WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Design Escrow, Inc. v. Weatherite Roofing
Case No. D2001-0703
Complainant is Design Escrow, Inc., a California corporation with its principal place of business in Arcadia, California, USA.
Respondent is Weaterite Roofing, a business located in El Monte, California, USA.
2. The Domain Names and Registrar
The domain names at issue are: <designescrow.com> and <designescrow.net> ("the Domain Names").
The registrar is Network Solutions, Inc., located in Herndon, Virginia, USA.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Policy") and the ICANN Rules of Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Rules").
The Complaint was submitted by e-mail on May 25, 2001, and in hardcopy on June 5, 2001. The Complaint was amended by e-mail on June 21, 2001, and in hardcopy on June 26, 2001. The Response was submitted by e-mail on July 17, 2001, and in hardcopy on August 6, 2001.
On July 30, 2001, the WIPO Arbitration and Mediation Center appointed Mark V. B. Partridge as a sole panelist.
4. Factual Background
Complainant is an escrow company that has used the mark DESIGN ESCROW in connection with its services since October 1991.
Respondent is a roofing business operated by Gregory Dearden. His wife, Cherylene Dearden, is the Financing Coordinator for Respondent and is a former employee of Complainant. Respondent registered the Domain Names on March 4, 2000. It has also registered the domain names <designescrownet.com>, <designexcrow11.com>, <designescrowinc.com> and <design-escrow.com>, which are not at issue here. The Domain Names have not been used for any active web site. After being contacted by Complainant, Respondent offered to sell the Domain Names for $3500.
5. Parties' Contentions
Complainant contends that the Domain Names are identical to its mark, that Respondent has no rights or legitimate interests in the Domain Names, and that Respondent has registered and used the Domain Names in bad faith as demonstrated by its offer to sell the domain names for an amount in excess of its reasonable expenses. Complainant asks that the Domain Names be transfer to it.
Respondent claims that it intends to make non-infringing use of Domain Names for a business outside Complainant's market area. Accordingly, Respondent maintains it has a legitimate interest in the Domain Names and is not acting in bad faith.
Respondent's contentions in this matter are not credible. The record shows that Respondent has shifted the focus of its business from roofing to cybersquatting by registering numerous domain names that correspond to the marks of local businesses. For the reasons discussed below, I find that Complainant is entitled to the requested relief.
A. Confusing Similarity
Although Complainant's mark is not supported by a U.S. registration, Complainant has presented sufficient evidence of use to demonstrate rights in the mark DESIGN ESCROW. These rights predate registration of the Domain Names, which are identical in material part to Complainant's mark.
B. Legitimate Interests
Respondent has not used the domain names in connection with a bona fide offering of goods or services and is not known by the Domain Names. Respondent contends that it plans to use the Domain Names for a non-infringing business to be located in Arizona, but has provided no demonstrable plan to do so. It therefore appears that Respondent lacks any right or legitimate interest in the Domain Names.
C. Bad Faith
Respondent's bad faith is apparent from several facts. First, Respondent was well aware of Complainant's long prior use of the DESIGN ESCROW mark. Second, Respondent has engaged in pattern of conduct involving the registration of domain names that correspond to the distinctive names of local businesses. Third, Respondent has not put the Domain Names to bona fide non-infringing use and has offered no credible plan to do so. Finally, Respondent has offered to sell the Domain Names to Complainant for an amount far in excess of its reasonable out of pocket expense. In short, the record shows that this is a classic case of opportunistic cybersquatting in clear violation of the Policy.
I find in favor of Complainant and grant its request for transfer of the Domain Names <designescrow.com> and <designescrow.net>.
Mark V. B. Partridge
Dated: August 13, 2001