P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com
PUEBLO INTERNATIONAL, INC.
COMPLAINANT,
Vs.
VCV INTERNET/VIRTUAL CITY
VISION, INC.
RESPONDENT.
DECISION
Forum File No.: FA0003000094337
The above entitled matter came on for an administrative
hearing on April 27, 2000 before the undersigned on the Complaint
of
Pueblo International, hereafter "Complainant", against VCV Internet/Virtual
City Vision, Inc., hereafter
"Respondent". Complainant was represented
by: Carlos A. Romero, Jr. 3195 Ponce De Leon Blvd., Suite 400, Coral
Gables, FL. 33134. Respondent by: Mark S. Gober, 913 Plantation Boulevard,
Fairhope, AL. 36532. Upon the written submitted
record, the following
DECISION is made:
PROCEDURAL FINDINGS
Domain Name: pueblo.net
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: VCV Internet (PUEBLO.NET)
Date of Domain Name Registration: October 26, 1997 (Placed
on "Hold" on August 14, 1998)
Date of Complaint Filed: March 22, 2000
Date of Commencement of the Administrative Proceeding
in Accordance with Rule 2(a) and Rule 4(c): February 3, 2000
Due Date for a Response: March 22, 2000
After reviewing the Complaint, and determining it to
be in administrative compliance, the National Arbitration Forum (The
Forum) forwarded the Complaint to the Respondent on March 23, 2000 in
compliance with Rule 2(a), and the administrative
proceeding was commenced
pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately
notified
Networks Solutions, Inc., the Internet Corporation for Assigned
Names and Numbers (ICANN), and the Complainant that the
administrative
proceeding had commenced.
On October 26, 1997 and December 14, 1998, Respondent
registered the domain name "pueblo.net" with Network Solutions,
Inc.,
the entity that is the Registrar of the domain name. On March 23, 2000,
Network Solutions, Inc. verified
that Respondent is the Registrant for
the domain name "pueblo.net", and that further by registering its domain
name with Network Solutions, Inc., Respondent agreed to resolve any
dispute regarding its domain name through ICANN's
Rules for Uniform
Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute
Resolution Policy.
FINDINGS OF FACT
- The domain name "pueblo.net" is identical to the service mark
PUEBLO of Complainant registered with the United States
Patent and
Trademark Office on September 3, 1996, Registration No. 1,997,786,
in Class 42 for super
markets and retail grocery services. At least
since 1955, the mark has been used in commerce.
- Complainant's primary business is in the super market/grocery
store business and which they have expanded use of the
service mark
to marketing pre-paid phone cards, cellular phones, movie videos,
and PUEBLO private label
food products offered for sale nationwide.
- Respondent's business provides third parties an array of internet
services under the VCV names (and similar variations
as evidenced
by its letterhead and web page, under the names VCV, VCV Internet,
or Virtual City Visions).
These services include internet access,
space rental, internet service provider (*ISP*) set up, web page
design, and "virtual cities". A virtual city is created by transferring
to a third party exclusive ownership
rights to a preregistered domain
name, coupled with internet access, ISP set up, user accounts, and
related internet services offered in one global package.
- Respondent has registered over forty (40) domain names; of these
twenty eight (28) are still inactive as evidenced
by the message
"page cannot be found" in response to any attempt to access a web
page for the relevant
domain name. Ten (10) domain names are active,
but are used by third parties in connection with promoting their
(not Respondent's) business. The other domain names have either
web pages under construction or are in
limbo.
- During the relevant time, Respondent advertised nationally in
the Internet as follows:
Your virtual city can be your-city-name.net,
or your-city-name. vcv.com and you can offer our
complete line of internet services…
Take this scenario… Imagine the leverage of spending only
$50.00/month and have the effect of $50,000.00/month
of national advertising.
-
Respondent has engaged in a clear pattern of conduct
of trafficking for gain preregistered domain names, as if they
were
inventory items for sale, to a future transferee to promote unknown
goods and services. Until
a party appears, the registered names
(including pueblo.net) sit idly without use for any purpose other
than for resale, are not used to promote the sale of any goods or
services of anyone, and are not associated
with any ongoing business
or goodwill. If and when a transferee appears, then upon receipt
of profitable
consideration, Respondent will transfer the naked
domain name without any related goodwill or existing business. The
"pueblo.net" domain name was the "good" being sold/transferred by
Respondent.
-
Prior to this dispute, Respondent never used the
domain name or a corresponding name in connection with a bona fide
offering of its goods and services. Instead, the pueblo.net domain
name was the "good" being sold by
Respondent.
-
Complainant's prayer for relief requests that the
domain name be transferred from Respondent VCV Internet (PUEBLO.NET)
to Complainant Pueblo International, Inc.
CONCLUSIONS
The undersigned certifies that he has acted independently
and has no known conflict of interest to serve as the Arbitrator
in
this proceeding. Having been duly selected, and being impartial, the
undersigned makes the following conclusions:
- The domain name "pueblo.net" is identical to Complainant's service
mark in use since at least 1955, except for the
".net" prefix.
- It is not possible for any trier of fact to enter into the mind
of a registrant at the time of registration to know
whether the
act of registration is bona fide and in compliance with policy and
rules governing registration
of domain names, or one of bad faith.
Circumstances of conduct by registrant, is reliable evidence for
a trier of fact to make a binding determination. Respondent's conduct
clearly establishes the primary purpose
in acquiring the rights
to the domain name "pueblo.net" was for resale at a future date,
for a profit
exceeding his out-of-pocket expenses incurred directly
related to the domain name. Respondent has established no right
or legitimate interest in respect of the domain name "pueblo.net".
- Respondent in registering over forty (40) domain names and offering
them to third parties for the exclusive use to
offer their (not
Respondent's) goods or services for a one time fee of $2500.00 or,
a monthly fee of
$50.00, is sufficient and reliable evidence to
establish Respondent's bad faith at the time of registration and
continued bad faith by Respondent in sitting on this (and these)
domain name(s) until a transfer to a
third party could be transacted.
Complainant has been denied the rightful use of said domain name.
Circumstances of Respondent's conduct clearly establishes that there
never was any intention to use the domain name
legitimately. Respondent
conducts all its business under its VCV names and has not promoted
any goods
or services under the domain name "pueblo.net". Respondent's
only goal is to profit by transferring the naked domain
name "pueblo.net"
to a third party. The domain name "pueblo.net" has been registered
and is being used
in bad faith.
DECISION
Based upon the above findings and conclusions, and pursuant
to Rule 4(i), is decided as follows:
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME pueblo.net
REGISTERED BY RESPONDENT VCV Internet (PUEBLO.NET) TRANSFERRED
TO COMPLAINANT
Pueblo International, Inc.
Dated April 27, 2000 by _____________________________________
Judge Harold Kalina (Ret.)
Arbitrator
