Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant Barney’s Inc. ("Barney’s") is a New York corporation, with its principal place of business located at 575 Fifth Avenue, 11^th Floor, New York, NY 10017 USA.

Respondent B.N.Y. Bulletin Board ("BNY") is an unknown type of entity with its mailing address located at P.O. Box 1125, Germantown, Maryland 20874 USA. Respondent apparently has no place of business from which it operates and appears to have only a virtual existence.

The domain name at issue is <barneysnewyork.com>. The registrar is Network Solutions, Inc. (the "Registrar") 505 Huntmar Park Drive, Herndon, Virginia 20170-5139 USA.

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant on February 11, 2000 by email and on February 15, 2000 in hardcopy. The Complainant paid the required fee.

The Center sent to the Registrar a request for verification of registration data. On February 15, 2000, the Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute and that <barneysnewyork

.com> is registered in the Respondent's name.

On February 16, 2000, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant.

On February 16, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). On February 16, 2000, the Center sent to the Respondent, with a copy to the Complainant, a notification of the administrative proceeding together with copies of the Complaint. This notification was sent by the methods required under paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is February 16, 2000.

On March 7, 2000, Respondent filed a Request for Extension of Time and Claimant’s representative filed an objection to any extension of time. On March 9, 2000, the Center sent Notification of Respondent’s Default. On March 11, 2000, Respondent filed a Statement Identifying Respondent’s Representative. On March 14, 2000, the Center received Respondent’s Response.

On March 20, 2000 after receiving a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center notified the parties of the appointment of a single-arbitrator panel consisting of Richard W. Page, Esq. (the "Presiding Panelist").

The Presiding Panelist finds that there will be no prejudice to the Claimant by considering the late-filed Response. Therefore, the request for extension of time to file the Response is granted.

Complainant owns the trademark and service mark BARNEY’S NEW YORK. Complainant has used the mark BARNEY’S NEW YORK in the United States, Japan and Singapore in connection with clothing, clothing accessories, footwear, cosmetics and retail store services featuring clothing, clothing accessories, footwear, cosmetics, luggage, gift items, electric appliances, antiques and stationery ("Complainant’s Goods and Services").

Complainant has registered its BARNEY’S NEW YORK mark in the United States, Hong Kong and Japan. These registrations are currently valid and subsisting.

Since at least as early as 1973, Complainant has used its BARNEY’S NEWYORK mark in the United States. Complainant’s flagship BARNEY’S NEW YORK retail store, in Manhattan, is considered to be among New York City’s premier department stores. Affiliated BARNEY’S NEW YORK shops and stores are located in Beverly Hills, California, in Chestnut Hill, Massachusetts, in Chicago, Illinois, in Tokyo, Japan, in Yokohama, Japan, and in Singapore. The BARNEY’S NEWYORK mark is famous as an indicator of the source of Complainant’s Goods and Services.

Complainant’s trademark BARNEY’S NEW YORK is registered with the United States Patent and Trademark Office, under Registration Nos. 1,332,229 and 1,620,003. Under Section 7(b) of the U.S. Trademark Act, Complainant’s registration is "prima facie evidence of . . . the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark" in commerce that is regulated by United States law. Under Section 33(b) of the Act, a registration that has become incontestable is "conclusive evidence of . . . the registrant’s exclusive right to use the registered mark in commerce." Complainant’s two registrations are incontestable, in accordance with Section 15 of the Lanham Act.

Complainant has not licensed Respondent to use its trademark. Respondent does not have any relationship with Complainant that would entitle it to use Complainant’s trademark.

On August 2, 1998, Respondent registered the domain name <barneysnewyork.com> with the Registrar. Respondent has not yet used or made any demonstrable preparations to use the domain name or any name corresponding to the domain name in connection with the bona fide offering of goods or services. There is currently no content located at the www.barneysnewyork.com website. Respondent has no business activity under the domain name <barneysnewyork.com>. Respondent has never been called by or commonly known by the phrase "barney’s new york," or any reasonable facsimile thereof, as an individual, a business or other organization.

On July 7, 1999, Complainant initiated dispute proceedings concerning to the domain name <barneysnewyork.com> under the Network Solutions Domain Name Dispute Resolution Policy that existed prior to January 1, 2000.

On September 3, 1999 pursuant to Section 9 of that policy, the domain name subject to this dispute was placed on "hold." Respondent admits that the domain name <barneysnewyork.com> has not been used, and cannot be used because of the "hold" status imposed by the Registrar. Respondent further admits that there is currently nor content located at the www.barneysnewyork.com website.

The parties each accuse the other of being unresponsive to communications regarding this dispute. Respondent asserts that it has presented a settlement proposal, but has not sought payment for the domain name <barneysnewyork.com>.

1. Complainant contends that the domain name <barneysnewyork .com> is identical with and confusingly similar to Complainant’s trademark BARNEY’S NEW YORK pursuant to the Policy paragraph 4(a)(i).
2. Complainant contends that Respondent has no rights or legitimate interest in the domain name <barneysnewyork.com> pursuant to the Policy paragraph 4(a)(ii).
3. Complainant contends that Respondent registered and is using the domain name <barneysnewyork.com> in bad faith in violation of the Policy paragraph 4(a)(iii).
4. Respondent presented no evidence challenging that the domain name <barneysnewyork.com> is identical with or confusingly similar to the trademark BARNEY’S NEW YORK.
5. Respondent argues that the registration of a domain name without use or demonstrable preparation to use is sufficient to establish its rights or legitimate interest in <barneysnewyork.com> domain name.
6. Respondent argues that it has undertaken no activity using the domain name <barneysnewyork.com> and has posted no content on the www.barneysnewyork.com website, thus precluding Respondent from acting in bad faith.

Identity or Confusing Similarity.

The domain name <barneysnewyork.com> is identical to Complainant’s BARNEY’S NEW YORK trademark and service mark. That Respondent has omitted the punctuation and spacing that appears in Complainant’s mark from the domain name does not defeat this identity. See e.g., In re Sears, Roebuck and Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (CROSSOVER and CROSS-OVER held "legally identical in sound and appearance by Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office); Harvey Hubbell, Incorporated v. Red Rope Industries, Inc., 191 USPQ 119, 123 (TTAB 1976) (DATALOK and DATA. LOK held "legally identical" by Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office). Neither can the inclusion of the top level domain designator ".com" in the domain name serve to distinguish that name from Complainant’s mark in any way. The top level domain designator ".com" simply functions to indicate that the domain name owner purports to be a business.

Furthermore, Respondent has not contested that the domain name <barneysewyork.com> is identical to and confusingly similar with the trademark BARNEY’S NEW YORK. Therefore, the Presiding Panelist finds that the domain name at issue is identical to and confusingly similar with Complainant’s trademark BARNEY’S NEW YORK.

Rights or Legitimate Interest.

Respondent admits that it has made no use of the domain name <barneysnewyork .com> nor has it placed content on the www.barneysnewyork.com website.

Respondent admits that it does not have the right to use Claimant’s trademark and service mark BARNEY’S NEW YORK and that commercial use of the marks would violate the trademark laws of the United States.

Respondent argues, in essence, that registration of a domain name is sufficient to establish rights or a legitimate interest in the domain name. The Presiding Panelist finds that registration of a domain name is not, by itself, sufficient to establish rights or a legitimate interest in the domain name. Some bona fide activity using the domain name must be undertaken or content placed upon a related website to establish such rights or legitimate interest. Respondent admits that it has undertaken no such bona fide activity or placed such content. Therefore, the Presiding Panelist finds that Respondent has no rights or legitimate interest in the domain name <barneysnewyork.com>.

Bad Faith.

Respondent argues that the lack of any commercial activity using the domain name or a related website protects Respondent from having registered or used the domain name in bad faith.

Under Section 22 of the United States Trademark Act, the Respondent is charged with knowledge of Complainant’s rights in its trademark. Section 22 of the Trademark Act states that "(r)egistration of a mark on the principal register . . . shall be constructive notice of the registrant’s claim of ownership thereof. As a matter of the United States trademark law, it must therefore be presumed that Respondent was on notice of Complainant’s rights in the BARNEY’S NEW YORK mark prior to registering the domain name <barneysnewyork.com>. Complainant’s high profile presence in the retail market and the fame of Complainant’s mark would further tend to indicate that Respondent was aware of Complainant’s rights therein.

Respondent admits that it is trying to negotiate a resolution with Claimant of the present dispute. Respondent also asserts that it has not sought payment for the domain name. The Presiding Panelist infers from these admissions that Respondent has engaged in negotiations for monetary or non-monetary consideration for relinquishing the domain name <barneysnewyork.com>.

Based upon the actual or imputed knowledge of the prior registration of an identical or confusingly similar trademark together with a willingness to accept consideration for transfer of the domain name, the Presiding Panelist finds that the registration and use of the domain name at issue is in bad faith.

The Presiding Panelist concludes (a) that the domain name <barneysnewyork.com> is identical with and confusingly similar to the United States mark BARNEY’S NEW YORK registered by Claimant, (b) that Respondent has no rights or legitimate interest in the domain name and (c) that Respondent registered and used the domain name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <barneysnewyork.com> be transferred to Complainant Barney’s, Inc.

Richard W. Page
Presiding Panelist

April 2, 2000