Generic Top Level Domain Name (gTLD) Decisions

Domain Name: marblemania.com

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: Barbara Gorin

Date of Domain Name Registration: October 13, 1999

Date Complaint Filed: August 28, 2000

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a) and Rule 4(c): August 29, 2000

Due date for a Response: September 18, 2000. A Response was mailed September 18, 2000 and was received by the National Arbitration Forum on September 21, 2000.

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on August 29, 2000 in compliance with 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), the Forum immediately notified Internet Domain Registrars, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent submitted a Response to The Forum within twenty (20) days pursuant to Rule 5(a).

On October 13, 1999, Respondent registered the domain name "MARBLEMANIA.COM" with Network Solutions, Inc., the entity that is the Registrar of the domain name. By registering its domain name with Internet Domain Registrars, Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution and the Uniform Domain Name Dispute Resolution Policy.

Any reference to "Rule" or "Rules" are to ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy as supplemented by the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy.

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

Marble Collectors Society of America, Inc, the oldest organization for marble collectors in the world, is a non-profit, educational organization organized as a corporation under the laws of the state of Connecticut. Its purpose is to assimilate information and perform services in furtherance of the hobby of marble collecting and to preserve the history of marble making. It was founded in 1975, currently has over 2000 members and produces a quarterly newsletter titled "Marble-Mania."

Complainant is the owner of United States trademark registration number 1,082,464 registered on July 17, 1978 for the mark "Marble-Mania". The registration was renewed for an additional ten years on January 17, 1998.

Marble-Mania has been in continuous use since January of 1976 in connection with the publication of a quarterly newsletter. In addition, the mark has been used in connection with displays of marbles donated by Complainant to the Smithsonian Institute, The Corning Museum of Glass and the Wheaton Village Museum. The mark has also been used as the title of a book on marbles and marble history which was the result of a ten-year effort by Complainant to photograph marble collections throughout the world. Complainant holds the copyright on that book which contains over 1,300 color photographs and was published by Schiffer Publishing, LTD in 1998.

The mark has become known to the marble collecting public as signifying a non-profit organization.

Complainant enforced its rights in the mark in 1991 against infringement by the American Toy Marble Museum and in 1997 against infringement by the Imperial Toy Corporation.

In addition, it has entered into an license agreement with Creative Athletic Products and Services, Inc. as a means of resolving a dispute regarding registration of disputed marks.

The Respondent is a businesswoman who utilizes the domain name as a commercial website offering collectible and antique marbles for sale and providing appraisal services related to marbles. The Marble-Mania home page states at the top, "This site is independently run and operated and is in no way affiliated with Marble Collectors Society of America (MCSA) or its newsletter publication "Marble-Mania."

Respondent is a member of the Complainant society having joined in April of 1997. She remains a member and has regularly received Complainants quarterly newsletter at least one issue of which has contained a notice that advises readers of Complainants rights and its mark. Respondent also purchased a copy of the book published by Complainant entitled "Marble-Mania".

Upon learning of the registration of the domain name, Complainant notified Respondent by e-mail and registered letter objecting to such use. It was after receipt of this e-mail, (Respondent refused to accept the registered letter) that the disclaimer was put on the Respondent’s website home page, as set out hereinabove.

The exact difference between the domain name registered by Respondent and Complainants mark is:

marblemania.com.

Marble-Mania

It is to be noted that the who is search hard copy, Plaintiff’s Annex 7, shows the registered domain name in all caps as "MARBLEMANIA.COM". Complainant’s Trademark is MARBLE-MANIA. On the who is identification page, the only difference between the two names is the hyphen and the .com.

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions.

1. The Complainant contends that the domain name is identical and confusingly similar to the Complainant’s registered service mark.

2. Respondent registered and used the domain name marblemania.com in bad faith. Evidence of the registration of the domain name in bad faith is as follows:

Based upon the findings and conclusions, it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME MARBLEMANIA.COM REGISTERED BY RESPONDENT, BARBARA GORIN BE TRANSFERRED TO COMPLAINANT, MARBLE COLLECTOR’S SOCIETY OF AMERICA, INC.