Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Cluett, Peabody & Co., Inc. , New York, NY, USA ("Complainant") represented by Mary Luria, Davis & Gilbert. The Respondent is Sanford Business Writing Service, Altamont, NY, USA ("Respondent").

The domain name at issue is sanforized.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 25, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "sanforized.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 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 26, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 15, 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@sanforized.com by e-mail.

On November 28, 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 materials submitted by the parties, whether timely or not.

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

A. Complainant

1. The domain name in issue is identical and confusingly similar to Complainant’s worldwide famous and distinctive trademark.

2. Respondent admittedly knew of Complainant’s famous and distinctive mark when he requested the domain name in issue. He claims that the domain name is a play on and variation of his last name "Sanford." There is no evidence that he has made any demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services. Respondent, accordingly, has no legitimate interest in or rights to the domain name.

3. Respondent has registered the domain name in bad faith. He was fully aware of the famous and distinctive mark, and his motivation was to trade on the goodwill of the mark. He has demanded, $45,000.00 for the transfer of the domain name.

B. Respondent

1. Respondent does not contend that the domain name is not identical to Complainant’s trademark.

2. Respondent’s last name is "Sanford," and the domain name registered by him is a "clever play on his own name." He ultimately will use the domain name for a legitimate business purpose, i.e., "Sanford Business Writing Service."

3. In a prior decision involving the same domain name and the same parties, Judge William H. Andrews (Retired) in Decision No. FA0005000094723 (June 15, 2000), held that Complainant had failed to show that Respondent had acted in bad faith, and there is no new evidence to the contrary.

1. The domain name in issue is identical to and confusingly similar to Complainant’s world-famous and distinctive trademark.

2. The trademark "sanforized" was first registered with the United States Patent and Trademark Office by Complainant on December 16, 1930, and it is also registered in 149 countries.

3. Respondent was fully aware of Complainant’s famous and distinctive mark when he registered the domain name in issue with Network Solutions on September 21, 1999, prior to any attempted registration by Complainant.

4. There was a previous decision in this matter by Panelist City Court Judge William H. Andrews (Retired), rendered on June 15, 2000, wherein it was held that Complainant had not proved that Respondent registered and used the domain name in issue in bad faith. The Panelist further stated, however:

Preliminarily, it must be determined whether the decision by Judge Andrews acts to bar any further consideration of this matter by virtue of the doctrine of res judicata or claim preclusion as it is called in the Restatement of the Law of Judgments 2d (1982).

Fortunately, we need not venture into this labyrinth This is because Judge Andrews expressly reserved the right of Complainant to recharge bad faith registration and use of the domain name in issue. As will be seen, this Panelist finds that on the record before him Respondent registered and necessarily will use the domain name in bad faith.

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.

Respondent has conceded this issue and Judge Andrews so found.

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

It is of interest to note that the recently enacted 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. This higher level of protection was not considered by Judge Andrews.

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 name in issue was endorsed and sponsored by Complainant, even though the product, on the one hand, and the service, on the other, are completely different. This was not considered by Judge Andrews.

In addition, to the demonstration of bad faith by the application of ACPA, and subparagraphs (iv) of Section 4b of the Policy, there is a legal presumption of bad faith, when, as conceded here, Respondent was fully aware of Complainant’s famous and distinctive trademark.

In Interstellar Starship Services, Ltd. V. Epix, Inc. (CA 9^th, 1999) [1999] USCA9 357; 184 F.3d 1107, 1111, it was said:

This presumption was not considered by Judge Andrews.

Finally, it may be argued that Respondent has not used the domain name in issue in bad faith, even though it was so registered.

The Panelist heretofore has determined that Respondent has no rights or legitimate interest in the domain name, and that it has registered the name in bad faith. It makes no sense whatever to wait until it actually "uses" the name, when inevitably, when there is such use, it will create the confusion described in the Policy.

Under the circumstances, a preliminary, mandatory injunction was granted by a federal court requiring the transfer of a domain name even though a website had not yet been opened. (Green Products Co. v. Independence By-Products Co. (N.D. Iowa 1997) 992 F.Supp. 1070.) The threatened harm is "use."

The Panelist, thus, has determined that there is bad faith use by Respondent even though a website may not as yet be activated.

Judge Irving H. Perluss (Retired)