Generic Top Level Domain Name (gTLD) Decisions

Due Date for a Response: February 26, 2000

Respondents have not submitted a Response to the Complaint. After reviewing the Complaint for administrative compliance, The National Arbitration Forum, hereinafter "The Forum," transferred the Complaint to the Respondents in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified the above Registrar, ICANN and the Complainant that the administrative proceeding had commenced.

Respondents had registered the domain name in issue with Network Solutions, the entity that is the Registrar of the domain name. By registering their domain name with Network Solutions, Respondents agreed to resolve any dispute regarding its domain name through ICANN's Uniform Domain Name Dispute Resolution Policy.

Respondents did not submit a Response to The Forum within twenty [20] days pursuant to Rule 5(a).

FINDINGS OF FACT

1. The Complainant is a nationally renowned manufacturer and retailer of clothing, accessories, sporting goods and other items sold in connection with its BIG DOG trademarks.

2. The Complainant has spent considerable time and money promoting its e-commerce business, which is rapidly growing. It utilizes an Internet website located at www.bigdogs.com.

3. The Complainant has since 1984 utilized its BIG DOG trademarks. It has registered with the United States Patent and Trademarks Office, the trademark "BIG DOG," Nos. 2,000,495 and 2,257,394 on September 17, 1996, and June 29, 1999, respectively. It also has registered trademarks which utilize the name "BIG DOG," such as "BIG DOGS," "BIG DOG SPORTSWEAR," "BIG BIG DOGS," and "LITTLE BIG DOGS."

4. The Complainant has utilized "bigdogs.com" since 1996, and its trademark application to register the trademark is presently pending before the United States Patent and Trademarks Office.

5. Respondents have registered at least fifty [50] domain names, including the domain name "bigdog.com" here in issue. Respondents utilize these names to funnel Internet traffic to its own website located at www.cyberlinks.com without regard to trademark registration.

6. The domain name in issue is identical to the one of Complainant's federally registered trademark. Moreover, it is confusingly similar to other BIG DOG registered trademarks.

7. Respondents have demonstrated no rights or legitimate interest in the domain name, but, to the contrary, they are creating confusion and utilizing the domain name to divert and usurp BIG DOG customers.

8. Respondents have acted in bad faith in that their sole purpose in using the domain name is to divert Internet users to its website. It does this by exploiting the Internet users' association of the Complainant's trademarks with the Complainant's business. Respondents have registered at least fifty [50] domain names, some of which are the registered trademarks of other entities. It necessarily is found, accordingly, that the registration of the domain name here in issue by Respondents was in bad faith.

9. Complainant's prayer for relief seeks that the domain name "bigdog.com" be transferred from Respondents to Complainant.

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:

1. The domain name "bigdog.com" registered with Network Solutions on July 10, 1997, is confusingly similar to the Complainant's trademarks. Indeed, the domain name is identical to the prior registration of the trademark "BIG DOG," with the United States Patent and Trademarks Office by Complainant on September 17, 1996.

2. Respondents are not making a legitimate noncommercial or fair use of the domain name, for they clearly are seeking commercial gain by misleadingly diverting consumers to their own website.

3. Respondents have registered the domain name primarily for the purpose of disrupting the business of the Complainant. Additionally, Respondents have acted in clear violation of Complainant's trademark rights. Moreover, Respondents have a pattern of registering multiple domain names which are the registered trademarks of others. In so doing, inter alia, Respondents have acted in bad faith.

DECISION

Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

IT IS DIRECTED THAT THE DOMAIN NAME "bigdog.com" REGISTERED BY RESPONDENTS Frank Day, Red River Farms, Inc. BE TRANSFERRED TO COMPLAINANT Big Dog Holdings, Inc. dba Big Dog Sportswear.

Dated: March 9, 2000, by Judge Irving H. Perluss [Retired], Arbitrator.