ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: Basic Chemical Solutions, LLC
Respondent: BCS California Corporation and Jason Singh
Case Number: AF-0923
Contested Domain Name: BASICCHEMICALSOLUTIONS.COM 
Panel Member: Houston Putnam Lowry
 
1. Parties and Contested Domain Name 

The Complainant in this proceeding is BASIC CHEMICAL SOLUTIONS, LLC of 525 Seaport Boulevard, Redwood City, California 940063, U.S.A.

No response has been filed. The registrant of the at-issue domain name and nominal respondents are
BCS CALIFORNIA CORPORATION and JASON SINGH, both of 2915 Gerber Street, Berkeley, California 94705, U.S.A.

The subject domain name is BASICCHEMICALSOLUTIONS.COM and the registrar is Registrar.com (“Registrar”). 

2. Procedural history

The electronic version of the Complaint form was filed on-line through eResolution’s Website on July 5, 2001. The hardcopy of the Complaint Form and annexes were received on July 6, 2001.Payment was received on July 6, 2001.

Upon receiving all the required information, eResolution’s clerk proceeded to:

- Confirm the identity of the Registrar for the contested Domain Name;

- Verify the Registrar’s Whois Database and confirm all the essential contact information for
Respondent;

- Verify if the contested Domain Name resolved to an active Web page;

- Verify if the Complaint was administratively compliant.

This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Register.com, the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.

An email was sent to the Registrar by eResolution Clerk’s Office to obtain confirmation and a copy of the Registration Agreement on July 6, 2001. The requested information was received July 6, 2001.

The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in
accordance with paragraph 2 (a) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk’s Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on July 6, 2001. This date is the official commencement date of the administrative proceeding.

No emails were returned ‘undeliverable’. All the faxes were successful.

The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered except for the copy that was sent to the billing contact.

The Respondents did not submit a Response neither via eResolution’s website nor a signed version.

On August 1, 2001, the Clerk’s Office contacted Houston Putnam Lowry, and requested that he acts as panelist in this case.

On August 1, 2001, Houston Putnam Lowry accepted the appointment to act as panelist in this case
and filed the necessary Declaration of Independence and Impartiality.

On August 2, 2001, the Clerk’s Office forwarded a user name and a password to Houston Putnam Lowry, allowing him to access the Complaint Form, the Response Form, and the evidence through
eResolution’s Automated Docket Management System.

On August 2, 2001, the parties were notified that Houston Putnam Lowry had been appointed and that a decision was to be, save exceptional circumstances, handed down on August 16, 2001. 

3. Factual Backgrounds 

Complainant Basic Chemical Solutions, LLC (a New Jersey limited liability company) is the registered owner of United States trademark #2,315,436 “BASIC CHEMICAL SOLUTIONS”. This mark was first used in commerce in March 1996 and the registration was issued on February 8, 2000 by the United States Patent and Trademark office (which predates the registration of the domain name). The registered trademark is essentially identical to the domain name at issue, BASICCHEMICALSOLUTIONS.COM.

The domain name BASICCHEMICALSOLUTIONS.COM was registered with the Registrar on July 6, 2000. The registration listed BCS California Corporation and Jason Singh as the domain name owners. There is no BCS California Corporation on record with the California Secretary of State. While the corporation may be incorporated elsewhere, it would have qualified in as a foreign corporation with the California Secretary of State because it has a California address. The fact BCS California Corporation did not register as required by local law suggests it does not exist.

The contact telephone numbers for the Respondents are the same telephone numbers as for Jas S. Rai.  Jas S. Rai answers the telephone at these numbers.[1] Jas S. Rai is listed as Respondents’ other contact or representative. The contact email address is jasrai99@yahoo.com. Under circumstances such as these, a Yahoo.com email contact is unusual because bona fide businesses do not tend to use Yahoo mail. Jas S. Rai admitted to Louis Abronson that he owns the
BASICCHEMICALSOLUTIONS.COM domain name in spite of how it is registered. All of these facts suggest Jas S. Rai is using the names BCS California Corporation and Jason Singh as a nom de plume.  Absent his denial of these facts, they will be assumed.

Jas S. Rai was offered a job at Complainant Basic Chemical Solutions, LLC on July 17, 2000 (see Annex 2). He accepted the position on August 16, 2000 (see Annex 3). On August 24, 2000, he resigned effective the day before (August 23, 2000) (see Annex 4). Jas S. Rai continues to work in the chemicals field for a different (unnamed) employer.

If Complainant Basic Chemical Solutions, LLC did not meet Jas S. Rai’s financial demands concerning the transfer of the domain name, Jas S. Rai threatened to transfer the
BASICCHEMICALSOLUTIONS.COM to a relation who owns a British chemicals company in direct competition with Complainant Basic Chemical Solutions, LLC. It should be noted the present registered owner of the BASICCHEMICALSOLUTIONS.COM domain name is located in Coventry, England, making it appear Jas S. Rai carried out his threat.[2]

BASICCHEMICALSOLUTIONS.COM resolves to an “under construction” web page which uses the name “Basic Chemical Solutions” on top and refers to unspecified cleaning chemicals. 

4. Parties' Contentions 

Complainant Basic Chemical Solutions, LLC contends BCS California Corporation and Jason Singh
registered and use the BASICCHEMICALSOLUTIONS.COM domain name in violation of the Uniform Dispute Resolution Policy by infringing (either directly or indirectly) on the Basic Chemical Solutions trademark.

Respondents have failed to respond to any of the allegations. This means Complainant’s allegations are uncontested. A complainant still needs to make out a prima facie case because panelists do not render default awards simply because a respondent fails to respond, ICANN Rule 5(ix)(e).

5. Discussions and Findings 

In order to obtain relief under the Uniform Domain Name Dispute Resolution Policy adopted on August 26, 1999 (and effective December 1, 1999 under the facts of this case because the registrar is Register.com), a complaining party must prove ALL of the following to be entitled to relief in this
process:[3]

(i) the respondent’s domain name is identical or confusingly similar to a trademark or service
mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the respondent’s domain name has been registered and is being used in bad faith.

A. The Respondent’s Domain Name Is Identical Or Confusingly Similar To A Trademark Or Service Mark In Which The Complainant Has Rights.

The domain name is BASICCHEMICALSOLUTIONS.COM, which is substantially similar to the Basic Chemical Solutions trademark. Complainant and Jas S. Rai (the real party in interest behind the Respondents) are in the same business (the “chemical” business), meaning confusion is likely. Given the facts, it is presumed the current registered owner of the BASICCHEMICALSOLUTIONS.COM domain name (Grewal) is either a direct competitor or a nominee for a direct competitor of Complainant.

B. The Respondents Have No Rights Or Legitimate Interests In Respect Of The Domain Name.

None of the standard indicia demonstrating rights to a domain name described in the ICANN Uniform Domain Name Dispute Resolution Policy Paragraph 4(c) appear to be present in this case:

(i) before any notice to respondent of the dispute, respondent’s use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain name in
connection with a bona fide offering of goods or services; or

(ii) respondent (as an individual, business, or other organization) have been commonly known by
the domain name, even if respondent has acquired no trademark or service mark rights; or

(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or
service mark at issue.

The Panelist was unable to find any other factors which show Respondents have any rights or legitimate interest to the BASICCHEMICALSOLUTIONS.COM domain name. Respondents’ silence suggests Respondents were also unable to demonstrate any factors which show a right or legitimate interest.

C. The Respondent’s Domain Name Has Been Registered And Is Being Used In Bad Faith.

Under ICANN Uniform Domain Name Dispute Resolution Policy Paragraph 4(b), the following
non-exclusive factors indicate registration and use of a domain name in bad faith:

(i) circumstances indicating that respondent has registered or acquired the domain name
primarily for the purpose of selling, renting, or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of respondent’s documented
out-of-pocket costs directly related to the domain name; or

(ii) respondent has registered the domain name in order to prevent the owner of the trademark or
service mark from reflecting the mark in a corresponding domain name, provided that respondent
engaged in a pattern of such conduct; or

(iii) respondent has registered the domain name primarily for the purpose of disrupting the
business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for
commercial gain, Internet users to respondent’s web site or other on-line location, by creating a
likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or
endorsement of respondent’s web site or location or of a product or service on respondent’s web
site or location.

Basic Chemical Solutions, LLC and Jas S. Rai work in the same industry. Basic Chemical Solutions,
LLC and Grewal are presumed to be direct competitors in light of Jas S. Rai’s statements to Louis S. Abronson, Esq. (see Annex 6). The threat to transfer the BASICCHEMICALSOLUTIONS.COM domain name to a relation who owns a British chemicals company in direct competition with Complainant Basic Chemical Solutions, LLC (if certain financial demands were not met) clearly shows bad faith.

A nominal respondent will not shield a real party in interest from the jurisdiction of a panel under the
Uniform Dispute Resolution Policy.[4]

A number of panelists have discussed the requirement that a domain name must not only be registered in based faith, but it also must be used in bad faith. A domain name may be used in any of the following ways (and can be used more than one way at the same time):

1. A location for a web site (and all that entails, ranging from the publication of information to
electronic commerce).

2. An address for email.[5]

3. To prevent another from using the domain name.

"Bad faith" is defined in Black’s Law Dictionary 7th edition at page 134 as: "1. Dishonesty of belief or purpose..". In Halsey v. Brotherhood (1881), 19 Ch. D. 386 Lord Coleridge L.C.J. in determining whether there was evidence of mala fides stated that the task of the Court was to consider "whether there is anything to show that what the defendant stated was stated without reasonable and probable cause".

While it may be easy to prove a domain name was registered in bad faith, it is sometimes hard to prove it is being used in bad faith. However, this Panelist believes the Uniform Dispute Resolution Policy means simply that the domain name is being wrongfully retained by the registrant (otherwise the panel could not offer an effective remedy). A wrongful registrant should not be able to escape the jurisdiction of a panel simply because the domain name is being used only for email (or simply to prevent another from using the domain name). A number of other panelists seem to agree with this interpretation.[6]

Given the correspondence and other communications between the parties, it seems clear the
BASICCHEMICALSOLUTIONS.COM domain name was both registered in bad faith[7] and is being used in bad faith. Furthermore, the BASICCHEMICALSOLUTIONS.COM domain name was transferred to a third party in an attempt to avoid this panel’s jurisdiction and to further harm Complainant. This clearly demonstrates continuing bad faith. 

6. Conclusion

For the foregoing reasons, the BASICCHEMICALSOLUTIONS.COM domain name shall be transferred to Basic Chemical Solutions, LLC.

7. Signature

(s) Houston Putnam Lowry
Meriden, Connecticut USA
August 3, 2001.
Sole Panelist

[1] According to the complaint, the contact telephone number is (925) 518-9558. According to Jas S. Rai’s letterhead on August 24, 2000, his telephone number is (925) 518-9558.

[2] The Panel is concerned the Registrar might have allowed a transfer of the domain name’s ownership while this proceeding was pending (although this proceeding started on July 6 and the domain name appears to have been transferred on the same date, making the timing uncertain).

[3] ICANN Uniform Dispute Resolution Policy Paragraph 4(a). 

[4] Parker Hannifin Corporation v. East Bay Web Site Company, AF-0587 (12/22/00)

[5] See, for example, Magic Software Enterprises v. Evergreen Technology Corp., WIPO D-2000-0746.

[6] Telstra Corp. v. Nuclear Marshmallows, WIPO D2000-0003; MTR Software v. Esther Cao, AF-0415; Coty Cosmetics v. Jaguar Ltd, AF-0416; JVC America v. Damian Macafee, CPR-007; and Solomon R. Guggenheim Foundation v. Jesus J. Ruiz Zuazu, FA0008000095319.

[7] Given the short amount of time between the registration of the domain name and the employment
offer, Jas S. Rai knew, or should have known, about Complainant’s registered trademark at the time of registration.

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