Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

(1) Complainants: The Avenue Inc. of Little Falls Center II, 2751 Centerville Road, Suite 309, Wilmington, Delaware 19808, USA and United Retail Incorporated of 365 West Passiac Street, Rochelle Park, New Jersey 07662-6563, USA.

(2) Respondents: Chris Guirguis who does business as Lighthouse Web Design and/or Cannibal, apparently of 120 Tavistock Place, Roswell GA 30076, USA or 5124 Montclair Drive, Mississauga, Ontario L5M 5A6, Canada; and Sam Guirguis apparently of 120 Tavistock Place, Roswell GA 30076, USA.

(1) SIZESUNLIMITED.COM, registered by Network Solutions, Inc. on April 4 1999 to the Registrant Cannibal (Administrative Contact: Chris Guirguis).

(1) The Complaint in Case D2000-0013 was filed on January 26, 2000.

(2) The WIPO Arbitration and Mediation Center has found that:

• the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Dispute Resolution Policy;

• payment for filing was properly made;

• the Complaint complies with the formal requirements;

(3) The Panel accepts these findings and itself finds that:

• the Complaint was properly notified in accordance with the Rules, paragraph 2(a) in that the following steps were taken:

1. The Complaint was sent to the Respondent Chris Guirguis at 120 Tavistock Place, Roswell, GA 30076, USA by facsimile (801 382 1842) and e-mail (cguirguis@usa.net, chrisglm7@aol.com, chrisglm76@aol.com, twisterman59@hotmail.com, postmaster@sizesunlimited.com);
2. The Complaint was sent to the Respondent Sam Guirguis at 120 Tavistock Place, Roswell, GA 30076, USA by e-mail (cguirguis@usa.net, twisterman59@hotmail.com, postmaster@sizesunlimited.com);
3. The Complaint was sent to the Respondent Cannibal at 5124 Montclair Drive, Mississauga, Ontario L5M 5A6, Canada by post, facsimile and e-mail.

• no Response to the Complaint was filed in due time;

• notification of this default was given on February 24, 2000 to the Respondent Cannibal by post and e-mail; and that

• the Administrative Panel was properly constituted.

(4) The Panelists each submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(5) There have been no further submissions in the case.

(6) The date scheduled for issuance of a decision is: March 19 2000.

(7) No extensions have been granted or orders issued in advance of this decision.

(8) The language of the proceedings is English.

(1) The first Complainant is registered proprietor of the following trade marks:

(i) "SIZES UNLIMITED" for retail clothing store services: Canada, registered December 8, 1995.

(ii) "SIZES UNLIMITED" for clothing, including boots, shoes and slippers: Turkey, registered August 14, 1992.

(iii) "SIZES UNLIMITED" for a list of clothing items: Thailand, registered October 16, 1992.

(iv) "SIZES UNLIMITED" for clothing, including boots, shoes and rain boots: Mexico, registered July 8, 1996.

(2) The first Complainant also owns the domain name SIZESUNLIMITED.NET.

(3) The second Complainant is licensee of these trade marks and has made continuous use of them, in the United States since 1984, to refer to retail stores and as a trade mark for women’s apparel and accessories.

(4) The Respondent Cannibal registered the doman name SIZESUNLIMITED.COM on April 4, 1999 with Network Solutions, Inc.

5. Parties’ Contentions

A. Complainants

(1) The Complainants assert:

• that the Respondents’ domain name at issue is identical with the first Complainant’s registered marks listed in Paragraph 4 above and with the mark used by the second Complainant as a business name and for the goods named in that Paragraph;

• that while the Respondents have stated (in a communication of June 9 1999 – later reiterated on October 29, 1999) that they intend to use their domain name for an Internet business offering retail clothing, they at the same time offered to sell the domain name to the Complainants;

• that the Respondents’ subsequently rejected a without prejudice offer to settle the matter by the Complainants and indicated that they were considering auctioning the domain name to the highest bidder (a possibility also repeated on October 29,1999);

• that the Respondents are currently offering the domain name for sale on www.greatdomains.com for $500,000;

• that this course of conduct shows that the Respondents have no rights or legitimate interests in respect of the domain name and that it has been registered and is being used in bad faith.

Accordingly the Complainants seek transfer of the domain name in issue to themselves.

B. Respondents

(2) The Respondents have not filed a response and the dispute has therefore to be determined on the basis of the Complainants’ assertions.

6. Discussion and Findings

(1) The Complainants’ allegations as set out in Paragraph 5(A) above are supported by the communications sent to them by the Respondents or on their behalf. It is to be noted in particular that in their first approach to the Complainants, the Respondents, while claiming to have no prior knowledge of the Complainants’ marks and business, nevertheless prefaced their offer to sell the domain name by stating that Internet users had been confusing their address with the Complainants’ business (citing in particular one colourfully unpleasant incident). This amounts to an admission that the Complainants’ marks were being confused with the Respondents’ domain name.

(2) The Respondents have apparently chosen not to explain their conduct by making a Response to the Complaint. On the record before it, the Panel therefore considers the conclusion inescapable that the Respondents have treated their domain name registration not as a basis for establishing some legitimate business but as basis for securing a payment under the offer to transfer the name which they made to the Complainants. Even on the basis of the Respondents’ assertion that, prior to the filing of the Complaint, when they initially contacted the Complainants they had no prior knowledge of the Complainants’ rights arising from registration and/or use in various countries, once they appreciated that there was confusion – as they say there was – they could not properly persist in this intention, since their proposal was to operate a business in the same field as the Complainants. At the same time, however, they were both offering to sell the domain name to the Complainants and were allegedly contemplating an Internet auction of the domain name. The Complainants’ offer in settlement of $5,000 was rejected as derisory. It thus became plain that the Respondents were after a sum well in excess of their own domain name costs. That as recently as December 27, 1999, the domain name was being offered for sale on the Internet for $500,000 simply confirms the obvious.

(3) The Panel concludes that the domain name has been registered and is being used in bad faith, consisting of

1. acquisition primarily for the purpose of transferring the domain name to the Complainant for valuable consideration in excess of costs directly related to the domain name; and
2. using or preparing to use the domain name so as intentionally to attempt to attract, for commercial gain, Internet users to the web site, by creating a likelihood of confusion with the Complainants’ marks and business name as the source, sponsorship, affiliation or endorsement of that web site.

7. Decision

• that the domain name in dispute is identical with the registered trade marks and the service mark of the Complainants;
• that the Respondents have no rights or legitimate interests in respect of the domain name; and
• that it has been registered and is being used in bad faith.

(2) The Panel accordingly requires that the domain name SIZESUNLIMITED.COM be transferred forthwith to the first Complainant, The Avenue Inc.

William R. Cornish
Presiding Panelist

Joan Clark Sally Abel
Panelist

Date: March 19, 2000