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GUCCIONE MEDIA, LLC COMPLAINANT vs. LISTENTOTHIS
RESPONDENT DECISION
The above-entitled matter came on for an administrative hearing on May 10, 2000, before Paul A. Dorf, Arbitrator, on the Complaint of Guccione Media, LLC, by Alexandra Nicholson, Esq., Jeffrey H. Blum, Esq., Matthew A. Leish, Esq. and Davis Wright Tremaine, LLP, hereafter "Complainant" against ListenToThis, hereafter "Respondent." There was no representation on behalf of Respondent. Upon the written submitted record, the following DECISION is made:
PROCEDURAL FINDINGS
Domain Name: GEARMAGAZINE.com Domain Name Registrar: Network Solutions Domain Name Registrant: ListenToThis Date of Domain Name Registration: December 19,1999 Date Complaint Filed: April 11, 2000 Response Due Date: May 3, 2000 The Complainant filed its complaint with the National Arbitration Forum on the above-referenced date. In compliance with the rules, The Forum transferred the Complaint to the Respondent on April 13, 2000. The Respondent did submit a response to The Forum within twenty (20) days pursuant to the rules.
That the Respondent registered the domain name with Network Solutions, the entity that is the Registrar of the domain name. By registering its domain name with said Registrar, Respondent agreed to resolve any dispute regarding its domain name through ICANN'S Uniform Domain Name Dispute Resolution Policy.
FINDINGS OF FACT
The manner in which the domain name(s) are identical or confusing are set out herein below: Complainant is the owner and publisher of Gear Magazine, hereafter "Gear", which was launched in July 1998. Guccione Media registered the mark GEAR in the United States Patent and Trademark Office on November 3, 1998 and is the owner of U.S. Registration 2,202,166. Prior to the registration, Guccione Media filed an intent-to-use application on March 21, 1997. Guccione Media is also the owner of a second pending application for GEAR in stylized form for the same goods under Application Serial Number 75/886,771, which has been published for opposition. Since July 1998, Complainant has continuously and extensively used this mark in interstate and foreign commerce in connection with the sale of goods and services, including but not limited to the goods listed in the registration , namely: General Interest Magazine for Men, in Class 16. Gear is aimed at a primarily youthful, sophisticated male audience. Gear is widely distributed and recognized in the U.S. and throughout the world, and Complainant has developed a valuable property interest in the GEAR mark in connection with Gear and various related uses. Well after Gear became a popular national magazine and after the GEAR mark received a federal trademark registration, Respondent registered the domain name GEARMAGAZINE.COM, as set forth above. On or about January 20, 2000, approximately one month after Respondent registered the domain name Gear received a letter from Respondent informing them that he had created a "website preview" at GEARMAGAZINE.COM. A copy of the website was also attached to his letter, which revealed that Respondent had taken photographs and text directly from Gear without authorization and posted them on the site under the heading "Gear Magazine's Online Gateway." In his proposal, Respondent offered Gear the options of either hiring him to run GEARMAGAZINE.COM as the official website of Gear, purchasing the website from him, or using the website while "remain[ing] entirely independent from GEARMAGAZINE.com." Complainant's attorneys promptly wrote to Respondent and informed him that his actions in registering the domain name and then offering to sell or rent the site to Complainant were a blatant attempt to profit from Gear's fame and a classic case of cybersquatting. They also demanded that Respondent promptly remove all content relating to Gear from the website, immediately transfer the domain name to "Gear" on or in connection with the website and provide written confirmation of his agreement not to use the GEAR mark or any variation thereof the in the future. In response to Complainant's attorneys' correspondence, Respondent sent a letter dated January 26, 2000 to Gear asserting that his actions had been "misinterpreted," claiming that he had contacted Gear about establishing a website and was told to "put together a presentation" and that the website was "simply an example for the proposal that [Gear] requested. Complainant frequently receives unsolicited proposals from would-be-business partners and services providers, all of whom are told to "submit a proposal." Respondent also proposed transfer of the domain name to Gear, provided that Gear reimburse Respondent for the investment costs of $1,980. On January 28, 2000, in a telephone conversation between Complaint's attorney and Respondent, Complainant declined to pay Respondent's "investment costs" and reiterated Complainant's insistence that Respondent relinquish control over the domain name, offering to arrange for the transfer of the name and to reimburse Respondent for his original registration costs. Respondent again stated that his intentions had been misinterpreted, that "he didn't want to own anything, and then asked for an opportunity to consult with legal counsel before the transfer and promised to respond the following week. Respondent did not respond as promised and did not answer telephone messages left for him. On February 7, 200, Respondent sent a letter contradicting his pervious statements. Respondent now asserted that the site had nothing to do with Gear magazine, but is a website featuring various articles on audio gear published by several music magazines. Respondent closed by stating that he intended to retain ownership of the domain name and suggested that Complainant had other options open to register other domain names. On April 4, 2000, a search of the GEARMAGAZINE.com website by Complainant revealed a blank black screen, making it obvious that the website was not being used for any purpose.
CONCLUSIONS
The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected and being impartial, the undersigned makes the following findings and conclusions:
The undersigned has reviewed all the evidence presented in this case by both parties and has concluded to believe the facts and circumstances as set forth by the Complainant. For that reason, the undersigned decides that:
It is therefore just, right and proper that the domain name GEARMAGAZINE.com be transferred to the Complainant.
DECISION
Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME GEARMAGAZINE.COM REGISTERED BY RESPONDENT, LISTENTOTHIS, BE TRANSFERRED TO COMPLAINANT, GUCCIONE MEDIA, LLC.
Dated: May 11, 2000, Judge Paul A. Dorf, (ret.), Arbitrator
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