PARTIES
The Complainant is CHF Industries, Inc., New York, NY, USA (“Complainant”) represented by Patricia Smink Rogowski, of Connolly Bove Lodge & Hutz LLP. The Respondent is Domain Deluxe, Hong Kong (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.

REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "myroom.com", (hereinafter referred to as “domain name”) registered with IHoldings.com, Inc. d/b/a DotRegistrar.com.

PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.

Judge Ralph Yachnin, Chair; Judge R. Glen Ayers, Panelist; and Diane Cabell, Esq., Panelist.

PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on June 8, 2001; the Forum received a hard copy of the Complaint on June 11, 2001.

On June 13, 2001, IHoldings.com, Inc. d/b/a DotRegistrar.com confirmed by e-mail to the Forum that the domain name "myroom.com" is registered with IHoldings.com, Inc. d/b/a DotRegistrar.com and that the Respondent is the current registrant of the name. IHoldings.com, Inc. d/b/a DotRegistrar.com has verified that Respondent is bound by the IHoldings.com, Inc. d/b/a DotRegistrar.com 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 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 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 Respondent’s registration as technical, administrative and billing contacts, and to postmaster@myroom.com by e-mail.

A timely response was received and determined to be complete on July 2, 2001. Thereafter, Complainant interposed a Reply to the Respondent’s Response and subsequently Respondent served an additional Response.

On July 16, 2001, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Judge Ralph Yachnin, Chair, Judge R. Glen Ayers, Panelist and Diane Cabell, Panelist.

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

PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends:
Respondent has registered a domain name that is identical to or confusingly similar to Complainant’s registered trademark; and

Complainant has established common law trade marks in the <myroom.com> trademark by virtue of continuous use of the mark since 1984 and significant customer recognition; and

Respondent has no rights or legitimate interests in respect to the said domain name; and

Domain Deluxe registered the domain name in January, 2001, after Complainant applied to register its mark; and

Complainant has not authorized Respondent to use its registered trademark at any time; and

When Complainant attempted to purchase the domain name from its prior registrant, Answer/Think Consulting Group, Inc., it informed it of Complainant’s superior rights to the domain name. Hence Answer/Think had notice of Complainant’s rights. Since Respondent could only have obtained the domain name from Answer/Think, Respondent knew or should have known of Complainant’s superior rights to the trademark “MY ROOM” and the domain name.

Respondent’s failure to respond to Complainant’s attorney’s cease and desist letter acts as an admission.

Respondent has registered and is using the domain name in bad faith.

B. Respondent
The Respondent contends:
The term “my room” is a commonly -used term and hence Respondent has a legitimate interest in it; and

Respondent registered the domain name five months prior to the issuance of Complainant’s registered trademark; and

Respondent has a legitimate interest in MYROOM.COM, because it used it for development of a personalized Internet search web site; and

When Respondent, located in Hong Kong, registered the domain name, it had no knowledge of Complainant, a U.S. company; and

Respondent did not acquire the domain name for the purpose of selling, renting or transferring to Complainant, or to prevent Complainant from reflecting its trademark in a domain name, or to disrupt Complainant’s business or attract customer’s seeking to purchase its products, hence there can be no finding of bad faith. Respondent registered it to use for services appropriately described by the domain name.

Although Respondent operates a business that registers domain names for resale, the domain name is one of about ten domain names that Respondent registered for development.

Respondent admits that the Complainant’s trademark and the domain name are, for all intents and purposes, identical, but at the time it was registered, Complainant did not have a registered trademark.

Respondent maintains that it has no obligation to respond to Complainant’s overzealous assertions concerning its alleged rights.

FINDINGS
The Complainant is in the business of selling home furnishings, e.g., curtains, bedding, and bath textiles. On October 8, 1999, Complainant filed an application with the United States Patent and Trademark Office (hereinafter referred to as USPTO) to register the trademark “My Room,” and it was granted on June 26, 2001. In between those two dates, i.e., January 24, 2001, Respondent registered the domain name MYROOM.COM.

Until the registration of the domain name by Respondent, a third party, Answer/Think Consulting Group owned the domain name.

In April and in May 11, 2001, Complainant’s attorney sent a cease-and-desist letter to Respondent, to which Respondent made no reply.

The Complainant has never licensed or authorized Respondent its registered trademark.

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
There is no doubt, and in fact the Respondent has admitted, that the Complainant’s trademark and the Respondent’s domain name are, for all intents and purposes, identical. However, there is still a further issue to be decided: whether the Complainant’s rights to the mark existed at or prior to January 2001, the time when the Respondent became the owner of the domain name.

On October 13, 1999, Complainant applied to register <myroom.com>, and the application was granted by the USPTO on June 26, 2001. Since the trademark was not granted until after the domain name was established, Complainant can prevail (Ode v. IntershipLtd, D2001-0074 (WIPO May 1, 2001) (“the trademark must predate the domain name.”) only if it can show that it had a common law trademark rights to the term “My Room.”

Complainant owns trademark registrations for the following marks: MY ROOM (with design) and MY OWN ROOM, in addition to <myroom.com>, as noted in the preceding paragraph. Complainant also owns pending trademark applications for the following marks: MYROOM.COM, MY ROOM, MY ROOM TOO, MY ROOM MY WAY, ROOM 4 ME, and ROOM FOR ME. [Note: Pending trademark applications can be evidence of a complainant’s rights in a mark. See Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-0040 (WIPO Mar. 23, 2000) (finding that the domain name was identical or confusingly similar to the Complainant’s pending service mark application).]

In the United States, where Complainant maintains its business, rights in trademark may arise from actual use of the mark in commerce. Registration is not required. See New York Presbyterian Hospital v. Harris D 2000-0856 (WIPO Sept. 26, 2000). The Panel accepts Complainant’s claim of common law rights in the mark that predates Respondent’s domain registration by ten years or more.

Therefore, the Panel concludes that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests
The Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.

Respondent intends to use the domain name in connection with a legitimate business. Thus, Respondent has a legitimate interest in the domain name. See Casual Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum Aug. 7, 2000) (finding that Respondent has rights and legitimate interests in the domain name even though he has made no use of the web site at the time of the Complaint); see also IG Index PLC v. Index Trade, D2000-1124 (WIPO Oct. 16, 2000) (finding that the Respondent has rights in the domain name because the Respondent’s claimed use of the domain name is a “plausible explanation” to which the Panelist must give weight); Joseph Co. v. Barry, D2000-1418 (WIPO Jan. 2, 2001) (finding Respondent provided substantial evidence of his demonstrable preparations to use the domain name with a business involving the sale of scrap materials prior to receiving notice of the present dispute).

See also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”).

Therefore, the Panel concludes that Complainant has not satisfied paragraph 4(a)(ii) of the Policy.

Registration and Use in Bad Faith
The Complainant has the burden of proof to establish that the Respondent registered and used the domain name at issue in bad faith. This, Complainant has failed to do.

The Respondent did not register the domain name in bad faith but rather registered it for use in connection with a legitimate business endeavor.

There is no evidence to show that the Respondent acquired the domain name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant, or to a competitor in excess of the documented out-of pocket costs. The evidence does indicate that at one point in time the Respondent had a link to its domain resale enterprise, but such re-sales are not per se offenses under the UDRP. See Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001) ("Respondent’s offer to sell the domain name does not constitute bad faith, in light of the fact that it has a legitimate interest in the domain name").

There is neither evidence to suggest that the Respondent registered the domain name in order to prevent the Complainant’s use of its mark in a corresponding domain name, nor has Respondent engaged in a pattern of such conduct. See generally Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000) (finding no bad faith even though Respondent’s ownership and purported use of the domain name frustrates Complainant’s efforts where the record does not indicate any purpose or intent on the part of the Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion).

There is no proof showing that the Respondent registered the domain name primarily for the purpose of disrupting the business of the Complainant. Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding no bad faith registration or use of the domain name <racegirl.com> where no evidence was presented that Respondent intended to divert business from the Complainant or for any other purpose prohibited by UDRP Rules.)

There is no evidence that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorhip, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.

Although the Complainant contends that the Respondent exhibited Bad Faith by failing to answer its cease-and desist letter, it has been held that a domain name registrant has no obligation to respond to, or even receive, demand letters. Eauto, LLC. v. Triple S. Auto Parts, D2000-0047 (WIPO, March 24, 2000).

The final issue made by the Complainant, is that when Respondent attempted to purchase the domain name from its prior owner, Answer/Think Consulting Group, Inc., Answer/Think informed Respondent of Complainant’s superior rights to the domain name. Thus Complainant contends that since Respondent could only have obtained the domain name from Answer/Think, Respondent knew or should have know of the Complainant’s superior rights to the trademark “MY ROOM” and the domain name. There is no independent evidence that Answer/Think related such information to the Respondent, nor can there be an inference and/or presumption that would form such basis. In addition, without direct evidence of such notice to the Respondent, before it could even be examined, there would have to be some showing that Answer/Think had some responsibility to reveal such information to the Respondent, or that it was even in direct communication with the Respondent. There has been no such showing.

On the other hand, Respondent asserts, and the Panel finds it to be entirely creditable that

“Respondent did NOT acquire the disputed Domain from Answer/Think. To the contrary, Respondent registered the Disputed Domain, which was available for anyone to register (perhaps because Answer/Think had not paid it (sic) renewal fee and the name was deleted.”

Hence Complainant’s contention on this issue is moot.

While the aforesaid are not the only ways that Bad Faith can be shown, and are merely examples of it, Complainant has not persuaded this Panel that Bad Faith has been evidenced in any way.

Therefore the Panel concludes that the Complainant has not satisfied paragraph 4 (a)(iii) of the Policy.

DECISION
The Complainant having failed to establish all of the three elements under the ICANN Policy, the Panel concludes that the requested relief should not be granted.

Accordingly, it is Ordered that the <myroom.com> domain name not be transferred from the Respondent to the Complainant.

Hon. Ralph Yachnin, Panel Chair
Justice, Supreme Court, NY (Ret.)
Dated: July 26, 2001