. The Respondent also violated the agreement with the Complainant by not giving the Complainant approval over the use of the marks in the domain names at issue. The Respondent registered the domain names to prevent the Complainant from expressing its marks in the corresponding domain names. Policy 4(b)(ii). 

The Respondent has made no use of the domain names at issue. Passive holding of a domain name for a period of time is evidence of bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith").

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, "STATEFAIROFTEXAS.COM" and "TEXASSTATEFAIR.COM" be transferred from the Respondent to the Complainant.

James A. Carmody, Judge (Ret.),
Panelist