Generic Top Level Domain Name (gTLD) Decisions

The domain names at issue are "paedia.net" and "paedia.org" registered with Bulk Register.

The undersigned 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.

Honorable Paul A. Dorf (Ret.) as Panelist.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

The Complainant contends that the Respondent’s registration of the domain name that is the subject of this Complaint is identical to a trademark in which the Complainant has rights and said domain name is identical or confusingly similar to Complainant’s trademark. Also, Complainant contends that Respondent has no rights or legitimate interests in the domain name and that the domain name was registered in bad faith.

B. Respondent

The Respondent contends that as the Complainaint's trademark is a styllized one, the domain names are not identical or confusing, that they have rights and a legitimate interest in the domain names and that they did not register the domain name in bad faith.

The Complainant is in the business of distributing computer software for use in the field of science, printed circuit boards, alarming and intrusion detection devices, kitchen appliances, automobile accessory equipment and entertainment equipment.

The Respondent is in the business of maintaining web sites that provide information to the general public on a variety of topics. These web sites are designed to be encyclopaedic in their content. The domain names used by the Respondent all contain the suffix "pedia." It was the Respondent's desire to set up a "clearinghouse" web site using either of the domain names that are the subject of this Complaint.

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 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.

The root of each of these domain names are identical to the Complainant’s trademark "Paedia" with the exception of the unique sylized combination of the letters "ae" in "Paedia". It is not unreasonable for anyone looking for the Complaiaint's web site to assume that these domain names are linked to the Complianant's company. See BSA v. Hilding, D2000-0320 (WIPO June 13, 2000) (finding that the domain name <president.com> is identical to the Complainant’s mark PRÉSIDENT because the domain name is the only way to express the mark)

Paedia Corporation is the name of the Complainant's business. The trademark "Paedia" is unusual, unique and arbitrary. The Complainant intends to continue to invent, market and manufacture or have manufactured the widest possible range of products to be sold under its mark. The Complainant has used this mark in domestic and international commerce for more than 11 years, which precedes the Respondent's registration of the domain names. Also, there is no evidence that the Respondent has never been known by the name "Paedia" in business or commerce. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (holding that the Respondent has no rights or legitimate interests where Complainant’s prior rights in the domain name precede Respondent’s Registration and Respondent is not commonly known by the domain name in question)

A reasonable assumption would be that the Respondent was aware of the Complainant's domain name "paedia.com" as they would have attempted to register the name with the suffix ".com" if it was available. The Respondent makes the argument that the word "paedia" is a common English word of Greek origin meaning "knowledge" and attached as an exhibit a page from the Oxford English Dictionary. However, the spelling of this word differs from the spelling of Complianant's mark "Paedia", which reinforces Complainaint's position that their mark is unique, and could cause confusion among consumers seeking the Complainant's web site. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website). In addition, the Respondent has not developed the web sites since their registration, which was more than three months ago. 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").

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain names "PAEDIA.NET" and "PAEDIA.ORG" be transferred from the Respondent to the Complainant.