Generic Top Level Domain Name (gTLD) Decisions

CLUETT, PEABODY & CO., INC
COMPLAINANT,

vs.

SANFORD BUSINESS WRITING SERVICE
RESPONDENT.

DECISION
NO.: FA0005000094723

The above-entitled matter came on for an administrative hearing on June 6, 2000 before the undersigned on the Complaint of CLUETT, PEABODY & CO., INC., hereafter Complainant, against SANFORD BUSINESS WRITING SERVICE, hereafter Respondent.  Scott R. Coleman, Esq., of Cluett, Peabody & Co. Inc. represents Claimant. Upon the written submitted record, the following decision is made:

PROCEDURAL FINDINGS

Domain Name:                         SANFORIZED.COM

Domain Name Registrar:                       Network Solutions, Inc.

Domain Name Registrant:                     Sanford Business Writing Service

Date of Domain Name Registration:      September 21, 1999

Date Complaint filed:                            May 8, 2000

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)[1]^{[1] and Rule 4(c):                                      May 8, 2000}

Due Date for a Response:                     May 30, 2000

Respondent did not file a response as required by Rule 5(a).

After reviewing the Complaint and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORM (the Forum) forwarded the Complaint to the Respondent on May 8, 2000 in compliance with Rule 2(a), and the administrative proceeding commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified NETWORK SOLUTIONS, INC., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceeding had commenced. Respondent did not file a response within the twenty-day period as required by Rule 5(a).

On September 21, 1999, Respondent registered the domain name SANFORIZED.COM with Domain Name Registrar Network Solutions, Inc., the entity that is the Registrar of the domain name. On May 3, 2000, the Domain Name Registrar Network Solutions, Inc. verified that Respondent is the Registrant for the domain name SANFORIZED.COM and that further by registering its domain name with Network Solutions, Inc., Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules and Policies.

FINDINGS OF FACT

The undisputed evidence establishes that:

1.         The trademark SANFORIZED is closely associated with Cluett, Peabody & Co. Inc.

2.         Complainant’s trademark is associated with PIECE GOODS OF COTTON LINEN, SILK, RAYON AND COMBINATIONS THEREOF.

3.         Complainant registered the trademark SANFORIZED with the U.S. Patent and                        Trademark Office on December 16, 1930 (Reg. Num. 278,395), and continues to own and    promote the trademark presently. Complainant also owns the trademark SANFORIZED,          along with other variations of the word in many other countries outside the United States.

4.         Respondent registered the domain name SANFORIZED.COM on September 21, 1999. The domain name is identical to Complainant’s trademark SANFORIZED.

5.         Respondent has not completed its webpage, and the website has displayed the words under construction for the last six months.

PARTIES’ CONTENTIONS

1.         Complainant contends that Registrant’s domain name SANFORIZED.COM is identical to Complainant’s SANFORIZED trademark.

2.         Complainant implies that Respondent has no right or legitimate interest in the disputed domain name.

3.         Complainant implies that Respondent’s registration and use, or lack of, the domain name            indicates bad faith on the part of Respondent.

4.         Respondent has not contested that the domain name SANFORIZED.COM is identical to Complainant’s trademark.

5.         Respondent has not contested that it has no right or legitimate interest in the disputed domain name.

6.         Respondent has not contested that it has acted in bad faith in registering and using the domain name.

DISCUSSION AND CONCLUSIONS

To obtain a relief under 4(a) of the Policy, the Complainant must prove each of the following:

1)         That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2)         That the Respondent has no rights or legitimate interest in the domain name; and

3)         That the domain name has been registered and used in bad faith.

1.)  Similarity Between Registrant’s Domain Name and Complainant’s Trademark.

It is clear that the domain name registered by Respondent is identical to the registered trademark owned by Claimant. There is no difference whatsoever between the domain name SANFORIZED.COM and the trademark SANFORIZED. The .COM is not significant when determining similarity. The Arbitrator finds that the domain name is identical to Complainant’s registered trademark.

2.) Respondent’s Right or Legitimate Interest in the Domain Name.

Under 4(c) of the Policy, evidence of a registrant’s rights or legitimate interest in the domain name includes:

(i)         Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

(ii)        An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

(iii)       Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

The Respondent has made no showing with respect to any of the above factors. In contrast, Complainant has asserted that Respondent has no rights or legitimate interest in the domain name by providing evidence that it has sole and exclusive rights to the word SANFORIZED.  Because the Respondent failed to assert any affirmative evidence that it has a legitimate or legally established right to use the domain name, the Arbitrator finds that Respondent has no rights or legitimate interest in the domain name SANFORIZED.COM.

3.) Respondent’s Bad Faith Registration and Use of the Domain Name.

Under 4(b) of the Policy, evidence of a respondent’s bad faith registration and   use includes:

(i)         circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or           

(ii)        you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of conduct; or

(iii)       you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)       by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Pursuant to 14 of the Rules, the Arbitrator shall draw inferences as deemed appropriate when the Respondent fails to respond to a complaint, and the Arbitrator shall make a decision based on the complaint only.   

Based upon the evidence submitted and despite the Respondent’s failure to respond, the Arbitrator finds that the Complainant has failed to meet its burden of proving that Respondent’s registration and use of the domain name SANFORIZED.COM is in bad faith.

There is no evidence that Respondent intends to:

(i) sell, rent or otherwise transfer the domain name registration to Complainant,

(ii) prevent Complainant from reflecting its trademark SANFORIZED in a corresponding domain name, or that Respondent has engaged in a pattern of conduct of doing so,

(iii) disrupt the business of the Complainant. In fact, Complainant is a producer of Piece goods of cotton linen, woolen, silk, rayon and combinations thereof, while Respondent (apparently) is a business writing service, and thus do not appear to be competitors or to compete in the same market.

(iv) attract users and customers to its website by confusingly associating itself with the Complainant.

The only assertion of bad faith that Claimant offers is that Registrant has not completed its webpage, and has listed only under construction announcements for the last six months. However, a website that is under construction, even for six months or longer, does not necessarily indicate that Respondent is acting in bad faith, and does not negate the conclusion that it may honestly intend to use the webpage for its own legitimate purposes in the future. Based upon the present record, it may be reasonably inferred that Respondent intends to use the domain name and corresponding website for legitimate business purposes.

Although Respondent’s domain name is identical to the registered trademark belonging exclusively to the Claimant, creating a likelihood of confusion for Internet users and customers,  the Claimant has failed, pursuant to Rule 4(a)(3), to show that Respondent acted in bad faith and is therefore precluded from an award of the domain name in this proceeding.           

DECISION

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

THE UNDERSIGNED ARBITRATOR DIRECTS THAT THE REGISTRATION OF THE DOMAIN NAME SANFORIZED.COM, REMAIN IN THE OWNERSHIP OF THE RESPONDENT, SANFORD BUSINESS WRITING SERVICE. THE CLAIMANT’S REQUEST FOR RELIEF IS DENIED.^[2]

DATED: June 15, 2000 by Honorable William H. Andrews, Arbitrator.