DECISION

 

David Brown and Geralyn Brown d/b/a Mobility Transportation Services v. Michael Sarrault d/b/a SMG Inc.

Claim Number: FA0108000099584

 

PARTIES

The Complainants are David Brown and Geralyn Brown d/b/a Mobility Transportation Services, Canton, MI (“Complainants”).  The Respondent is Michael Sarrault d/b/a SMG Inc., Oklahoma City, OK (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

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

 

PANEL

The undersigned, Richard DiSalle, 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.

 

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 27, 2001; the Forum received a hard copy of the Complaint on August 27, 2001.

 

On August 29, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <mobilitytrans.com> is registered with Network Solutions and that the 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 August 30, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 19, 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@mobilitytrans.com by e-mail.

 

A timely response was received and determined to be complete on September 18, 2001.

 

The Forum received a timely Additional Response from Complainants on September 25, 2001.

 

On  October 3, 2001, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Richard DiSalle as Panelist.

 

RELIEF SOUGHT

The Complainants request that the domain name be transferred from Respondent to Complainants.

 

PARTIES’ CONTENTIONS

A.  Complainants

Mobility Transportation Services has been using MOBILITY TRANSPORTATION SERVICES in connection with providing commercial wheelchair and commercial passenger vans to customers since its September 1993 incorporation in Michigan.  The abbreviated version of MOBILITYTRANS has been used for communication with customers since February 4, 1997.  The domain name was registered to be used for a website being developed for Mobility Transportation Services and its distributors.  An application has been made for U.S. trademarks for Mobility Transportation Services, Mobilitytrans and associated logo.

 

In May of 2000 when Mr. Sarrault and SMG Inc. registered the domain name <mobilitytrans.com>, they were the distributors for Mobility Transportation Services.  The domain name <mobilitytrans.com> was chosen after consultation with David Brown of Mobility Transportation Services.  It was chosen because of its long-standing use as the e‑mail address of Mobility Transportation Services and the established customer association with Mobility Transportation Services.  Mr. Sarrault and SMG Inc. did not disclose to Mobility Transportation Services that SMG and Mr. Sarrault would be the registered owner of the domain name <mobilitytrans.com>.

 

Mr. Sarrault and SMG Inc to date have made no commercial or noncommercial use of the domain name; were engaged by Mobility Transportation Services as a Distributor until their sudden resignation as such on October 15, 2000; and have made no attempt to use the domain name and could only use it in the future to mislead or divert customers.  Since Mr. Sarrault and SMG Inc. have never made any use of the domain name <mobilitytrans.com>, their intention is clearly to disrupt the business of a Competitor.

 

B.  Respondent

Prior to registering the domain name <mobilitytrans.com> Mr. Sarrault discussed with Mr. Brown about acquiring a domain name and having a website designed.  Mr. Brown did not see the need for either one.  As a representative of SMG Inc., Mr. Sarrault searched for a domain name that best fit SMG Inc.  Mr. Sarrault tried to acquire mobilitytransportation.com and mobility.com but both names were already taken.  After further research <mobilitytrans.com> was found available.  Mr. and Mrs. Brown were informed about the domain name <mobilitytrans.com> and the web mail, so they could set up mailboxes for themselves and their employees.  They showed no interest in doing so.

 

In June of 2001, prior to this dispute, SMG Inc. hired a company to design a website for them.  The site is still under construction and is continually being worked on.  Also, Mr. Sarrault used the web mail michaelsarrault@mobilitytrans.com, which was printed on his business cards for electronic correspondence with customers and suppliers.

 

On October 15, 2000, SMG Inc. d/b/a Mobility Transportation Services terminated business relations with Mr. Brown and Mobility Transportation Services (MTS).  SMG Inc. was not a distributor for MTS, but was an independent company working with Mr. Brown and MTS to build two independently owned and operated companies sharing similar product lines.  SMG Inc. did not sell or distribute any of MTS products.

 

SMG Inc. had no intention of selling the domain name prior to being contacted by Mr. Brown.  Mr. Brown’s fax to SMG Inc. was taken as a demand to transfer the domain name to Mobility Transportation Services for out-of-pocket expense.  Mr. Sarrault notified Mr. Brown that he would have to think over whether he wanted to sell the domain name, saying, “If I decided to sell I would have to determine a price.”  The domain name had been given to customers and suppliers and was not registered for the purpose of disrupting the business of a competitor.

 

C.   Complainants' Additional Submission

Mr. Brown chose the domain name <mobilitytrans.com> for use by MTS and its distributors.  Mr. Sarrault offered to register the domain name but did not disclose that he would register it to SMG Inc.  In the 16 months since the registration of the mobilitytrans domain name, Mr. Sarrault has made no use of it.  He chose to establish a website and e‑mail under his current company name, mobilityconnections.

 

As evidence that SMG Inc. was a distributor of products supplied by MTS, Complainants offer the following:  (1) nine paid invoices for products purchased from MTS by SMG Inc. while an active distributor for MTS, many on SMG Inc./MTS — Oklahoma letterhead; (2) two lists (generated by Mr. Sarrault) outlining items received from MTS by SMG on credit at the start of their distributorship and his payment history on the account; and (3) an invoice from the Braun wheelchair lift company showing one of the many shipments to Oklahoma billed to MTS’s account.

 

In 1998, Mr. Sarrault approached Mr. Brown and requested to establish a franchise of MTS in Oklahoma.  As franchise laws are detailed and complex, Mr. Sarrault was granted a distributorship instead.  He received extensive training in MTS sales, prospecting and service methods, was made a small loan of start-up capital and was allowed to use MTS’s credit lines with suppliers.  He was encouraged to establish his own accounts with MTS suppliers.  All this was done on a handshake and Mr. Sarrault’s word that he would pay MTS a small percentage (2‑3%) of his profits, when he became profitable.

 

FINDINGS

(1)        The domain name registered by the Respondent is confusingly similar to a trademark or service mark in which the Complainants have 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.

 

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 Complainants 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 confusingly similar to a trademark or service mark in which the Complainants have 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.

 

It appears that the main issues are under ICANN Policy ¶ 4(a)(i) “confusing similarity,” Policy ¶ 4(a)(ii) “no rights or legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith.” 

 

Identical or Confusingly Similar  Policy ¶ 4(a)(i).

Complainants contend that the disputed domain name is identical to its MOBILITY TRANSPORTATION SERVICES mark.  Complainants further contend that they have rights in the mark based on their pending United States service mark application.  See Phone-N-Phone Serv. (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-0040 (WIPO Mar. 23, 2000) (finding that the domain name was identical or confusingly similar to the complainant’s pending service mark application); see also SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the Complainants' trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).

 

The disputed domain name is confusingly similar, as the domain name is mostly comprised of a generally accepted abbreviation for Complainants' service mark.  See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated).

 

Rights and Legitimate Interests   Policy ¶ 4(a)(ii).

Respondent is not commonly known by the disputed domain name, but is doing business under the name “Mobility Connections.”  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); see also 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).

 

Respondent’s passive holding of the disputed domain name is evidence that it has no rights or legitimate interests in respect to 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 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).

 

After reviewing Complainants' additional submission, it is clear that Respondent was a distributor of Complainant when the name was registered.  This evidences Respondent’s lack of rights or legitimate interests in respect to the disputed domain name.  By analogy, cases holding that a former employee does not have rights or legitimate interests in a former employer’s mark are persuasive.  See Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000)   (finding that as a former employee, Respondent knew or should have known Complainant’s mark was in use as an integral part of the corporate name and as a trademark…the Respondent understood the legitimate interests and rights of Complainant and, by contrast, its own lack of interest or right…this is sufficient for Complainant to establish that Respondent had no rights or interest in the domain name).

 

Registration and Use in Bad Faith   Policy ¶ 4(a)(iii).

Respondent’s passive holding of the disputed domain name supports a finding of bad faith pursuant to Policy ¶ 4(a)(iii).  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).

 

Respondent’s registration and passive holding of the disputed domain name also constitutes bad faith because Respondent has registered a domain name confusingly similar to Complainants' mark primarily to disrupt the business of Complainants’, competitors of Respondent.  See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

 

Furthermore, the fact that Respondent was formerly a distributor of Complainants’ supports a finding that Respondent’s registration and passive holding of the disputed domain name was in bad faith.  By analogy, cases holding that a former employee does not have rights or legitimate interests in a former employer’s mark are persuasive.  See Labrada Bodybuilding Nutrition, Inc. v. Garrett, FA 94293 (Nat. Arb. Forum Apr. 27, 2000) (finding bad faith where Respondent registered the domain names six months after Respondent’s distributor agreement with Complainant was terminated).

 

Respondent’s offer to sell the disputed domain name to Complainants further supports a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith)

 

As noted, Complainants, in their Additional Submission, refute Respondent’s contention that Respondent was not engaged in a distributor relationship with Complainants.

 

DECISION

The domain name  <mobilitytrans.com> shall be transferred to David Brown and Geralyn Brown d/b/a Mobility Transportation Services.

 

 

Richard DiSalle, Panelist

 

Dated:  October 16, 2001