Generic Top Level Domain Name (gTLD) Decisions

The Complainant is HyperGalaxy, Inc. , Schaumburg, IL, USA ("Complainant") represented by Todd G. Vare, Barnes & Thornburg. The Respondent is Doug Sooley DBA CG Designs, Ramona, CA, USA ("Respondent").

The domain name at issue is hypergalaxy.net, registered with Register.com.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as a panelist in this proceeding.

Judge Karl V. Fink (retired) is Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on November 30, 2000; the Forum received a hard copy of the Complaint on November 30, 2000.

On December 3, 2000, Register.com confirmed by e-mail to the Forum that the domain name hypergalaxy.net is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 14, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 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 Respondentís registration as technical, administrative, and billing contacts, and to postmaster@hypergalaxy.net by e-mail.

Respondent submitted a timely response and Complainant submitted a reply to the response. All submissions by the parties have been considered by the panel.

On December 28, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Judge Karl V. Fink (Retired) as Panelist.

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

A. Complainant

On November 28, 1998, Mr. Airola registered the domain name HYPERGALAXY.COM.

Since December 1998, HyperGalaxy has been engaged in the business of providing Internet or World Wide Web development and consulting services, including expert embedded/DSP development, Web development, Web usability, and Web business consulting services.

HyperGalaxy has acquired common law trademark rights to the mark, HYPERGALAXY, as used in connection with its business activities beginning as early as December 1998. The mark HYPERGALAXY is highly fanciful or arbitrary - that is, when used with the goods or services of Complainant, the mark HYPERGALAXY neither suggests nor describes any ingredient, quality, or characteristic of those goods or services.

HyperGalaxy accrued property rights in its name and mark, HYPERGALAXY, from the first use in commerce.

Once the hypergalaxy.com web site went "live", in or around August 1999, Mr. Airola began serving clients through HyperGalaxy.

The use of HYPERGALAXY as a trade name or business name since December 1998, through 1999, and to the present day, establishes prior use of the mark HYPERGALAXY in commerce well before the Respondent registered the subject domain HYPERGALAXY.NET on February 18, 2000.

On November 15, 2000, HyperGalaxy, Inc. filed a service mark on the Principal Register for the mark HYPERGALAXY.

In late 1999, Mr. Airola began discussions with the Respondent relating to the possibility of forming a limited liability company to continue the business of HyperGalaxy.

Neither Mr. Airola nor any other representative or agent of HyperGalaxy ever granted any rights to the Respondent with respect to the name "HyperGalaxy" or any associated trademark rights to the name "HyperGalaxy".

Respondentís registration and use of HYPERGALAXY.NET is unlawful and in bad faith under trademark laws and under the ICANN Uniform Domain Name Dispute Resolution Policy.

Respondent has no rights or legitimate interests in the mark HYPERGALAXY or the domain name HYPERGALAXY.COM under Paragraph 4(a)(ii) of the Policy. Much of Respondents web site, at one point or another, has contained content nearly identical to the Complainantís web site. Some portions of Respondentís web site have been copied verbatim from Complainantís web site.

Respondent registered and use the domain name HYPERGALAXY.NET primarily for the purpose of disrupting the business of HYPERGALAXY.COM and to intentionally attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Complainantís business, the name and mark HYPERGALAXY, and the web site www.hypergalaxy.com.

Complainant, by and through its attorney, notified Respondent by letter dated October 26, 2000, that Respondentís activities relating to its web site and business operations constituted actionable trademark infringement among other things. Complainant demanded that Respondent immediately cease and desist using the HyperGalaxy name, logo, and other plagiarized content from Complainantís web site. Respondent refused to comply with Complainantís request.

B. Respondent

We have numerous e-mails from Mr. Airola stating his continued support and blessing of the HyerGalaxy.net venture.

Mr. Airola was one of a dozen original people involved in the early conceptualization of the business now known as HyperGalaxy Business Solutions, Inc. On March 9, 2000, Mr. Airola stated that he was no longer interested in being a part of HyperGalaxy Business Solutions, Inc.

On July 25, 2000, in an effort to finalize our dealings with Mr. Airola, we sent out a registered letter from our lawyers confirming that he was no longer involved in HyperGalaxy Business Solutions, Inc. He chose not to respond, and legally the company was turned over to Doug Sooley and Tim Whyte on August 18, 2000.

Mr. Airola, along with 4 or 5 other college or business college students did some part-time work for a couple of small businesses and called themselves HyperGalaxy. There, however, was no formal business and no revenue-stream. HyperGalaxy had no tax ID status with the State or Federal Government, no payrolls, and no assets.

Mr. Airola helped write and approve the content of the HyperGalaxy.net web pages and sent along paragraphs containing precise wording to be used in the marketing of the HyperGalaxy.net business.

Nearly nine months following the formal establishment of HyperGalaxy Business Solutions, Inc. (an Illinois Corporation), Mr. Airola has attempted to trademark the name HyperGalaxy and to infringe upon our right to do business.

The "two" businesses were one and the same when the HyperGalaxy.net web site was initially established in January/February of 2000.

On November 28, 1998, Mr. Airola registered the domain name HYPERGALAXY.COM.

Since December 1998, Complainant or its principal, Mr. Airola, have been engaged in the business of providing Internet or World Wide Web development and consulting services, including expert embedded/DSP development, Web development, Web usability, and Web business consulting services.

The use of HYPERGALAXY as a trade name or business name since December 1998, establishes prior use of the mark HYPERGALAXY in commerce before Respondent registered the subject domain HYPERGALAXY.NET on February 18, 2000.

On November 15, 2000, HyperGalaxy, Inc. filed a service mark application for the mark HYPERGALAXY, on the Principal Register.

Neither Mr. Airola nor any other representative or agent of Complainant ever granted any rights to the Respondent with respect to the name "HyperGalaxy" or any associated trademark rights to the name "HyperGalaxy".

Respondent has no rights or legitimate interests in respect to the mark HYPERGALAXY or the domain name HYPERGALAXY.COM under Paragraph 4(a)(ii) of the Policy.

Respondentís registration and use of the HYPERGALAXY.NET is unlawful and in bad faith under the ICANN Uniform Domain Name Dispute Resolution Policy.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy 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.

The domain name is identical or similar to Complainantís mark. Respondent does not contest that the domain name hypergalaxy.net is confusingly similar to a mark in which Complainant claims rights. Respondent does, however, contest that Complainant has trademark or service mark rights in HYPERGALAXY.

Complainant has acquired trademark rights in HYPERGALAXY by virtue of the fact that its principal registered the domain name hypergalaxy.com in December 1998, and it has been doing business as HYPERGALAXY since that time. The HYPERGALAXY mark is entitled to trademark protection because it is arbitrary or fanciful when used in association with Complainantís goods and services. See Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc. 841 F.Supp. 1339, 1347 (E.D.N.Y. 1994) (stating that "words or symbols that are arbitrary, fanciful or suggestive of the entity or its product or service are ëinherently distinctiveí and the user may accrue property rights therein from the first use in commerce"). See McCarthy on Trademarks and Unfair Competition, ß 25:74.2, Vol. 4 (2000) (The ICANN dispute resolution policy is "broad in scope" in that "the reference to a trademark or service mark ëin which the complainant has rightsí means that ownership of a registered mark is not requiredñunregistered or common law trademark or service mark rights will suffice" to support a domain name complaint under the policy).

Complainant has proven this element.

No Rights or Legitimate Interest ICANN Policy � 4(a)(ii)

Respondent has no rights in HYPERGALAXY because Complainant began using it first, and never gave Respondent permission to use HYPERGALAXY. See Fanuc Ltd. v. Machine Control Services, FA 93667 (Nat. Arb. Forum March 13, 2000) (finding that Respondent had no rights or legitimate interest because Respondent does not own the registered mark, has no permission from the Complainant to use the mark, nor is affiliated with the Fanuc business in any way).

Although Complainant may have had negotiations which would have allowed the use of its mark by a corporation not a party to these proceedings, there was no consideration and no agreement for its use by that corporation or Respondent, and Respondent therefore has no rights or legitimate interest in the name.

Complainant has proven this element.

Paragraph 4(b) of the Policy sets forth a non-exclusive list of factors which may evidence bad faith.

The evidence established that a portion of Respondentís web site content is copied from Complainantís web site, and that Respondent and Complainant are competitors. Respondentís registration and use of HYPERGALAXY.NET operates to disrupt Complainantís business and/or attract prospective customers to Respondentís web site as opposed to Complainantís web site. Respondentís registration and use of HYPERGALAXY.NET, therefore, directly interferes with Complainantís business and customer relationships in violation of paragraph 4(b)(iii) of the Policy.

Respondentís registration and use of HYPERGALAXY.NET also interferes with Complainantís business in violation of 4(b)(iv) of the Policy. The identical services offered and the nearly identical business names and logos will create likelihood of confusion. Moreover, customers seeking Complainantís services may well believe Respondentís web site is in some way connected with the Complainant.

Therefore, Respondentís registration and use of HYPERGALAXY.NET constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy.

The panel directs that the domain name "hypergalaxy.net" be transferred to Complainant, HyperGalaxy, Inc.