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1. The Parties and Contested Domain Name.
Complainant is Fiske Industries, 527 Rt. 303, Orangeburg, New York 10962 U.S.A., Email via Ira Adler, ira211@aol.com (Fiske Industries).
Complainant is also stated to be represented by Fred Adler, 43 Liberty Street, San Francisco, California 94110, Email via fred@citiscape.com.
Respondent is Supreme Interactive, 7270 Franklin Avenue, Ste. 131, Los Angeles, California, 90046 U.S.A., Email via info@NCWCDP.com.
Respondent has not responded nor advised of any representation.
Contested Domain Name: "irenegari.com". The Clerk of eResolution verified the Registrar as Network Solutions, Inc.
2. Procedural History.
The electronic version of the Complaint form was filed on-line through eResolution's Website on June 14, 2000. The hardcopy of the
Complaint Form was received on June 15, 2000. Payment was received on June 15, 2000. The Clerk's Office requested that the Complainant
submit its choice of jurisdiction on June 15, 2000. This information was received on June 27, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry led the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions, Inc., the Whois
database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint
is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement on June 15, 2000.
The requested information was received June 20, 2000.
The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph
2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent
on June 29, 2000. That date is the commencement date of the administrative proceeding.
On June 29, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of
commencement of the administrative proceeding.
All e-mail and faxes to the Respondent were sent successfully.
The Complaint, Official Notification and all the annexes were sent by UPS to the respondent's address. According to the UPS tracking
system, all were delivered.
On July 20, 2000, the Respondent had not yet submitted its response. It never did.
On July 24, 2000, the Clerk's Office contacted Mr. Richard Faulkner, and requested that he act as panelist in this case.
On July 25, 2000, Mr. Richard Faulkner, accepted to act as panelist in this case and filed the necessary Declaration of Independence
and Impartiality.
On July 25 2000, the Clerk's Office forwarded a user name and a password to Mr. Richard Faulkner, allowing him to access the Complaint
Form, and the evidence through eResolution's Automated Docket Management System.
On July 25, 2000, the parties were notified that Mr. Richard Faulkner had been appointed and that a decision was to be, save exceptional
circumstances, handed down on August 7, 2000.
3. Factual Background.
Complainant and Respondent are both domiciled in the United States of America.
Complainant, Fiske Industries, is the owner of a United States trademark for the name "Irene Gari". Fiske Industries, Inc. represents
that it is a New York Corporation and the owner of the mark granted by Registration # 1,886,865, dated April, 4, 1995. Fiske Industries
states that it registered the trademark "Irene Gari" for use as a name for their existing cosmetic company which markets various
goods, including, but not limited to, cosmetics, namely concealing creams, eye brow and lipstick sealers, anti-wrinkle lotions and
creams, lip creams and liquids, hair coloring preparations, hair dye remover cream, stretch mark cream, cellulite cream, and nail
treatments, namely nail repair liquid, fast dry manicure liquid, cuticle stick, nail hardener liquid, nail softener liquid, nail
stain remover liquid, nail massage cream, protein and vitamin enriched nail cream and nail gloss, eye puffiness minimizer. All supporting
documentation of Complainant's rights were documented as Complaint Attachments 1, 2, and 3. The mark at issue has been continuously
used in commerce in connection with Complainant's business since registration.
The Domain Name registered by Respondent and at issue in this Complaint is "www.irenegari.com" (the "Domain Name").
Complainant states that it had previously registered the Domain Name at issue, but failed to timely renew that registration through
an administrative error. Once it discovered the error and attempted to renew the registration of the Domain Name it learned that
the Domain name had been registered by Respondent. Complainant openly acknowledges that it was negligent in failing to timely renew
the Domain Name registration.
The Domain Name resolves to a web page with the cryptic notation, "The requested resource is in use."
Respondent has failed to make any response to or even an acknowledgement of receipt of the Complaint or any other communication from
eResolution as of the date and time of the issuance of this Award. This Award has been intentionally issued at the last permissible
time to allow Respondent to file a response if it so chooses. It did not.
The statements of the Clerk and the Complainant establish that Respondent has actual notice of these proceedings according to the
ICANN Regulations.
4. The Parties' Contentions.
Complainant's Contentions:
The Complainant essentially asserts that the Domain Name and the Mark are identical and therefore it is entitled to retrieve the
Domain Name.
The Complaint's assertions are reproduced here in toto to both delineate those claims and demonstrate the difficulties encountered
by this Panel with the pleadings presented to it. Those assertions were completely stated as follows:
"1) At Irenegari cosmetics we had a situation this month where our domain name was for administrative reasons not re-registered immediately
with Network Solutions. 2) The billing and administrative contacts had been changed on the site and so contact for renewal was not
received. The domain then went back into the global registry. We were tracking down our hosting company for the DNS numbers. The
numbers could not be traced through whois because the name had returned to the global registry. We waited until we could get the
appropriate DNS numbers from our hosting company, frontline communications. On May 30th we tried to re-register our domain where
we have had our trademarked cosmetics company web site for over two years and learned that it was already registered. 3) The registrant
as we can see has registered the domain without the intent to use it for any specific purpose or intent. We feel that this name has
been registered with the intent to be harmful to our business. For that reason we are filing a complaint to get our domain back in
our name. 4) Current Registrant Information is listed with Network Solutions as follows: Registrant:Supreme Interactive (IRENEGARI2-DOM)
7270 Franklin Ave. #131 Los Angeles, CA 90046 US Domain Name: IRENEGARI.COM Administrative Contact, Technical Contact, Zone Contact,
Billing Contact: Admin, network (NAY228) info@NCWCDP.COM 7270 Franklin Ave. #131 Los Angeles , CA 90046 xxx.xxx.xxxx Record last
updated on 24-May-2000. Record expires on 24-May-2001. Record created on 24-May-2000. Database last updated on 29-May-2000 22:47:42
EDT. Domain servers in listed order: NS1.HOSTINGREALM.COM 216.246.58.3 NS2.HOSTINGREALM.COM 216.246.58.4 NS3.HOSTINGREALM.COM 216.246.58.5
NS4.HOSTINGREALM.COM 216.246.58.6 5) HOST SERVER[No name] (NSH2007-HST) 659 St. Georges Station Rd. Reisterstown, MD 21117 US Hostname:
NS1.HOSTINGREALM.COM Address: 216.246.58.3 System: ? running ? Coordinator: Contact, Hosting (CH4028-ORG) info@HOSTINGREALM.COM Hosting
Realm 659 St. Georges Station Rd. Reisterstown, MD 21117 US (410-832-5400 6) This phone number is registered to Mortgage Associates,
606 Baltimore Ave. Towson, MD 21204. They have had this phone number for the past four to five years. That the registrant (Contact,
Hosting (CH4028-ORG info@HOSTINGREALM.COM ) has provided inaccurate contact information in all areas of the registration clearly
indicates the liklihood that www.irenegari.com has been registered by someone squatting the domain. We need to remedy the situation
as quickly as possible."
Claimant does not assert that the Registrant Supreme Interactive has no rights nor any legitimate interests in respect of the Domain
Name "irenegari.com". It makes no representation that the Registrant is not using the Domain Name in connection with a bona fide
offering of goods or services. Neither does it establish that currently the Domain Name is not being used as an active address.
It does not even assert that the Registrant, Supreme Interactive, is not commonly known (or was ever was referred to) as "irenegari"
or any variant thereof. Furthermore, Claimant does not assert, much less establish, that the Registrant is not making a legitimate
noncommercial or fair use of the Domain Name. Rather it asserts that "The registrant as we can see has registered the domain without
the intent to use it for any specific purpose or intent. We feel that this name has been registered with the intent to be harmful
to our business. For that reason we are filing a complaint to get our domain back in our name." There is no assertion, nor any
proof, that the Registrant has ever intended to profit from the sale or transfer to a third party of the Domain Name.
Claimant attempts to contend that the Registrant illegitimately registered and is using the domain name "irenegari.com" in bad faith.
In the "Illegitimacy" Section of the claim, again reproduced in toto, it asserts that:
"1) Current Registrant Information is listed with Network Solutions as follows: Registrant:Supreme Interactive (IRENEGARI2-DOM) 7270
Franklin Ave. #131 Los Angeles, CA 90046 US Domain Name: IRENEGARI.COM Administrative Contact, Technical Contact, Zone Contact, Billing
Contact: Admin, network (NAY228) info@NCWCDP.COM 7270 Franklin Ave. #131 Los Angeles , CA 90046 xxx.xxx.xxxx Record last updated
on 24-May-2000. Record expires on 24-May-2001. Record created on 24-May-2000. Database last updated on 29-May-2000 22:47:42 EDT.
Domain servers in listed order: NS1.HOSTINGREALM.COM 216.246.58.3 NS2.HOSTINGREALM.COM 216.246.58.4 NS3.HOSTINGREALM.COM 216.246.58.5
NS4.HOSTINGREALM.COM 216.246.58.6 2) HOST SERVER[No name] (NSH2007-HST) 659 St. Georges Station Rd. Reisterstown, MD 21117 US Hostname:
NS1.HOSTINGREALM.COM Address: 216.246.58.3 System: ? running ? Coordinator: Contact, Hosting (CH4028-ORG) info@HOSTINGREALM.COM Hosting
Realm 659 St. Georges Station Rd. Reisterstown, MD 21117 US 410-832-5400 3) This phone number is registered to Mortgage Associates
606 Baltimore Ave. Towson, MD 21204. They have had this phone number for the past four to five years. That the registrant (Contact,
Hosting (CH4028-ORG) info@HOSTINGREALM.COM ) has provided inaccurate contact information in all areas of the registration clearly
indicates the liklihood that www.irenegari.com has been registered by someone squatting the domain. We need to remedy the situation
as quickly as possible."
In the "Bad Faith" portion of the claim, again reproduced in toto, it simply asserts:
"1) Current Registrant Information is listed with Network Solutions as follows: Registrant:Supreme Interactive (IRENEGARI2-DOM) 7270
Franklin Ave. #131 Los Angeles, CA 90046 US Domain Name: IRENEGARI.COM Administrative Contact, Technical Contact, Zone Contact, Billing
Contact: Admin, network (NAY228) info@NCWCDP.COM 7270 Franklin Ave. #131 Los Angeles , CA 90046 xxx.xxx.xxxx Record last updated
on 24-May-2000. Record expires on 24-May-2001. Record created on 24-May-2000. Database last updated on 29-May-2000 22:47:42 EDT.
Domain servers in listed order: NS1.HOSTINGREALM.COM 216.246.58.3 NS2.HOSTINGREALM.COM 216.246.58.4 NS3.HOSTINGREALM.COM 216.246.58.5
NS4.HOSTINGREALM.COM 216.246.58.6 2) HOST SERVER[No name] (NSH2007-HST) 659 St. Georges Station Rd. Reisterstown, MD 21117 US Hostname:
NS1.HOSTINGREALM.COM Address: 216.246.58.3 System: ? running ? Coordinator: Contact, Hosting (CH4028-ORG) info@HOSTINGREALM.COM Hosting
Realm 659 St. Georges Station Rd. Reisterstown, MD 21117 US 410-832-5400 3) This phone number is registered to Mortgage Associates
606 Baltimore Ave. Towson, MD 21204. They have had this phone number for the past four to five years. That the registrant (Contact,
Hosting (CH4028-ORG) info@HOSTINGREALM.COM ) has provided inaccurate contact information in all areas of the registration clearly
indicates the liklihood that www.irenegari.com has been registered by someone squatting the domain. We need to remedy the situation
as quickly as possible."
Significantly, nowhere does Claimant assert, much less prove, that the Registrant is in the business of selling domain names or that
it has offered this Domain Name to any person for any purpose, legitimate or nefarious. Neither does it establish any likelihood
of confusion with Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of the web site.
Claimant's most significant assertion is that the Respondent's provision of "inaccurate contact information in all areas of the registration"
"indicates the likelihood" that the Domain Name "has been registered by someone squatting the domain". Essentially, the Claimant
maintains that the circumstances demonstrate that the Registrant illegitimately registered the domain name "irenegari.com" and is
using the domain name in bad faith. Whilst this is a very reasonable surmise, it falls very far short of establishing the proof required
for Claimant to succeed.
Respondent's Contentions:
Respondent has not acknowledged receipt of the Complaint from eResolution, nor from the Claimant. Respondent's position has therefore
been construed to generally deny Claimant's assertions and the right to any remedy.
Relief Sought:
Complainant, Fiske Industries requests that the ownership of the domain name at issue be transferred to Fiske Industries.
4. Discussion and Findings.
The ICANN Policy in Paragraph 4.a. requires Fiske Industries to prove, with respect to the Domain Name at issue, each of the following:
(i) The Domain Name at issue is identical or confusingly similar to a trademark or service mark in which Fiske Industries has rights;
and
(ii) Supreme Interactive has no rights or legitimate interests in respect of the domain name; and
(iii) The Domain Name has been registered and is being used in bad faith.
The ICANN Policy in Paragraph 4.b delineates four exemplar circumstances, that for the purposes of Paragraph 4(a)(iii), supra, are
clear evidence of the registration and use of a domain name in bad faith.
a. Identity
Fiske Industries urges the virtual identity of the mark and the Domain Name. Thus, Fiske Industries must prove that the Domain Name
at issue is "identical" to its corresponding mark.
The Domain Name at issue is identical to the corresponding Fiske Industries Mark in the context of the Internet. As the United States
Court of Appeal for the Second Circuit recently noted in Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., 2000 U.S. App. LEXIS
1246, 53 U.S.P.Q. 2D (BNA) 1570, "For consumers to buy things or gather information on the Internet, they need an easy way to find
particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name
or logo with the suffix .com. n3" Any consumer attempting to do so presently would not be directed to Fiske Industries. However,
that hypothetical consumer would likewise not be directed to any site damaging or detrimental to Complainant.
b. Rights or Legitimate Interests
Supreme Interactive's basic defense consists of a reliance that Claimant's assertions are fatally deficient. The Panel recognizes
that the registration of an available Domain Name is clearly legal. It also accepts the validity of the Fiske Industries Mark, Fiske
Industries's rights in those marks with respect to Fiske Industries goods and services, the reputation or goodwill inherently associated
with that Mark, and Fiske Industries representations as to its' use of the Mark.
This situation may exemplify the activities envisioned by the United States Congress when it articulated the public policy of the
United States in the Anticybersquatting Consumer Protection Act of 1999 and the Court of Appeals in Sporty's Farm, supra. There
the Court pointedly quoted the United States Senate stating "cybersquatters have become increasingly sophisticated as the case law
has developed and now take the necessary precautions to insulate themselves from liability. For example, many cybersquatters are
now careful to no longer offer the domain name for sale in any manner that could implicate liability under existing trademark dilution
case law." The Court went on to note that "(The American) Congress passed the ACPA, (Anticybersquatting Consumer Protection Act)
'to protect consumers and American businesses, to promote the growth of online commerce, and to provide clarity in the law for trademark
owners by prohibiting the bad-faith and abusive registration of distinctive marks as Internet domain names with the intent to profit
from the goodwill associated with such marks -- a practice commonly referred to as 'cybersquatting'." S. Rep. No. 106-140, at 4.
While this situation may well be one of those that was predicted by the Court of Appeals, Claimant will have to establish that claim
in a United States District Court. To prevail in this forum, the Claimant must properly plead its' case and meet the burden of proof
that is required by ICANN. It has not managed to do so and it is not the province of this Panel to undertake that responsibility
for it.
c. Bad Faith.
The registration and use of the Domain Name at issue in bad faith must be determined according to the exemplars contained in the
ICANN Regulations. Claimant has failed to properly allege, much less establish, the mandatory bad faith.
d. Due Process.
The parties knew, or reasonably should have known, that when they registered the Domain Name at issue, they then agreed to and accepted
the Procedures, Rules and Regulations established by the Registrar and its' successors. For reasons known only to Claimant, it has
chosen not to even begin to establish the prerequisites articulated in the ICANN Regulations. While some Panels have expansively
interpreted their powers to draw certain inferences and logical conclusions when deciding these disputes, they have only done so
when provided properly plead claims and facts. Neither of those is effectively present here.
The Panel recognizes it has a duty to treat the parties equally and to afford each of them a fair opportunity to present their case.
Likewise the Panel is expressly acknowledged to possess the power to determine the admissibility, relevance, materiality and weight
of the evidence. The Claimant's submissions, statements and representations have been very carefully considered for their relevance,
materiality and admissibility. All have been given due and appropriate weight.
5. Conclusions and Decision.
The evidence, submissions of the parties, ICANN Regulations and guidance provided by the laws of the United States and the jurisprudence
interpreting them lead this Panel to conclude and decide that the Domain Name registered by Supreme Interactive, and at issue herein,
is identical to the registered Mark of Fiske Industries. However, Claimant has not met the other requirements of its' burden of
proof under the ICANN Regulations.
Accordingly, the Panel hereby Awards, directs, requires and orders that the registration of the Domain Name at issue, "irenegari.com"
remain with Supreme Interactive. The request for the transfer of the Domain Name is hereby DENIED.
Thus done and signed in Dallas, Texas, United States of America on August 7, 2000.
(s) Hon. Richard D. Faulkner, J.D., LL.M., F.C.I.Arb.
Presiding Panelist
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