Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Lynn Ford/Ford's Fancy Fruits, Inc, Raleigh, NC, USA ("Complainant"). The Respondent is Lou Ashcraft Gulf South Limited, Roswell, GA, USA ("Respondent").

The domain name at issue is "fordsfancyfruits.com" registered with Network Solutions.

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

Judge Harold Kalina (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 30, 2000; The Forum received a hard copy of the Complaint on October 27, 2000.

On October 30, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name "fordsfancyfruits.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 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On November 6, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 27, 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@fordsfancyfruits.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 5, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

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

A. Complainant

"The Domain Name: fordsfancyfruits.com is identical to "Ford’s Fancy Fruits" and can easily be confused by the average person to represent the same business."

"To our knowledge, the Respondent has never operated a business using the Ford’s Fancy Fruits name and cannot do so under United States Trademark laws."

"It is clear and apparent that the Domain Name registration was made ‘abusively and in bad faith’ as evidenced by:

B. Respondent

The Respondent did not submit a response in this matter.

Complainant is involved in the business of selling baskets and gift boxes containing fresh fruit.

Complainant registered "Ford’s Fancy Fruits" with the United States Trademark Office on September 5, 1989 under registration number 1,554,961. Complainant has used this name in its business since November 25, 1986.

Paragraph 15(a) of the Rules instructs the Panel to:

As such, the Panel will base its findings and conclusions on the Complaint, UDRP and other legal precedent and reasonable assertions of law. The Panel concludes that the Respondent does not deny the assertions set forth in the Complainant.

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.

The main part of the domain name consists entirely of the Complainant’s registered trademark, "FORD’S FANCY FRUITS." The Panel concludes that the domain name is identical to the Complainant’s registered mark. See Luck's Music Library v. Stellar Artist Management, FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the domain names "lucksmusiclibrary.com" and "lucksmusic.com" are confusingly similar and identical to the Complainant’s common law marks).

On its face, the domain name incorporates in its entirety the words by which Complainant has identified itself in its business operations for many years. No evidence exists to show that Respondent is known by the name "Ford’s Fancy Fruit" or is using the domain name in connection with commercial or non-commercial purposes. The Respondent has not demonstrated any rights to the domain name in question. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess); CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has not demonstrated any rights or legitimate interests in the domain name "TWILIGHT-ZONE.NET" since Complainant had been using the mark TWILIGHT ZONE since 1959).

The Panel concludes that the Respondent cannot claim rights to the domain names under any circumstance set forth under Policy ¶ 4.c.

ICANN Policy ¶ 4.b. lists circumstances of bad faith registration and use in particular, but without limitation. Therefore, UDRP Panels have flexibility in finding bad faith based upon other circumstances. See Educational Testing Service v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy "[I]ndicates that its listing of bad faith factors is without limitation"); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the "totality of circumstances").

The domain name in question contains a mark that is obviously connected with the Complainant. The Respondent did not select the unique combination of the words "FORD", "FANCY", and "FRUIT" arbitrarily. Use of the Complainant’s family and business name by any other person would suggest purposeful registration to infringe upon the Complainant’s marks. The Panel concludes that this conduct amounts to opportunistic bad faith. See America Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, D2000-0809 (WIPO Sept. 6, 2000) (finding that "gameicq.com" and "gameicq.net" are obviously connected with services provided with the world-wide business of ICQ and the very use by someone with no connection with the product suggests opportunistic bad faith). The Panel concludes that the Complainant has met the elements required by Policy ¶ 4.a.(iii).

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name fordsfancyfruits.com be transferred from the Respondent to the Complainant.