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and Mediation Center
Management Consulting Services, Inc. v. Alternative (DNZVLZZPLD)
Case No. D2005-0233
1. The Parties
The Complainant is Management Consulting Services, Inc., Bakersfield, California United States of America, represented by Klein, DeNatale, Goldner, Cooper, Rosenlieb & Kimball, LLP, United States of America.
The Respondent is Alternative (DNZVLZZPLD), Blackwood, New Jersey, United States
of America, represented by Mark L.McDonald, United States of America.
2. The Domain Name and Registrar
The disputed domain name <servicedriver.com> is registered with Network
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2005. On March 3, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On March 8, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 15, 2005. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2005. The Response was filed with the Center on April 12, 2005.
The Center appointed Jeffrey M. Samuels as the sole
panelist in this matter on April 18, 2005. The Panel finds that it was properly
constituted. The Panel has submitted the Statement of Acceptance and Declaration
of Impartiality and Independence, as required by the Center to ensure compliance
with the Rules, paragraph 7.
4. Factual Background
Complainant, Management Consulting Services, Inc. (MCS) provides various consulting services to automobile dealers, including providing online motor vehicle maintenance management services. One service provided by MCS to automobile dealers is a subscription-based online access to a database that provides various automobile manufacturers’ scheduled maintenance requirements for that manufacturer’s vehicles. MCS has identified this service as SERVICE DRIVER and has marketed it under that mark.
MCS filed an application with the United States Patent and Trademark Office for registration of “Service Driver”, as used in connection with “motor vehicle maintenance management services, namely providing online access to a database providing manufacturers’ scheduled maintenance requirements for motor vehicles via the World Wide Web”. The application alleges a date of first use of the mark of January 28, 2004.1
Mark L. McDonald was employed by MCS as National Sales Manager for the Service Driver services.2 On August 4, 2004, McDonald’s position was eliminated and he is no longer employed by MCS.
On January 28, 2004, Mr. McDonald placed an order with Network Solutions, LLC to register the disputed domain name <servicedriver.com>. The registration was in the name of MCS. See Exhibit 5 to Complaint. On February 4, 2004, MCS issued a check to Mr. McDonald in the amount of $86.63. The check indicates that it is for “domain name reimb.” See Exhibit 6 to Complaint.
In January 2005, following termination of Mr. McDonald’s
employment, MCS was advised that the website located at “www.servicedriver.com”
was “under construction”. Upon making inquiry to Network Solutions,
LLC, MCS was advised that the account holder for the domain name and the designated
server for the website had been changed.
5. Parties’ Contentions
Complainant notes that it has filed an application
with the USPTO to register the mark SERVICE DRIVER and that the disputed name
is <servicedriver.com>. It further argues that Mr. McDonald has no rights
or legitimate interests in the domain name. Complainant maintains that Mr. McDonald
has no prior independent use of the same or similar domain name or of the SERVICE
DRIVER mark in connection with the bona fide offering of goods or services,
is not making any legitimate noncommercial or fair use of the domain name, and
is not commonly known by the domain name.
In support of the contention that the domain name was registered and is being used in “bad faith”, Complainant points to a February 9, 2005, letter from Mr. McDonald to Complainant’s counsel in which Mr. McDonald indicated he would transfer the domain name to Complainant upon the payment of $1,814.35, the amount which Mr. McDonald claims MCS owes him. See Exhibit 8 to Complaint. According to Complainant, “McDonald’s renewal of the domain name and change of server to exclude access to MCS’s subscribers to the database through that domain and his offer to transfer the domain name upon receipt of consideration not associated with his out-of-pocket costs related to the domain name demonstrates bad faith on the part of McDonald”.
Mr. McDonald argues that he became an employee of
MCS as of February 1, 2004, and that, prior to such employment, he conceived
of the term “ServiceDriver” and registered the domain name using
his own credit card. He further contends that he renewed the domain name with
his own funds in January 2005, subsequent to his employment with MCS.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is clear, and the Panel so finds, that the disputed domain name <servicedriver.com> is, for intents and purposes, identical to the mark SERVICE DRIVER. While Complainant does not own a registration for such term, it appears that the mark has been used since January 28, 2004. Based on such use and the apparent inherent distinctiveness of the mark, the Panel concludes that Complainant has rights in the SERVICE DRIVER mark.
B. Rights or Legitimate Interests
The Panel concludes that none of the circumstances set forth in paragraph (4)(c) of the Policy is applicable. While Respondent contends that he registered the domain name prior to commencing employment with Complainant and that he paid for such registration with his own funds, the evidence indicates that MCS was identified as the account holder of the registration and that Mr. McDonald was reimbursed by MCS for the costs of registering the domain name.
C. Registered and Used in Bad Faith
Mr. McDonald’s February 9, 2005, letter to Complainant’s counsel notes that he was forced to seek the assistance of the California Labor Board to obtain certain sums of money owed him upon his termination from MCS. The letter further indicates that Mr. McDonald received a check representing unpaid salary and partial commission due and alleges that MCS promised future payment in July and August 2004, of certain commissions. Such future payment, apparently, was not received. The letter asserts that MCS owes Mr. McDonald a total of $1,814.35 in unpaid commissions and unreimbursed expenses. The letter concludes as follows: “Upon satisfactory resolutioin (sic) of this outstanding balance due me, I will be happy to transfer ownership ot (sic) Servicedriver.com to MCS”.
Based on the evidence, it appears to the Panel that Respondent is a disgruntled
former employee of Complainant who registered the domain name in dispute on
and then, subsequent to his termination, modified the registration records to
interfere with Complainant’s use of the domain name. Under such circumstances,
the Panel concludes that the domain name was registered and used in bad faith.
See Time Equipment Corp. v. Stage Presence, WIPO
Case No. D2003-0850 (December 23, 2003); Trustway Homes, Inc. v. The
PC Help Group, Inc., WIPO Case No. D2004-1010
(January 25, 2005).
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <servicedriver.com> be transferred to the Complainant.
Jeffrey M. Samuels
Dated: May 2, 2005
1 The Panel notes, based on its review of the USPTO’s electronic database, that no action has yet been taken on Complainant’s application.
2 As explained more fully below, the parties dispute the date Mr. McDonald’s employment commenced.
3 The evidence in the form of the reimbursement check clearly indicates that the domain name was registered on behalf of Complainant. Thus, it is not necessary for the Panel to resolve the factual dispute as to whether the initial registration of the domain name took place prior or subsequent to Mr. McDonald’s employment by MCS.