DECISION

 

Online Orders Network LLC v. Renown SC

Claim Number: FA0107000098242

 

PARTIES

The Complainant is Online Orders Network LLC, Chagrin Falls, OH (“Complainant”).  The Respondent is Renown SC, Colombo, LK (“Respondent”) represented by Zak Muscovitch of Neinstein & Associates.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <registername.com>, registered with Tucows.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on July 17, 2001; the Forum received a hard copy of the Complaint on July 19, 2001.

 

On July 26, 2001, Tucows confirmed by e-mail to the Forum that the domain name <registername.com> is registered with Tucows and that the Respondent is the current registrant of the name.  Tucows has verified that Respondent is bound by the Tucows 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 26, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 15, 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@registername.com by e-mail.

 

On August 20, 2001, a response was received (beyond the deadline of August 15).  Respondent, in an email to the Forum, contends that it had difficulty finding competent counsel, and was not informed of the actual deadline.  The Panel has discretion to consider a response in a matter, when it arrives past the deadline.  See Telstra Corp. Ltd. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight given to the lateness of the Response is solely in the discretion of the Panelist).  In order to provide each party a fair opportunity to present its case, Rule 10(b), the Panel considered the response herein despite its late filing.

 

On August 21, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name(s) be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant

1.      Complainant contends that the <registername.com> domain name is confusingly similar to its <registernames.com> domain name.

2.      Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name, because Respondent has made no use of the domain name other than to offer it for sale.      

3.      Complainant contends that Respondent’s offer to sell the disputed domain name constituted bad faith, pursuant to Policy ¶ 4(b)(i).

 

B. Respondent

1.      Respondent contends that the disputed domain name is inherently generic.

2.      Respondent contends that Complainant’s argument (essentially amounting to an allegation of passive holding) is unfounded.

3.      Respondent contends that its offer for sale was legitimate, and was not in bad faith.

 

FINDINGS

It is the finding of the Panel that the requested relief should be denied.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

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

The Panel finds that the disputed domain name is inherently generic, and that Complainant has failed to establish that it has rights in the REGISTER NAMES mark.  See CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that “concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website”); see also Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding that Respondent has rights and legitimate interests in the domain name where Complainant submitted insufficient evidence to establish either fame or strong secondary meaning in the mark such that consumers are likely to associate <cartoys.net> with the CAR TOYS mark).

 

Rights or Legitimate Interests

The Panel finds that Complainant’s argument (essentially amounting to an allegation of passive holding) is unfounded, as Respondent registered the domain name in April, only a few months before commencement of this proceeding.  See Mondich and Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (finding Respondent cannot be said to lack a bona fide intent to use the domain name when only 10 months have passed since registration); see also Casual Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum Aug. 7, 2000) (finding that Respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the Complaint.  Only after a two-year period of nonuse is there an inference of a lack of bona fide intent to use the name).

 

Registration and Use in Bad Faith

Considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy unless the domain name has been registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses.  Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000).  The Complainant has failed to so demonstrate based upon this record.

 

DECISION

The Panel finds for the Respondent, and the request for relief in the Complaint is hereby denied.

 

 

John J. Upchurch, Panelist

 

Dated:  August 31, 2001