DECISION

 

USDrive Technology Corporation v. Carl J. Rischar

Claim Number: FA0106000097762

 

PARTIES

Complainant is USDrive Technology Corporation, Fremont, CA, USA (“Complainant”) represented by Irwin Yuen.  Respondent is Carl J. Rischar, Davie, FL, USA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cyberdrive.com> registered with Network Solutions.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 29, 2001; the Forum received a hard copy of the Complaint on June 29, 2001.

 

On July 3, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <cyberdrive.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 July 3, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 2001 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@cyberdrive.com by e-mail.

 

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 25, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “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 Respondent.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

The <cyberdrive.com> domain name is confusingly similar to Complainant’s federally registered trademark.

 

Respondent has no rights or legitimate interests in the <cyberdrive.com> domain name.

 

Respondent registered and used the <cyberdrive.com> domain name in bad faith.

 

B. Respondent

No response was received.

 

FINDINGS

Since August 1996, Complainant has used its CYBERDRIVE mark in connection with the manufacture and sale of computer peripherals; mainly CD-ROM drives for personal computers.  On September 15, 1997, Complainant filed for registration of the CYBERDRIVE mark with the United States Patent and Trademark Office (USPTO).  Registration of the CYBERDRIVE trademark was granted on June 1, 1999 as Registration No. 2,271,460. 

 

Complainant has expended millions of dollars promoting its CYBERDRIVE mark in several countries.  During its busiest months, Complainant manufacture’s 800,000 to 1,200,000 CD-ROM drives per month, employing 6000-8000 employees at any given time.  Furthermore, Complainant is ranked the sixth largest manufacturer of CD-ROM drives in the world.

 

Respondent registered the <cyberdrive.com> domain name on December 9, 1996.  Respondent has not made any use of the disputed domain name since its registration.  After Complainant contacted Respondent regarding transfer of the disputed domain name, Respondent offered to sell the domain name to Complainant for $12,000 plus “fees.”  Respondent, in its correspondence with Complainant, alleged that its offer to sell the domain name was based on the fact that Respondent had invested money in server hardware for the disputed domain name.

 

DISCUSSION

Paragraph 15(a) of 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.”

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

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

Complainant, through its registration and use, has established that it has rights in the CYBERDRIVE mark.  Furthermore, because the <cyberdrive.com> domain name incorporates Complainant’s CYBERDRIVE mark in its entirety, the disputed domain name is identical to Complainant’s mark.  See Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent has failed to come forward to demonstrate it has rights or legitimate interests in the <cyberdrive.com> domain name.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”). 

 

Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to a disputed domain name where Respondent fails to submit a response.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

 

Respondent’s offer to sell the dispute domain name for $12,000 to Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

 

Respondent’s passive holding of the disputed domain name fails to demonstrate that it has rights or legitimate interests in the disputed domain name.  See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).

 

There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the <cyberdrive.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

 

Furthermore, there is no evidence that demonstrates Respondent is making a legitimate noncommercial, or fair use of the <cyberdrive.com> domain name pursuant to Policy ¶ 4(c)(iii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

 

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names, and that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent’s offer to sell the disputed domain name for $12,000 plus “fees” supports a finding of bad faith pursuant to Policy ¶ 4(b)(i).  See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”).

 

The Panel is not convinced, and Respondent has not come forward to support its contention made to Complainant before the proceeding was commenced, that Respondent invested substantial sums of money in server hardware for the disputed domain name, which may warrant such an  exorbitant offer for sale.  In fact, no Website has ever been developed at the disputed domain name, and Respondent has been engaged in the disputed domain name’s passive holding.

 

Furthermore, Respondent’s passive holding of the disputed domain name supports a finding of bad faith.  See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

 

Accordingly, it is Ordered that the <cyberdrive.com> domain name be transferred from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: July 27, 2001