Generic Top Level Domain Name (gTLD) Decisions

Mackie Industrial, Inc.
COMPLAINANT,

vs.

Vanilla Limited
RESPONDENT.

DECISION
FILE NO.: FA0004000094668

The above-entitled matter came on for an administrative hearing on June 13, 2000 before the undersigned arbitrator on the Complaint of Mackie Industrial, Inc., appearing by its counsel, Emmanuel A. Rivera, Esq., Weiss Jensen Ellis & Howard, 2600 Pike Tower, 520 Pike Street, Seattle WA 98101 (“Mackie” or "Complainant"), against Vanilla Limited, Attn: Cecilia Ng, PO Box 40547, Sharjah, United Arab Emirates ("Vanilla" or "Respondent") who did not submit a response or appear in any way in this proceeding.  Upon the written submitted record, including only the Complaint, the following DECISION is rendered:

PROCEDURAL FINDINGS

Trademark:  RCF; U.S. Patent and Trademark Office Reg. No. 1,662, 305, Registered October 29, 1991 (and      many non-U.S. registrations)

Domain Name: RCF.COM

Domain Name Registrar: Network Solutions

Domain Name Registrant: Vanilla Limited

Administrative Contact: Ng, Cecilia

Date of Domain Name Registration: July 23, 1997

Date Complaint Filed: May 2, 2000

Date of Commencement of the Administrative Proceeding in Accordance with Rule 2(a) and

Rule 4(c)': May 3, 2000

Due Date for Response: May 23, 2000.  No Response filed.

             After reviewing the Complaint, and determining it to be in administrative compliance, the

National Arbitration Forum ("Forum") forwarded the Complaint to the Respondent on May 3, 2000, in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c).   In compliance with Rule 4(d)^{[1], the Forum immediately notified Network Solutions that the administrative proceeding had commenced.  The Complaint was then docketed and forwarded to the undersigned arbitrator for decision.  Respondent did not submit a response to the Forum within twenty (20) days pursuant to Rule 5(a).}

FINDINGS OF FACT

1.   On May 4, 2000, Network Solutions confirmed that Respondent registered the domain name "RCF.COM" under the registrant name Vanilla Limited and reflected Cecilia Ng as the current Administrative Contact.  Network Solutions acknowledged the commencement of this administrative proceeding, that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and that the said domain name is on “active” status. Accordingly, Respondent agreed to resolve any dispute regarding its domain name registration pursuant to ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution Policy.  Neither the Complainant nor Respondent contests the jurisdiction of the Forum or the undersigned arbitrator to resolve this controversy.

2.       By virtue of the fact that there has been no appearance by Respondent, all reasonable inferences of fact in the allegations of the Complaint will be taken to be true.

3. Complainant Mackie is a corporation formerly known as Radio Cine Forniture R.C.F. North America Inc. and which controls the worldwide operations of Radio Cine Forniture (RCF).   Since 1949, Complainant has been in the business of producing, marketing and sale of audio electronic products such as audio speakers.

4. Complainant has duly registered “RCF” as a trademark for its products with the U.S. Patent and Trademark Office with a claimed date of first use of January, 1950 and holds Registration Number 1,662,305, registered on October 29, 1991.  In addition to U.S. registration, various forms of the “RCF” mark have been registered in several dozen countries for many years. 

5. As noted above, Respondent registered the domain name “RCF” on July 23, 1997.

6. Respondent’s website, http://www.rcf.com,  has, at all relevant times since the registration of the domain RCF.COM, been inactive for any purpose and has displayed only the message: “Welcome to the Future Website of rcf.com.”

7. Respondent, to the best knowledge of Complainant, has never been known as RCF. 

8. Respondent is warehousing numerous domain names, many with the “Welcome to the Future Website of ….”

9. Counsel for Complainant sent Respondent a “cease and desist” letter on March 5, 1999 and has not received a response.

10. Complainant seeks relief in the form of transferal of the domain RCF.COM to Complainant.

                                                                                                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 findings and conclusions:

1.      Respondent’s domain name "RCF.COM” is identical or deceptively similar to Complainant’s registered trademark “RCF.”  Paragraph 4.a.i. of the Policy.

2.      Complainant has valuable and legally protectable rights and legitimate interests in the mark:

   "RCF," and Respondent has none. Paragraph 4.a.ii. of the Policy.

3.     Respondent’s warehousing of dozens of domain names, especially including a widely registered trademark in this case, and its failure to respond to Complainant’s “cease and desist” letter, reflects that it has registered the domain name in question primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant or to a competitor of Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name. Accordingly, I find that Respondent has registered and used the domain name "RCF.COM" in bad faith. Paragraph 4.aiii. of the Policy. 

4.      I find that Complainant’s requested relief of transferal of the domain name “RCF.COM” from Respondent to Complainant is warranted based on the foregoing.  Paragraph 4.i. of the Policy.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy, it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "RCF.COM" REGISTERED BY RESPONDENT VANILLA LIMITED BE FORTHWITH TRANSFERRED TO COMPLAINANT MACKIE INDUSTRIAL, INC.

Signed this 13^th day of June 2000 by Judge James A. Carmody (Retired), arbitrator.