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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Internet Security Systems, Inc. v HLC Enterprises
Claim Number: FA0008000095493
PARTIES
The Complainant is Internet Security Systems, Inc., Atlanta, GA, USA ("Complainant"). The Respondent is HLC Enterprises, San Jose, CA, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are internetsecuritysystems.com and internetsecuritysystems.net registered with Registrars.com.
PANELIST
The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.
Louis E. Condon, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on August 28, 2000; The Forum received a hard copy of the Complaint on August 28, 2000.
On August 31, 2000, Registrars.com confirmed by e-mail to the Forum that the domain names internetsecuritysystems.com and internetsecuritysystems.net are registered with Registrars.com and that the Respondent is the current registrant of the name. Registrars.com has verified that Respondent is bound by the Registrars.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On September 6, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 26, 2000 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@internetsecuritysystems.com and postmaster@internetsecuritysystems.net.
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 October 2, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Louis E. Condon 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 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:
B. Respondent
Respondent did not reply to Complainant’s contentions.
FINDINGS
The Complainant specializes in developing software and services that provide security management for computer networks, including enabling person to monitor, detect, and respond to security irregularities in their networks. Complainant has been using the tradename "Internet Security Systems" to identify its goods and services since its incorporation in 1994.
The Respondent has made no use of the domain names in question. The websites for these domain names indicate that the websites are "under construction."
The Complainant first learned of the Respondent’s registration of the domain names when its website director saw them for sale on the e-bay site in January 2000. The domain names were offered for sale at a price of $500,000.
The Complainant made many attempts to contact the Respondent via email, mail, and telephone; however, the Respondent never returned the Complainant’s messages.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be canceled 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.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint. Rules ¶ 14.a. Certain factual conclusions may be drawn by the Panel on the basis of Complainant’s undisputed representations. Rules ¶ 15.a.
Identical and/or Confusingly Similar
The Complainant has common law rights in its tradename "Internet Security Systems." The Complainant has been using this tradename to identify its company, products, and services since its incorporation in 1994. The Complainant uses its tradename to identify itself in company brochures and on its website <iss.net>. Due to the Complainant’s consistent use of its tradename, the tradename has obtained sufficient secondary association with the Complainant that common law rights exist. See Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the Complainant has common law rights in the mark "fishtech" which it has used since 1982); Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name "Julia Roberts" has sufficient secondary association with the Complainant that common law trademark rights exist).
Having found that the Complainant has rights in the mark, the Panel determines that the Respondent’s domain names are identical to the Complainant’s mark. See ViewSonic Corp. v. Informer Assoc. Inc., D2000-0852 (WIPO Sept. 6, 2000) (finding that the domain names "viewsonic.net" and "viewsonic.org" are identical to the Complainant’s mark).
Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the domain names in question. The Respondent has not denied this assertion.
The Panel is unaware of any business operated by the Respondent under the name "Internet Security Systems." Rather, it is presumed that the Respondent is commonly known by the name it used to registered the domain names, HLC Enterprises. Policy ¶ 4.c.(ii). The Respondent also had made no visible use of the domain names since the domain names simply resolve to a page that is "Under Construction." Therefore, the Panel determines that the Respondent has made no bona fide or legitimate commercial or noncommercial use of the domain names. Policy ¶ 4.c.(i), (iii). See CBS Broadcasting Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (finding no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name "ilovelucy.com").
Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the domain names.
Registration and Use in Bad Faith
The Complainant contends that the Respondent has registered the domain names in order to offer them for sale on the e-bay auction site. Registering domain names in order to sell them for valuable consideration in excess of out of pocket costs is evidence of bad faith within the ICANN provisions. Policy ¶ 4.b.(i). See World Wrestling Fed. Entertainment, Inc. v. Bosman, D0099-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs). In addition, the Respondent has made no use of the domain names. See Educational Testing Service v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith). Based on the above, the Panel determines 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, "INTERNETSECURITYSYSTEMS.COM" and "INTERNETSECURITYSYSTEMS.NET" be transferred from the Respondent to the Complainant.
Louis E. Condon, panelist
Dated: October 11, 2000
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URL: http://www.worldlii.org/int/other/GENDND/2000/1249.html