Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Great American Knitting Mills Resource Corp. , New York, NY, USA ("Complainant") represented by Mary Luria, Davis & Gilbert LLP. The Respondent is The Sock Company, Montvale, NJ, USA ("Respondent") represented by Stephen H. Sturgeon, Stephen H. Sturgeon & Associates.

The domain names at issue are "gold-toe-socks.com" and "gold-toe.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.

Judge Irving H. Perluss (Retired) is the Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 19, 2000; The Forum received a hard copy of the Complaint on October 23, 2000.

On October 20, 2000, Network Solutions confirmed by e-mail to The Forum that the domain names "gold-toe-socks.com" and "gold-toe.com" are registered with Network Solutions and that the Respondent is the current registrant of the names. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Dispute Resolution Policy ("Policy").

On October 25, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 14, 2000 by which Respondent could file a Response to the Complaint, was transmitted to 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@gold-toe-socks.com and postmaster@gold-toe.com by e-mail.

On November 27, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

The Panelist has considered all submissions from the parties, timely or not.

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

A. Complainant

1. The domain names in issue are identical and confusingly similar to the Complainant’s famous and distinctive Gold-Toe mark. It has used the mark in commerce since 1934; it has registered and re-registered its mark with the United States Patent and Trademark Office commencing on May 26, 1964; and it has spent substantial sums in monitoring and developing goodwill in its mark.

2. Respondent has no right or legitimate interest in the domain names because Respondent is no longer an authorized retailer and, accordingly, it cannot utilize Complainant’s famous and distinctive mark in merchandising its wares.

3. Respondent has acquired and used the domain name at issue in bad faith because it intentionally has attempted to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark, as to the sources, sponsorship, affiliation and/or endorsement of Respondent’s website. Such registration and use of the domain name constitutes a false designation or origin, and a false description and representation as to a relationship between Complainant and Respondent.

B. Respondent

1. Complainant cannot prohibit a retailer from selling a product it rightfully owns, but it only can refuse to sell directly to the retailer. The words "gold toe" are an identification and an integral part of the product sold, and no authorization is needed.

2. Complainant has offered no evidence to substantiate its charges that through the use of the domain names Respondent has acted in bad faith by diverting consumers looking for Gold-Toe products. To the contrary, the intent and practice of Respondent was to market "gold toe" merchandise in conformance with customary retail marketing methods.

3. The domain names "GOLD-TOE.COM" and "GOLD-TOE-SOCKS.COM" were purchased by Respondent on April 19, 2000, prior to any attempted registration by Complainant and, accordingly, Respondent has rights and a legitimate interest in the domain names.

1. The Complainant owns trademark registrations for the mark GOLD TOE® (registered May 26, 1964, No. 770,389, July 6, 1993, No. 1,780,355, and September 26, 2000, No. 1,837,930). The trademark GOLD TOE® has been used in connection with the sale of socks since 1934 and is a famous and distinctive mark associated with quality footwear.

2. Respondent is a seller of many brands of socks. Respondent purchased the domain names "gold-toe-socks.com" and "gold-toe.com" on April 19, 2000. Respondent has registered many other domain names that incorporate registered trademarks, including but not limited to "nikesocks.com," "strideritesocks.com," and "thorlosocks.com."

3. Respondent is not currently authorized by Complainant to use the mark GOLD TOE® in connection with the sale of socks. Respondent was a former authorized distributor of GOLD TOE® socks, whose distributorship was terminated on September 9, 1999. It does sell GOLD TOE® socks acquired from sources other than Complainant.

4. Complainant sells socks through its web site, www.goldtoe.com. Respondent sells socks on a web site that links to "gold-toe.com" and "gold-toe-socks.com".

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 cancelled 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;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

There is no question but that the domain names "gold-toe.com" and "gold-toe-socks.com" incorporate, refer to, and are practically identical to the famous and distinctive GOLD TOE® trademark registered by Complainant in connection with the sale of boy’s and men’s socks and women’s hosiery.

Because Complainant’s trademark was registered with the United States Patent and Trademark Office long before Respondent acquired the domain names in issue, Respondent would have rights and a legitimate interest in the domain names only if its use of the domain names was not in bad faith.

It is of interest to note that the Anticybersquatting Consumer Protection Act ("ACPA") [15 U.S.C. §1125(d)] protects owners of a famous and distinctive mark (as here) from a person who registers or uses a domain name that is confusingly similar to the mark or dilutive of the mark, if such person has a bad faith intent.

As will be seen hereafter, the Panelist necessarily has determined that such bad faith is present here.

Section 4b of the Policy sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith. Subparagraph (iv) of Section 4b provides:

The words "source, sponsorship, affiliation, or endorsement" are particularly apt here. Inevitably, consumers would conclude that the domain names in issue were endorsed and sponsored by Complainant.

If there was any doubt, Respondent’s acquisition of the domain names after its authorization as a retailer of Gold Toe products was terminated raises a presumption of bad faith.

While Respondent may continue to sell Gold Toe socks acquired from various sources, it is not an "authorized" retailer of Gold toe socks, and it is improper to utilize domain names implying to the contrary.