DECISION

Beemer Precision, Inc. v. Richard Whittaker

Claim Number: FA0106000097386

PARTIES

The Complainant is Beemer Precision, Inc., Fort Washington, PA, USA (“Complainant”) represented by Bruce Alan Herald.  The Respondent is Richard Whittaker, Miami, FL, USA (“Respondent”) represented by Jurgen Leister.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are "excelite.com," "excelite.net," and "excelite.org" registered with Network Solutions.

PANEL

The undersigned 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.

Panelist is Judge Karl V. Fink (Retired).

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on June 7, 2001; the Forum received a hard copy of the Complaint on June 11, 2001.

On June 12, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names "excelite.com," "excelite.net," and "excelite.org" are 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 June 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 2, 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@excelite.com, postmaster@excelite.net, and postmaster@excelite.org by e-mail.

A timely response was received on July 2, 2001.  This response was not determined complete, as it did not comport with all of the requirements set forth in Rule 5.  Specifically, the response did not state that a copy of the response was transmitted to Complainant, and the response did not conclude with the official certification statement.

On July 6, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Retired) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Beemer is the owner of the incontestable U.S. Trademark “Excelite”, a mark designating Beemer’s brand of lubricant impregnated bearings. Beemer uses its trademark “Excelite” extensively in its business, including but not limited to advertising in Beemer’s website and in Beemer’s catalogue.

Beemer is a long established company that is well known in the bearing business. Beemer’s customers, prospective customers and others in the bearing industry identify certain of Beemer’s products as “Excelite” bearings.

Beemer owns common-law rights in the mark by virtue of Beemer’s use of the mark in commerce.

The domain names registered by Whittaker are identical or confusingly similar to Beemer’s trademark. Each of the domain names is identical to Beemer’s trademark with the addition of the .com, .net, and .org extensions, respectively.

Whittaker has no rights or legitimate interests in the domain names. Whittaker neither owns any business nor does any business under the name “Excelite”.  Prior to and after Beemer’s notice of infringement to Whittaker, Whittaker has made no use of the domain names in connection with any offering of goods or services.  Whittaker has not been and is not known by any of the domain names.

Whittaker has not and is not making any legitimate noncommercial or fair use of the domain names.

Whittaker registered and is using the domain names in bad faith. Whittaker registered all three names on December 22, 1999. For roughly one year Whittaker made no use whatsoever of the domain names.

Whittaker still makes no use of the domain names excelite.net and excelite.org, other than to park the names and prevent other legitimate owners of rights in the name “Excelite” from using the domains.

In late 2000 or early 2001 Whittaker erected a webpage under the domain name excelite.com that displayed nothing more than the word “Excelite” and a picture of a light bulb.

Currently, Whittaker is making no use of the excelite.com domain name other than to park the name and prevent Beemer from using its trademark. At this time, neither Whittaker’s “light bulb” page nor any other “excelite.com” page is available on the Internet.

Whittaker has no legitimate interest in any domain name using the term “Excelite” and Whittaker has registered such names for the purpose of parking the names and preventing other legitimate users such as Beemer from registration.

B. Respondent

Mr. Whittaker has registered the domain name “Excelite” for “Excelite GmbH”.

Respondent enclosed a copy of the “Handelssregisterauszug” concerning “Excelite GmbH”.

Excelite GmbH also registered trademarks in Germany, Italy, Austria, Ireland and other European countries.

FINDINGS

For the reasons set forth below, the Panel finds the Complainant has proven the elements to have the domain names transferred.

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 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.

Identical and/or Confusingly Similar

Complainant submitted proof of trademark ownership in the United States for the EXCELITE mark.  Complainant first filed for trademark protection in 1992.  See Banco Mercantil del Norte, S.A., v. Servicios de Comunicación En Linea, D2000-1215 (WIPO Nov. 23, 2000) (finding that Complainant has rights in the mark because of the Complainant’s first use of the mark where Respondent filed for a trademark registration of the same mark but under a different class).

The domain names at issue are identical to the EXCELITE mark.  See Little Six, Inc., v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that the <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark).

Complainant has proven this element.

Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the domain name.

Respondent neither owns any business nor does any business under the name “Excelite.”

Prior to and after Complainant’s notice of infringement, Respondent has made no use of the domain names in connection with any goods or services.  Policy ¶ 4(c)(i).  See Ziegenfelder Co. v. VMH Enterprises, Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name); Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

Respondent is not commonly known by the EXCELITE mark or the infringing domain names.  Policy ¶ 4(c)(ii).  See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).

Respondent’s use of any of the domain name does not constitute fair use and is not a legitimate noncommercial use.  Policy ¶ 4(c)(iii).

The incomplete response is not sufficient to refute the evidence favoring Complainant on this issue.

Complainant has proven this element.

Registration and Use in Bad Faith

Complainant claims Respondent has registered these domain names in order to prevent Complainant from reflecting its EXCELITE trademark in a domain name.  Complainant also claims that Respondent is a cybersquatter who owns several domain names that infringe upon others marks (rapigmbh.com, rapigmbh.net and raphigmbh.org, axisphotographic.com).  Policy ¶ 4(b)(ii) states “you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.”  See Australian Stock Exchange v. Community Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy paragraph 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses); Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).

The incomplete response does not address this issue.

Complainant has proven this element.

DECISION

The panel directs that the domain names excelite.com, excelite.net and execlite.org be transferred to Complainant.

Judge Karl V. Fink (Retired), Panelist

July 19, 2001