Generic Top Level Domain Name (gTLD) Decisions

The Complainant is King Edward Technology, Inc., Wilmington, DE, USA ("Complainant"). The Respondent is Disparate Technologies, Inc., Dublin, OH, USA ("Respondent").

The domain names at issue are swisher-sweets.com, and swishersweets.com, registered with Network Solutions.

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

The Honorable Charles K. McCotter, Jr. as Panelist.

The Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 14, 2000; The Forum received a hard copy of the Complaint on September 18, 2000.

On September 18, 2000, Network Solutions confirmed by e-mail to The Forum that the domain names swisher-sweets.com, and swishersweets.com are registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that the Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP. On September 22, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 12, 2000 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@swisher-sweets.com and postmaster@swishersweets.com by e-mail.

On October 13, 2000, pursuant to theComplainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant. The Respondent requests that the Panel make a finding of reverse domain name hijacking.

1. The domain names and the trademark are identical or confusingly similar because each contain only the words "swisher sweets".

1. Both "swisher" and "sweets" are common English language words and cannot be considered the exclusive purview of the Complainant.

2. There is no commercial relationship between Complainant’s mark and Respondent’s intended use of the domain names; therefore no confusion will result.

3. The Complainant’s trademark is limited to the cigar and chewing tobacco trademark class (Class 34, US Class 17).

4. The development of products or services to be offered via the swishersweets.com domain name is a planned future business of the Respondent.

1. The Complaint is based upon the trademarks SWISHERSWEETS for cigars and chewing tobacco. The SWISHERSWEETS trademark is the subject of two registrations, U.S. Trademark Registration Nos. 1,729732 and 735,560.

2. The domain names and the trademark are identical or confusingly similar because each contain only the words "swisher sweets". A consumer will see no difference between the presence or absence of the space or the hyphen between the words SWISHER and SWEETS. The Respondent does not own or operate any business which bears the name SWISHERSWEETS, SWISHER-SWEETS, or SWISHER SWEETS.

3. The Complainant has been using the trademark SWISHER SWEETS for tobacco products for over forty (40) years. This use has been continuous in the United States, and sales of tobacco products bearing the trademark SWISHER SWEETS have been substantial. Tobacco products are sold under the SWISHER SWEETS trademark by King Edward Technology's licensee, Swisher International, Inc.

4. The Respondent offered to sell both domain names to the Complainant for a sum of $25,000. This amount is well in excess of the cost for registration. The Respondent has the domain names listed on a "Domain Sale" site.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be canceled or transferred:

1. the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

The Complainant holds a federal trademark registration for SWISHER SWEET and has used the mark in commerce for over forty (40) years in connection with tobacco products. The domain names at issue incorporate entirely Complainant’s trademark and, therefore, are identical to a trademark in which the Complainant has rights.

The Respondent asserts that it registered the domain names for future business opportunities, which will be "removed from the tobacco industry." Also, Respondent states that if it decides to abandon its future business opportunities using the domain names in question, the names are valuable corporate assets, and selling them would be a legitimate business activity. Respondent does not own or operate a business which bears the name "swishersweets", "swisher-sweets", or "swisher sweets".

The Respondent does not have rights or legitimate interests in the domain names. The Respondent has not shown demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute.

The domain name has been registered and is being used in bad faith. The Respondent registered the domain name primarily for the purpose of transferring the domain name to the Complainant or a competitor of the Complainant for consideration in excess of out-of-pocket expenses. Randstad General Partnet, LLC v. Domains For Sale For You, D2000-0051 (WIPO Mar. 24, 2000) (finding bad faith where the Respondent offered the domain name for sale on its website for $24,000).

The Respondent is not entitled to a finding of reverse domain name hijacking.

Based upon the above findings and conclusions, I find in favor of the Complainant. Therefore, the relief requested by the Complainant pursuant to Paragraph 4.i of the Policy is Granted. The Respondent shall be required to transfer to the Complainant the domain names swisher-sweets.com and swishersweets.com.