Generic Top Level Domain Name (gTLD) Decisions

Distinctive Designs International, Inc. v destinctivedesigns.com

Forum File No.: FA0008000095478

The domain name at issue is distinctivedesigns.com, registered with Melbourne.

The undersigned certifies that he has acted independent and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on August 23, 2000; The Forum received a hard copy of the Complaint on August 21, 2000.

On August 23, 2000, Melbourne confirmed by e-mail to The Forum that the domain name, distinctivedesigns.com, is registered with Melbourne and that the Respondent is the current registrant of the name. Melbourne has verified that Respondent is bound by the Melbourne registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 26, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Howard C. Buschman III as Panelist.

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

Before me are the Complaint, the Response and Complainant’s Other Written Statement, which I have decided to accept. Respondent has not filed a response to Complainant’s Other Written Statement.

Complainant has produced floral arrangements and accessories since its incorporation in 1981 under its current name. The name "Distinctive Designs" is used in labeling its products and in promoting its business. At least one magazine has referred to Complainant by the name "Distinctive Designs". Complainant has applied to register the name as a trademark.

Section 4(a) of the ICANN Uniform Domain Name Dispute Policy (the "Rules") requires the Complainant to prove each of the following three elements in order to sustain a claim that a domain name should be cancelled or transferred:

Section 4(b) provides:

The Complainant bears the burden of proof on these issues.

The similarity of the domain name with Complainant’s name is obvious. Respondent asserts that Complainant can have no rights in the name "Distinctive Designs" because it has not registered the name with the United States Patent and Trademark Office. This assertion ignores the long-standing recognition of trademarks and tradenames at common law. It further ignores that rights in a mark can be established by pending applications. The Rules are not limited to registered marks. Respondent does not dispute Complainant’s contention that its use of the name gave rise to a common law mark.

I thus find that the first element of Section 4(a) is satisfied. Complainant has used the name for a long time; that name and the domain name are identical and the Complainant has rights in the name.

As to the second element of Section 4(a), Respondent’s registration of the domain name could be said to afford it rights in the name. But it appears that the second element requires more than just registration. If the second element were to be deemed satisfied by mere registration, a complainant could never show that a respondent had no rights or legitimate interests in the domain name for all are registered. More, therefore, must be required. A "right" bespeaks of a legal entitlement such as a mark. An "interest" is something less. It could be found in use of a name or generic term as a link to another web site truly offering goods and services, significant promotional expenses with respect to a name or generic term or an established use of the name term prior to registration.

Here, the evidence, at the time the instant dispute arose, is merely of registration. There is no evidence of linkage to another web site, promotional development or prior established use of the term at that time.

Respondent’s attempt to establish a legitimate interest in the domain name after the complaint was filed is unavailing absent cogent and persuasive evidence of a serious intention to do so as part of an offering of goods or services prior to the instant dispute. Such manipulation is not to be countenanced. I, therefore, hold that the second element has been satisfied.

Thus, I turn to the third element of Section 4(a), bad faith registration and use.

Here, there is no evidence that the Complainant and Respondent are competitors, there is no evidence of any attempt by Respondent to attract Internet users to a web site through confusion with Complainant’s name, and there is no direct evidence, on this record, of a pattern of registering domain names in order to prevent an owner of a mark from reflecting the mark in a domain name. Thus, Sections 4(b)(ii), (iii) and (iv) of the Rules are inapplicable.

Section 4(b)(i) of the Rules addresses the so-called "classic cybersquatter" case where one registers a domain name with the intention to arbitrage it. See, Avery Dennison Corp. v. Sumpton, [1999] USCA9 436; 189 F.3d 868, 880 (9^th Cir. 1999). Proof of intention is almost always based on circumstantial evidence. Here, there is such evidence in exact replication of the Complainant’s name in the domain name, the absence of promotional development of the domain name and the standing offer at buydomains.com to sell the domain name for $2,488. Together, these indicate an intention to register the domain name primarily for purposes of selling it in excess of out-of-pocket costs. Section 4(b) of the Rules provides that such evidence is evidence of both bad faith registration and use.

Against this evidence lies principally the September 20, 2000 creation of a link to a web site said to be offering creative print media while continuing to offer the name for sale. For the same reasons set forth above, this contention is unpersuasive. The notion that such manipulation belies bad faith is erroneous. Rather, it demonstrates a lack of good faith.

Accordingly, it is decided that Melbourne shall transfer the domain name "distinctivedesigns.com" to Complainant.

Howard C. Buschman III

Dated: October 5, 2000