Week
3
(Compare the results of this Arbitration Forum case with the
decision in Pueblo.com. This proceeding is through ICANN's Rules for Uniform
Domain Name Dispute Resolution Policy)
04/27/2000
PUEBLO INTERNATIONAL, INC.
COMPLAINANT,
Vs.
VCV INTERNET/VIRTUAL CITY VISION,
INC.
RESPONDENT.
DECISION
Forum File No.: FA0003000094337
The above entitled matter came on for an
administrative hearing on April 27, 2000 before the undersigned on the Complaint of Pueblo
International, hereafter "Complainant", against VCV Internet/Virtual
City Vision, Inc., hereafter "Respondent". Complainant was
represented by: Carlos A. Romero, Jr. 3195 Ponce De Leon Blvd., Suite 400, Coral Gables, FL. 33134. Respondent by: Mark S. Gober, 913 Plantation Boulevard, Fairhope, AL. 36532. Upon the written submitted
record, the following DECISION is made:
PROCEDURAL FINDINGS
Domain Name: pueblo.net
Domain Name Registrar: Network Solutions,
Inc.
Domain Name Registrant: VCV Internet
(PUEBLO.NET)
Date of Domain Name Registration: October 26, 1997 (Placed on "Hold" on August 14, 1998)
Date of Complaint Filed: March 22, 2000
Date of Commencement of the Administrative
Proceeding in Accordance with Rule 2(a) and Rule 4(c): February 3, 2000
Due Date for a Response: March 22, 2000
After reviewing the Complaint, and
determining it to be in administrative compliance, the National Arbitration
Forum (The Forum) forwarded the Complaint to the Respondent on March 23, 2000 in compliance with Rule 2(a), and the administrative
proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d),
The Forum immediately notified Networks Solutions, Inc., the Internet
Corporation for Assigned Names and Numbers (ICANN), and the Complainant that
the administrative proceeding had commenced.
On October 26, 1997 and December 14, 1998, Respondent registered the domain name
"pueblo.net" with Network Solutions, Inc., the entity that is the
Registrar of the domain name. On March 23, 2000, Network Solutions, Inc. verified that Respondent is
the Registrant for the domain name "pueblo.net", and that further by
registering its domain name with Network Solutions, Inc., Respondent agreed to
resolve any dispute regarding its domain name through ICANN's
Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain
Name Dispute Resolution Policy.
FINDINGS OF FACT
- The
domain name "pueblo.net" is identical to the service mark PUEBLO
of Complainant registered with the United States Patent and Trademark
Office on September 3, 1996, Registration No. 1,997,786, in Class 42 for
super markets and retail grocery services. At least since 1955, the mark
has been used in commerce.
- Complainant's
primary business is in the super market/grocery store business and which
they have expanded use of the service mark to marketing pre-paid phone
cards, cellular phones, movie videos, and PUEBLO private label food
products offered for sale nationwide.
- Respondent's
business provides third parties an array of internet services under the
VCV names (and similar variations as evidenced by its letterhead and web
page, under the names VCV, VCV Internet, or Virtual City Visions). These
services include internet access, space rental, internet service provider
(*ISP*) set up, web page design, and "virtual cities". A virtual
city is created by transferring to a third party exclusive ownership
rights to a preregistered domain name, coupled
with internet access, ISP set up, user accounts, and related internet
services offered in one global package.
- Respondent
has registered over forty (40) domain names; of these twenty eight (28)
are still inactive as evidenced by the message "page cannot be
found" in response to any attempt to access a web page for the
relevant domain name. Ten (10) domain names are active, but are used by
third parties in connection with promoting their (not Respondent's)
business. The other domain names have either web pages under construction
or are in limbo.
- During
the relevant time, Respondent advertised nationally in the Internet as
follows:
Your virtual city
can be your-city-name.net, or your-city-name. vcv.com
and you can offer our
complete line of internet services… Take this scenario…
Imagine the leverage of spending only
$50.00/month and
have the effect of $50,000.00/month of national advertising.
- Respondent
has engaged in a clear pattern of conduct of trafficking for gain preregistered domain names, as if they were inventory
items for sale, to a future transferee to promote unknown goods and
services. Until a party appears, the registered names (including
pueblo.net) sit idly without use for any purpose other than for resale,
are not used to promote the sale of any goods or services of anyone, and
are not associated with any ongoing business or goodwill. If and when a
transferee appears, then upon receipt of profitable consideration,
Respondent will transfer the naked domain name without any related
goodwill or existing business. The "pueblo.net" domain name was
the "good" being sold/transferred by
Respondent.
- Prior
to this dispute, Respondent never used the domain name or a corresponding
name in connection with a bona fide offering of its goods and services.
Instead, the pueblo.net domain name was the "good" being sold by
Respondent.
- Complainant's
prayer for relief requests that the domain name be transferred from
Respondent VCV Internet (PUEBLO.NET) to Complainant Pueblo International,
Inc.
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 conclusions:
- The
domain name "pueblo.net" is identical to Complainant's service
mark in use since at least 1955, except for the ".net" prefix.
- It
is not possible for any trier of fact to enter
into the mind of a registrant at the time of registration to know whether
the act of registration is bona fide and in compliance with policy and
rules governing registration of domain names, or one of bad faith.
Circumstances of conduct by registrant, is reliable evidence for a trier of fact to make a binding determination.
Respondent's conduct clearly establishes the primary purpose in acquiring
the rights to the domain name "pueblo.net" was for resale at a
future date, for a profit exceeding his out-of-pocket expenses incurred
directly related to the domain name. Respondent has established no right
or legitimate interest in respect of the domain name
"pueblo.net".
- Respondent
in registering over forty (40) domain names and offering them to third
parties for the exclusive use to offer their (not Respondent's) goods or
services for a one time fee of $2500.00 or, a monthly fee of $50.00, is
sufficient and reliable evidence to establish Respondent's bad faith at
the time of registration and continued bad faith by Respondent in sitting
on this (and these) domain name(s) until a transfer to a third party could
be transacted. Complainant has been denied the rightful use of said domain
name. Circumstances of Respondent's conduct clearly
establishes that there never was any intention to use the domain
name legitimately. Respondent conducts all its business under its VCV
names and has not promoted any goods or services under the domain name
"pueblo.net". Respondent's only goal is to profit by
transferring the naked domain name "pueblo.net" to a third
party. The domain name "pueblo.net" has been registered and is
being used in bad faith.
DECISION
Based upon the above findings and
conclusions, and pursuant to Rule 4(i), is decided as
follows:
THE UNDERSIGNED DIRECTS
THAT THE DOMAIN NAME pueblo.net REGISTERED BY RESPONDENT VCV Internet
(PUEBLO.NET) TRANSFERRED TO COMPLAINANT Pueblo International, Inc.
Dated April 27, 2000 by
_____________________________________
Judge Harold Kalina
(Ret.)
Arbitrator