The North Face Inc.
COMPLAINANT,

vs.

SAND WebNames - For Sale
RESPONDENT.

DECISION
Forum File No: FA 94722

          This is a domain name dispute. Administrative proceedings were conducted pursuant to the ICANN Uniform Name Dispute Resolution Policy (Policy) and Rules for Uniform Domain Name Dispute Resolution Policy (Rules). James A. Crary was selected to serve as the sole administrative panelist.

PROCEDURAL FINDINGS

Domain Names: northface.com

Date of Domain Name Registrar: Network Solutions, Inc.

Date of Domain Name Registration: March 7, 2000

Date Administrative Proceedings Commenced: May 8, 2000

Date Response Due: May 30, 2000 (No response filed)

Relief Requested by Complainant: Transfer of northface.com to the Complainant.

THE COMPLAINT

            The Complainant is engaged in the business of production and sale of backpacks, sleeping bags, tents and outdoor related clothing and other products. It has been in business for approximately 30 years. THE NORTH FACE was registered at the United States Patent and Trademark Office on May 14, 1974. Two design trademarks were registered on September 6, 1997 and December 14, 1999.

          The Complainant maintained that the disputed domain name northface.com was virtually identical to THE NORTH FACE trademark and THE NORTH FACE and design trademarks owned by the Complainant. The Complainant asserted that it was likely that internet users would be confused by Respondent’s domain name northface.com.

The only purpose in obtaining the domain name was implied by Respondent’s corporate name “Sand WebNames - For Sale”.

Respondent, it was asserted, was trading on the reputation of the well-known mark and design marks in order to sell the domain name.

The Complainant has used its name and marks with respect to backpacks, sleeping bags, tents, outdoor related clothing and products for 30 years prior to Respondent’s registration of northface.com.

Complainant had Registered the domain name thenorthface.com. Internet users seeking to access Complainant’s site, who omitted the “the” from their search string would be routed to Respondent’s site.

          Complainant asserted that Respondent did not offer products or services at its northface.com. The site would link to another site where other services were offered and links to e-commerce sites were provided. Respondent was not known as the North Face. The registration was of a commercial nature since it was attempting to sell the disputed domain name.

          Bad faith was alleged by the Complainant.

          The Complainant asserted that Respondent registered the disputed domain name primarily for the purpose of selling the domain name registration to the Complainant as the owner of the trademark or service mark, or to a competitor of the Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs of registration. The Respondent “SAND WebNames-For Sale” has only one interpretation that it was in the business of selling domain names. The only party that could legitimately purchase the domain name northstar.com without infringing on Complainant’s trademark rights was the Complainant.

In the alternative, bad faith was said to exist since the domain name registration prevented the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, and that the Respondent engaged in a pattern of such conduct. It was asserted that Respondent had registered domain names such as ticketmasters.com, nickolodean.com as well as the names of prominent actors in the adult entertainment field and others. These domain name registrations along with the registration of the northstar.com were evidence of a pattern by the Respondent of attempting to register domain names in which others have trademark or other common law rights. Transfer of northstar.com was demanded by Complainant.

DISCUSSION

          In this case the panel was satisfied that the Forum took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of the proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Forum. The records support a finding that Respondent was served with the complaint and had notice of the commencement of proceedings in this matter.

          Paragraph 4(a) of the Policy sets forth the three elements that must be proved by the Complainant to merit a finding that the Respondent has engaged in abusive domain name registration, and thus be entitled to transfer of the domain name. These elements are that (1) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect to the domain name; and (3) Respondent’s domain name has been registered and is being used in bad faith.

          Based on the review of the complaint together with the supporting documents and noting that the Respondent has not answered the complaint, it was concluded that Respondent engaged in abusive domain name registration within the meaning of the Policy.

          The domain name northface.com is confusingly similar to Complainant’s THE NORTH FACE marks and design marks owned by Complainant. Respondent omitted the “The” in the trademark, incorporating the distinctive “NORTHFACE” portion of the trademark into the disputed domain name. It was concluded that internet users seeking Complainants products and services would be confused by the northface.com domain name. [Policy 4(b)(i)].

          Unfavorable inferences were drawn with regard to Respondent’s rights and legitimate interests in the domain name northface.com.  This was based on Respondent’s default in answering the complaint and also based on Complainant’s long prior use of its marks. There was no evidence Respondent had any legitimate interest in the domain name. It was not known by that name. Respondent did not offer goods and services on its site but merely linked to commercial sites.

          Respondent did not obtain rights to the disputed domain name by mere registration. If mere registration of the domain name was sufficient to establish rights or legitimate interest for the purposes of paragraph 4 (a)(ii) of the Policy, then all registrants would have such rights or interests and no Complainant could succeed on a complaint of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that the mere registration does not establish rights or legitimate interests in the disputed domain name.

          Paragraph 4(b) sets forth circumstances “in particular but without limitation” which if found by the Panel shall be evidence of registration and use of domain name in bad faith. Based on a review of the complaint and supporting documents, it was concluded northface.com was registered and used in bad faith.

          The Complainant’s own corporate name is the foundation of its trade and design marks. The names and marks are used in connection with the Complainant’s business in providing camping and outdoor products and services associated with the name and mark. The Respondent’s registration of northface.com prevented the Complainant from using its trademark in a corresponding domain name. The Respondent has registered domain names such as ticketmasters.com, nickolodeon.com, kingtv.com, Pamela-lee.com, and zena.com. The registration of the domain names along with the registration of northface.com indicate a pattern of registration of domain names in which others have trademark or other common law rights. It was concluded that Respondent’s conduct fell within the circumstances set forth at 4(b)(ii) of the Policy.

          It was also clear from the evidence that Respondent used the domain name to attract internet users for commercial gain by creating the likelihood of confusion with Complainants marks as to the source of products and services on its website or location. [Policy 4(b)(iv)].

          Based on the foregoing findings and conclusions, it was concluded that the Complainant had established the elements necessary to support a finding of abusive domain name registration and that it was entitled to relief under section 4(i) of the Policy.

          The Panel orders that the domain name northface.com be transferred to the Complainant.

Dated: June ­19, 2000

Honorable James Alan Crary, Presiding Panelist