A one member panel ruled in favor of Web.com with regards to the domain name Netsol.domains. The registrant was based out of Spain and it seems tried to sell the domain for $5,000. The registrant did say that the name along with other infringing domains were registered  as part of an automated list generated from software created by Respondent that was designed to generate a list of “best search terms in the AdWords Keywords search engine”.  Respondent indicated that he did not personally review the automatically generated list for possible trademarked terms prior to registering the Disputed Domain Name.

Here are the highlights of the case:

1. Respondent registered the Disputed Domain Name on October 15, 2014 — many years after the adoption and first use of the famous NETSOL and NETWORK SOLUTIONS Marks.
   

2. Complainant received a Trademark Claims Notice from the Trademark Clearinghouse on October 16, 2014, informing Complainant of the registration of the Disputed Domain Name.
   

3. As of January 21, 2015, Respondent owned 177 domain names, of which eighteen (18) domain names, including the Disputed Domain Name, comprised of or incorporating the well-known trademarks of others, for example:
   

1. <arpa.domains>, <dotster.domains>, <giant.domains>,  <netsol.domains>, <verisign.domains>, <bittorrent.tools>, <bittorrent.guide>, <ictrecruitmentagency.com>, <snapchat.guide>, <androidvacature.com>, and <youtubedownloader.tools>.

On January 9, 2015, in an attempt to amicably resolve this matter, Complainant’s counsel sent a letter to Respondent, via Respondent’s email address at mennox1969@gmail.com, objecting to Respondent’s registration and use of the Disputed Domain Name.

6. On January 11, 2015, Respondent replied to Complainant’s letter, stating that the Disputed Domain Name was registered as part of an automated list generated from software created by Respondent that was designed to generate a list of “best search terms in the AdWords Keywords search engine”.  Respondent indicated that he did not personally review the automatically generated list for possible trademarked terms prior to registering the Disputed Domain Name.  Respondent indicated a willingness to transfer the Disputed Domain Name to Complainant, provided that Complainant pay Respondent’s outstanding account balance of approximately €5,000, which included costs attributable to other domain name registrations not related to the present dispute. 
   

7. On January 15, 2015, Complainant’s counsel confirmed receipt of Respondent’s January 11, 2015, reply.  On the same day, Respondent provided a further response to Complainant’s counsel wherein Respondent included a copy of Respondent’s alleged outstanding invoice.  The invoice indicated an outstanding balance of €5,715; only €30.19 of which is attributable to Respondent’s out-of-pocket expense for registration of the Disputed Domain Name (€24.95 plus 21%VAT).
8. In addition to providing Complainant’s counsel with a copy of Respondent’s alleged outstanding invoice, Respondent’s January 15, 2015 reply included the following thinly veiled attempt to blackmail Complainant into paying Respondent’s outstanding invoice balance, which is in excess of Respondent’s documented out-of-pocket expenses:
   
   1. “The faster we move, the less probability it comes in the newspaper and a blamage for NetSol ‘that it is not even able to register netsol.domains’ and that type of gossib which would not devastating but not needed. As people can see this in the whois at donut etc.”

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

Accordingly, it is Ordered the <netsol.domains> domain name be TRANSFERRED from Respondent to Complainant.

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Tuesday, April 21, 2015