DECISION

Benefits Technologies, Inc. d/b/a Benefit America v. IMedia, Inc.

Claim Number: FA0107000098436

PARTIES

The Complainant is Benefits Technologies, Inc. dba BenefitAmerica, Mountain View, CA (“Complainant”) represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.  The Respondent is IMedia, Inc., Morristown, NJ (“Respondent”) represented by Eric J. Goldring, of Goldring & Goldring, P.A.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <employeelife.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on July 30, 2001; the Forum received a hard copy of the Complaint on July 31, 2001.

On August 1, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <employeelife.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 August 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 21, 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@employeelife.com by e-mail.  The deadline was later extended to August 31, 2001.

The Forum received the Response on September 4, 2001, past the extended deadline of August 31, 2001.  The Panel has considered the Response submitted by Respondent, dated August 31, 2001, but not received by the Forum until September 4, 2001, the first business day after the Labor Day weekend.

The Complainant filed a timely Additional Submission on September 10, 2001.

The Surreply submitted by Respondent on September 14, 2001, however, does not comply with Supplemental Rule 7, and was not considered by the Panel.

On September 10, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it purchased essentially all the assets of EmployeeLife.com, Inc. including the trademark EmployeeLife.com.  Prior to the purchase, EmployeeLife.com, Inc.’s predecessor, PointMent, Inc., hired Respondent to provide various marketing services, including the establishment of domain names and trademarks.  Subsequently a dispute arose between PointMent and Respondent, which resulted in Respondent disabling the domain name EmployeeLife.com, which it had registered for PointMent.  Respondent does not itself use the mark at all.

B. Respondent

Respondent contends that it is the owner of the domain name EmployeeLife.com, because it created the name and was not paid in full for services rendered to PointMent. 

C. Additional Submissions

Complainant’s Reply to the Response argued that the leveraging of the domain name for payment does not demonstrate a legitimate right in the name.

FINDINGS

The Panel finds that all three of the requirements for the transfer of a domain name have been met by Complainant.

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

The domain name registered by Respondent is identical to a trademark or service mark in which Complainant has rights, by virtue of its commercial use of the mark.

Rights or Legitimate Interests

Respondent has no legitimate rights or interests in the domain name.  While Respondent may have other rights in relation to Complainant or its predecessor, it cannot claim rights in a domain name that it has never used and never intended to use.  Specifically, advertising agencies and other agents acting on behalf of a client have been deemed not to own domain names or trademarks registered for the client’s use.  See Fishtech, Inc. v. Rossiter  FA 92976 (Nat. Arb. Forum Mar. 10, 2000); Kinko’s Inc. v. eToll, Inc. FA 94447 (Nat. Arb. Forum May 27, 2001); Invisible, Inc. v. National Broadcasting Co., 212 USPQ 576 (C.D. Cal. 1980).

Registration and Use in Bad Faith

Respondent acted in bad faith in that it deprived Complainant of the use of the domain name, purposely disrupting Complainant’s business, in retaliation for perceived wrongful acts by Complainant and others against Respondent.  Trademarks and domain names cannot be held hostage by a mere registering agent as leverage in other disputes having nothing to do with USE of the name as an indicator of source.

DECISION

The domain name EmployeeLife.com shall be transferred to Complainant.

Sandra Franklin, Panelist

Dated: September 24, 2001

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