Generic Top Level Domain Name (gTLD) Decisions

The Complainant is The Gillette Company , Boston, MA, USA ("Complainant"). The Respondent is S. A. Inc., Jupiter, FL, USA ("Respondent") represented by Joe Mize, Robichaux, Mize & Widsack.

The domain name at issue is foamy.com, registered with Tucows.com, Inc..

The undersigned 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.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 26, 2000; The Forum received a hard copy of the Complaint on November 17, 2000.

On October 27, 2000, Tucows.com, Inc. confirmed by e-mail to The Forum that the domain name foamy.com is registered with Tucows.com, Inc. and that the Respondent is the current registrant of the name. Tucows.com, Inc. has verified that Respondent is bound by the Tucows.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On October 30, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 20, 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@foamy.com by e-mail.

On November 17, 2000, Respondent filed their Response to the domain name Complaint.

On November 22, 2000, Complainant filed their Reply to Respondent’s Response.

On December 1, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

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

A. Complainant

The Complainant contends that the Respondent registered a domain name that is confusingly similar to one of Complainant’s trademarks, that the Respondent has no rights or legitimate interest in the domain name and that the domain name was registered in bad faith.

B. Respondent

The Respondent contends that it can demonstrate that it has a legitimate interest in the domain name and that the name was not registered in bad faith.

The Complainant is well known throughout the world by its trademark "FOAMY" which is the name of one its products, specifically shaving cream.

The Complainant has been using the "FOAMY" mark as early as 1953, and owns the trademark registration for same in the U.S. and approximately 27 other countries.

The Complainant registered the domain name at issue on or about July 1, 1996. The Complainant believes there was an administrative error at Network Solutions, and they were not notified of the renewal deadline, and the registration therefore expired on July 1, 1999.

The Respondent is the owner and operator of DotComEmail.com, a free web based e-mail service, which became operational in January of 1999. When an e-mail address is registered on this service, the customer is given a choice of over 1500 domain names owned by the Respondent at which they may access the e-mail service. These domain names are based on other famous marks, such as Air Jordan, Budweiser, Heineken, to name a few. Sometimes the Respondent couples the famous mark with another descriptive noun to create the domain name.

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 Respondent does not offer any evidence to dispute Paragraph 4(a)(1) of the Policy.

Rights or Legitimate Interests

The Complainant has been known by its famous mark dating back to 1953. The Complainant did not give the Respondent permission to use its mark, nor is the Respondent commonly known by this mark. The Respondent is using the domain name in connection with an offering of free web based e-mail services. Anyone receiving email from a person with such an address may be lead to believe that the Complainant is offering e-mail services, or that the email may have originated from or is somehow sponsored by the Complainant. See Chi-Chi’s Inc. v. Restaurant Commentary, D2000-0321 (WIPO June 29, 2000) (finding that Respondent had no rights or legitimate interest in the domain name even though Respondent stated that it intended to use the domain name for "public comment" on the Internet).

Registration and Use in Bad Faith

The Respondent states that the word "foamy" is a common adjective defined as relating to or resembling foam, or consisting of or covered with foam. The Respondent states that it believed this domain name would appeal to a number of its subscribers. The Respondent claims that its intended use for the domain name was to provide its e-mail customers a choice of domain names at which he or she desires to receive their e-mail.

The Complainant has been using the mark "FOAMY" for almost 50 years, and owns the trademark rights to same. The Respondent also has a history of registering other famous marks coupled with descriptive nouns or pluralizing the mark. Given the Respondent’s history of domain name registrations, a reasonable person could conclude that the Respondent was aware of the Complainant’s mark prior to the registration of the domain name. See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (holding that the Respondent should have known of the Complainant’s marks at the time of registration given the widespread use and fame of the Complainant’s "Deutsche Bank" mark).

Prior to filing this Complainant, the Complainant contacted the Respondent on two occasions in August, 2000, to notify them of their rights in the FOAMY trademark and requesting that they transfer the domain name to them. On August 23, 2000, Complainant’s counsel received a telephone call from Respondent’s counsel who stated that his client will be unwilling to give the name up for free. Counsel for Complainant suggested that Complainant will be willing to compensate the Respondent a small sum for the administrative hassle of transferring the name. The Respondent stated that his client was willing to sell the domain name for $5,000. Complainant’s counsel refused such offer and stated that the Complainant intended to file a proceeding under the Policy.

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name "FOAMY.COM" be transferred from the Respondent to the Complainant.