DECISION

J.L. Wilson Co., Inc. d/b/a Suntan Supply v. Ultraviolet Resources Intl.

Claim Number: FA0105000097148

PARTIES

The Complainant is J.L. Wilson Co., Inc. d/b/a Suntan Supply, Cleveland, OH, USA (“Complainant”) represented by George L. Pinchak, of Watts, Hoffmann, Fisher & Heinke, LLP.  The Respondent is Ultraviolet Resources Intl., Cleveland, OH, USA (“Respondent”) represented by Robert R. Kracht of McIntyre, Kahn, Kruse & Gillombardo Co., L.P.A.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <suntan-supply.com> and <suntansupply.net>, registered with the registrar Network Solutions, Inc. of Herndon, Virginia.

PANEL

The undersigned certifies that, after checking for potential conflicts of interest, he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Jonathan Hudis as Panelist.

PROCEDURAL HISTORY

Complainant has submitted its Complaint to the National Arbitration Forum (“the Forum”) for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999 (“ICANN Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (“ICANN Rules”) and the Forum’s Supplemental Rules (“NAF Supp. Rules”).  The Complaint was submitted electronically on May 4, 2001, and the Forum received a hard copy of the Complaint on May 7, 2001.

On May 7, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <suntan-supply.com> and <suntansupply.net> are registered with Network Solutions, Inc. and that Respondent is the current registrant of these domain names.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the ICANN Policy.

On May 9, 2001, the Forum notified Complainant that certain required allegations were not contained in the Complaint, and the fee for instituting this proceeding was insufficient.  On May 10, 2001, Complainant cured these deficiencies.

On May 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 31, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@suntan-supply.com and postmaster@suntansupply.net by e-mail.

A timely response was received and determined to be complete on May 31, 2001.  On  June 7, 2001, Complainant filed with the Forum by facsimile an Additional Submission under NAF Supp. Rule 7.  Also on June 7, 2001, Respondent moved to strike Complainant’s Additional Submission as untimely.  The Forum has deemed Complainant’s Additional Submission, and the additional fee in payment therefore, to be timely and complete.

Additionally on June 7, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum solicited the interest of the undersigned to be the sole Panelist who would decide this matter.  On June 8, 2001, after clearing potential conflicts of interest, the undersigned accepted the Forum’s invitation.  The Forum has appointed Jonathan Hudis as Panelist.  On June 11, 2001, the Forum forwarded electronic and hard copy versions of the case file.

On June 13, 2001, the Panel requested, through the Forum’s Case Administrator, that Complainant submit an electronic copy of its Additional Submission.  Complainant submitted the electronic copy of its Additional Submission on June 14, 2001.

RELIEF SOUGHT

Complainant requests that the contested domain names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant states that, since at least as early as July 1, 1996, it has used the mark SUNTAN SUPPLY in connection with wholesale distribution and sales of tanning beds, tanning bed accessories and components, and related indoor tanning products including tanning lotions and creams to tanning salons.  Complainant claims that its extensive use of the service mark SUNTAN SUPPLY on its catalogs, advertising flyers, advertisements in magazines, displays at trade shows has created a recognition of the service mark SUNTAN SUPPLY by consumers of wholesale tanning products as being solely associated with Complainant.  Complainant believes that its service mark SUNTAN SUPPLY has become distinctive as used in connection with Complainant's services by exclusive and continuous use as a service mark since at least as early as July 1, 1996.

Complainant has filed a federal trademark application for the service mark SUNTAN SUPPLY for wholesale distribution and sales of tanning beds, tanning bed accessories and components, and related indoor tanning products including tanning lotions and creams to tanning salons on April 10, 2001.  A copy of Complainant's federal trademark application for SUNTAN SUPPLY was attached to the Complaint.  A declaration under 37 C.F.R §2.41(a) was filed with the federal trademark application to support Complainant’s claim that the service mark SUNTAN SUPPLY has acquired distinctiveness by Complainant's extensive use of the service mark.  A copy of this declaration also was attached to the Complaint, accompanied by numerous exhibits.

Complainant asserts that the domain names <suntan-supply.com> and <suntansupply.net> are substantially identical to Complainant's service mark SUNTAN SUPPLY.  Complainant contends that it has acquired rights in the service mark SUNTAN SUPPLY by extensive use of the mark in interstate commerce since at least as early as July 1, 1996.

Complainant further asserts that Respondent, a direct competitor of Complainant, has no rights or legitimate interests in the domain names <suntan-supply.com> and <suntansupply.net>.  Complainant further urges, upon information and belief, that Respondent adopted the domain names <suntan-supply.com> and <suntansupply.net> in bad faith solely to misleadingly divert Complainant’s customers to Respondent’s web site.

Complainant states that Respondent did not use the domain names <suntan-supply.com> and <suntansupply.net> in connection with a bona fide offering of goods or services before Respondent had actual notice of Complainant's use of the service mark SUNTAN SUPPLY.  Further, Respondent allegedly was well aware of Complainant's extensive use of the service mark SUNTAN SUPPLY when Complainant registered the <suntan-supply.com> and <suntansupply.net> domain names with Network Solutions.  Complainant states that it and Respondent are both companies based in Cleveland, Ohio and directly compete as wholesale distributors of tanning beds, tanning bed accessories and components, replacement bulbs, tanning lotions and related indoor tanning products. Complainant and Respondent are both wholesale distributors of tanning beds, replacement bulbs for tanning beds and tanning lotions to tanning salons.  The Vice-President of Suntan Supply, Martin Gallagher, was the President of Ultraviolet Resources International in 1985.  Respondent does not deny these facts, but does deny the legal conclusions to be drawn from them.

Complainant states that it began doing business as SUNTAN SUPPLY in 1996 and that it has developed substantial name recognition by nationwide distribution of catalogs and flyers featuring the SUNTAN SUPPLY service mark, advertising in tanning industry trade publications, attending national tanning industry trade shows, and displaying the SUNTAN SUPPLY service mark on banners affixed to Complainant's display booths and other advertising campaigns.  Advertising materials that Complainant has distributed over the years, as well as six letters from persons who own and/or manage tanning salons attesting to the fact that the SUNTAN SUPPLY service mark is recognized in the tanning industry as Complainant’s name, were attached to the Complaint. 

In 1998, Respondent sued Complainant for copyright infringement.  The copyright claim arose, says Complainant, because the company that prepared color art proofs and prepress for Complainant’s 1998 catalogs mistakenly used a photograph from one of Respondent's previous catalogs.  Complainant’s catalog that was the subject of the lawsuit included the service mark SUNTAN SUPPLY in large block letters on the front cover.  A copy of the cover of the catalog that was the subject of the 1998 copyright infringement litigation is attached to the Complaint.  Thus, says Complainant, Respondent was well aware of Complainant's use of the SUNTAN SUPPLY service mark.

Shortly after the copyright infringement litigation was settled in October 1999, Respondent registered the <suntan-supply.com> and <suntansupply.net> domain names in November of 1999 and February of 2000 respectively with Network Solutions.

Complainant asserts that Respondent is not commonly known by the domain names <suntan-supply.com> or <suntansupply.net>.  Rather, Respondent is well known as Ultraviolet Resources International, not SUNTAN SUPPLY.  Complainant also asserts that  Respondent is not making a legitimate noncommercial or fair use of the domain names <suntan-supply.com> and <suntansupply.net>.  Respondent is alleged to be using the domain names <suntan-supply.com> and <suntansupply.net> in bad faith, for unfair commercial advantage by attempting to misleadingly divert existing and potential customers of Complainant to Respondent’s web site, where they will purchase Respondent’s competitive products.

By using the domain names <suntan-supply.com> and <suntansupply.net>, says Complainant, Respondent has intentionally attempted to attract and divert, for commercial gain, existing and potential customers of Complainant to Respondent’s web site, by creating a likelihood of confusion with the Complainant’s service mark SUNTAN SUPPLY as to the source, sponsorship, affiliation, association or endorsement of Respondent’s web site by Complainant. 

Complainant and Respondent are Cleveland, Ohio companies that have directly competed in the wholesale tanning bed and accessory market for several years.  As is explained above, Respondent is well aware that Complainant is known in the wholesale tanning bed and accessory market as Suntan Supply.  Respondent’s domain names <suntan-supply.com> and <suntansupply.net>, says Complainant, are substantially identical to Complainant’s service mark SUNTAN SUPPLY. Respondent uses the domain names <suntan-supply.com> and <suntansupply.net> to display web pages that contain advertisements for wholesale sales of tanning beds and accessories for tanning beds. Copies of several of the web pages displayed at the URLs pointing to the <suntan-supply.com> and <suntansupply.net> domain names were attached to the Complaint.

The goods advertised on Respondent's web pages, says Complainant, are the same goods that Complainant distributes under the service mark SUNTAN SUPPLY.  According to Complainant, Respondent has intentionally created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site by Complainant by adopting Complainant's service mark SUNTAN SUPPLY as Respondent's domain name and advertising the same goods on the associated web pages that Complainant distributes under the service mark SUNTAN SUPPLY.

Complainant alleges that Respondent has adopted the domain names <suntan-supply.com> and <suntansupply.net> with the intent to divert business away from Complainant.  Complainant says that its customers expect to find Complainant’s web site when a domain name including the term "Suntan Supply" is entered.  However, when Complainant's customers enter the domain names <suntan-supply.com> and <suntansupply.net>, Complainant's customers are directed to Respondent’s web site, rather than Complainant’s web site.  Since Respondent’s web pages advertise the same goods as are distributed by Complainant under the SUNTAN SUPPLY service mark and identifies Respondent as a Cleveland based company, Complainant contends that its customers are likely to be confused and believe that they are at Complainant's web site or a web site that is associated with, affiliated with, endorsed by, or sponsored by Complainant.

B. Respondent

Respondent asserts that it has no intent to copy what it claims to be Complainant’s common law mark, which is the words SUNTAN SUPPLY with a SUN Design encircling the “S” in “Suntan”.  Rather, Respondent contends that the terms SUNTAN SUPPLY are generic for the products that it sells, and further that Respondent intends to use domain names incorporating the terms SUNTAN SUPPLY and other generic domain names to describe the various products that Respondent sells.

Respondent contends that Complainant has not submitted any evidence of actual confusion caused by Respondent’s use of the disputed domain names, nor evidence that Respondent has utilized the domain names <suntan-supply.com> or <suntansupply.net> to confuse any person or entity.  Respondent notes that, while the domain name <suntansupply.com> appears on Complainant’s recent catalogs, this domain name is registered to a third party.

In the 1980s, Complainant’s principal, Martin Gallagher, used to work for Respondent as its President.  In 1987, Mr. Gallagher left the employ of Respondent to form a competing company.  Respondent and Mr. Gallagher’s former company were alleged to have been engaged in a lawsuit alleging unfair trade practices.  That litigation was withdrawn, and thereafter Mr. Gallagher’s former company filed for Chapter 7 (liquidation type) bankruptcy.

Respondent asserts that it is a wholly owned subsidiary of Efficient Lighting Sales Company (“ELSCO”), and that this parent company was formed in 1982.  In 1997, ELSCO obtained from the State of Ohio a “d/b/a” registration for SUNTAN SUPPLY COMPANY.  However, after learning that Complainant (Mr. Gallagher’s new company) was using SUNTAN SUPPLY as a trade name, Respondent and its parent company decided not to use the trade name in connection with their business(es).

Respondent states that, in April, 1997, it established a presence on the Internet under the URL http://www.uriworld.com.  Approximately three years later, in November, 1999 and February, 2000, Respondent registered the domain names <suntan-supply.com> and <suntansupply.net>, respectively.   Respondent states, and this has been confirmed by the panel, that these and other “generic” domain names all point to (or, more accurately, re-direct to) the same web pages that are located under the <uriworld.com> domain name.

Respondent asserts that Complainant has no rights in the disputed domain names, because SUNTAN SUPPLY is a generic term.  Respondent claims that it does have rights and legitimate interests in respect of the domain names (i) because of the State of  Ohio fictitious name registration issued to Respondent’s parent company, and (ii) because “generic” domain names that point or  re-direct to the same web pages that are located under the <uriworld.com> domain name is a proper use of the contested domain names.  Respondent denies that it registered or used the contested domain names in bad faith.

C. Complainant’s Reply

Complainant submits that Respondent's Response mischaracterizes both the factual and legal issues, and that the Response raises spurious issues in an attempt to direct the Panel’s attention from the relevant facts, namely Complainant's rights in the SUNTAN SUPPLY service mark, likelihood of confusion and Respondent’s bad faith registration and use of the domain names.

Complainant asserts that it has acquired common law rights in the SUNTAN SUPPLY service mark by exclusive and continuous use since at least as early as July 1, 1996; that   Complainant's SUNTAN SUPPLY service mark is identical to the <suntansupply.net> and <suntan-supply.com> domain names and that Respondent’s discussion about the prior history of Complainant and Respondent is factually inaccurate and, more importantly, does not negate the fact that Respondent's <suntansupply.net> and <suntan-supply.com> domain names are substantially identical to Complainant's SUNTAN SUPPLY service mark.

Complainant urges that its SUNTAN SUPPLY service mark is not generic.  According to Complainant, consumers of wholesale indoor tanning products do not refer to wholesalers of  indoor tanning products as “SUNTAN SUPPLY.”  While Complainant says it has provided evidence of secondary meaning of its trademark, Respondent has provided mere attorney argument in support of its position. 

Complainant contends that the SUNTAN SUPPLY service mark is a descriptive mark that has acquired secondary meaning by substantial use over a long period of time by Complainant. Contrary to Respondent’s assertions of genericness, Respondent is claimed to have recognized that the designation SUNTAN SUPPLY was and is capable of functioning as a trademark when it registered SUNTAN SUPPLY COMPANY as an Ohio trade name.   However, Respondent has denied using SUNTAN SUPPLY as a service mark and therefore Complainant asserts that Respondent has no rights in the SUNTAN SUPPLY mark.

Complainant contends that Respondent has admitted that it has known, since at least as early as 1997, that Complainant has been using the name SUNTAN SUPPLY.  It is asserted that Respondent also has admitted that it did not use SUNTAN SUPPLY COMPANY to market its goods because Respondent was aware that Complainant was using the SUNTAN SUPPLY service mark to identify Complainant’s services.

Approximately three years after becoming aware of Complainant’s use of the SUNTAN SUPPLY service mark, after Complainant says it had built up significant recognition and secondary meaning in the SUNTAN SUPPLY name, Respondent registered the <suntansupply.net> and <suntan-supply.com> domain names to attract Complainant's customers to Respondent's web pages.

FINDINGS AND DISCUSSION

Paragraph 15(a) of the ICANN Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the ICANN Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name; and

(iii) the contested domain name has been registered and is being used in bad faith.

In an administrative proceeding pursuant to the ICANN Policy, ICANN Rules and NAF Supplemental Rules, the Complainant must prove that each of these three elements are present. ICANN Policy, ¶ 4(a).

The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the registrant registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it is shown that the registrant has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to his web site 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 the registrant’s web site or location or of a product or service on his web site or location.

ICANN Policy, ¶ 4(b).

On the other hand, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the registrant’s rights or legitimate interests to the domain name:

(i) before any notice to the registrant of the dispute, his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the registrant (as an individual, business, or other organization) have been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or

(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

ICANN Policy, ¶ 4(c ).

It is Complainant that has the burden of proving all three elements of paragraph 4(a) of the Policy.  Complainant’s failure to prove any one of these three elements is fatal to its claim.  See, e.g., Emoney Group, Inc. v. Eom, San Sik, FA 96337 (Nat. Arb. Forum Mar. 26, 2001).  Further, as the explanatory history to the ICANN Policy states: “Except in cases involving ‘abusive registrations’  made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts ….  The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relative narrow class of cases of ‘abusive registrations.’  Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger’s trademark) is a feature of the policy ….”  ICANN Staff Report, http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm.

Respondent’s Motion to Strike Complainant’s Additional Submission

As noted above, Respondent has moved to strike Complainant’s Additional Submission as untimely.  However, the Forum has deemed the Additional Submission to be timely and to have been submitted in accordance with the NAF Supp. Rules.  Therefore, the Panel DENIES Respondent’s motion to strike Complainant’s Additional Submission.  The Panel has considered all of the parties’ submissions in coming to its decision.

Identical and/or Confusingly Similar

Respondent does not seriously dispute that the domain names <suntan-supply.com> and <suntansupply.net> are identical and/or confusingly similar to Complainant’s alleged SUNTAN SUPPLY mark.  What the Panel must decide, however, is whether SUNTAN SUPPLY is a “mark” in which Complainant has rights.

Respondent contends that Complainant’s alleged mark SUNTAN SUPPLY is comprised of generic terms commonly used within tanning equipment supplies industry. A “generic” term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species. Abercrombie & Fitch Co. v. Hunting World Inc., [1976] USCA2 141; 537 F.2d 4, 9 (2d Cir. 1976). Generic terms can never become trademarks or service marks, no matter how much money or effort is directed to the term or how much commercial success from public exposure the term has achieved. Id., 537 F.2d at 9.

By contrast, a descriptive mark forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods. Descriptive marks, although not inherently entitled to trademark protection, are afforded such protection upon a showing that such marks have acquired distinctiveness (secondary meaning) through use in the marketplace. Id., 537 F.2d at 9-11.

The Panel does not find that the mark SUNTAN SUPPLY is generic.  The Panel searched Respondent’s web site pages in vein for generic usage of the term SUNTAN SUPPLY.  Rather, the apt term used by Respondent to refer to its products is “tanning equipment products” and like terms.  Complainant’s web site, presently located at the URL http://www.suntansupply.org, equally does not use SUNTAN SUPPLY in a generic fashion.  Respondent has not directed the panel to any other evidence of generic usage of SUNTAN SUPPLY in the relevant industry.

Rather, the Panel does find, as asserted by Complainant in its papers, that the phrase SUNTAN SUPPLY is descriptive of the parties’ goods and services.  To be entitled to protection, however, the alleged mark must have acquired distinctiveness (secondary meaning) through use in the marketplace.  The factual and legal submissions on this issue present a close question for the Panel.

Complainant submitted catalog, flyer, and advertising evidence showing several years of trademark-type use of SUNTAN SUPPLY.  Complainant’s Mr. Gallagher also attested to several years of trade show presentations at which SUNTAN SUPPLY was promoted as a mark.  However, this does not by itself show that SUNTAN SUPPLY has acquired secondary meaning.  Complainant also submitted un-sworn letters from six of its customers, all of whom stated their association of the term SUNTAN SUPPLY with Complainant.  Unfortunately, this qualitatively slim, untested evidence is not sufficient, in the Panel’s view, to establish that SUNTAN SUPPLY has acquired secondary meaning between the purported mark and Complainant’s products and services.  For example, Complainant did not submit evidence of advertising expenditures, sales made (in unit quantities or annual dollar amounts), media or trade reports recognizing SUNTAN SUPPLY as associated with Complainant, or a survey.  A truncated proceeding under the ICANN Policy simply is not the forum in which all this type of evidence (particularly a survey) could (or should) be submitted and tested for its veracity.

Mr. Gallagher’s Declaration submitted to the U.S. Patent and Trademark Office (“PTO”) does not provide very much evidence that his company’s marketing efforts have succeeded in creating secondary meaning associated with SUNTAN SUPPLY, and there is no evidence that the PTO itself has passed on the sufficiency of the Declaration and its attachments.  Further, as Respondent correctly points out, the mere filing of an application for registration with the PTO does not provide Complainant with any trademark rights until the application in fact issues as a registration.  See, e.g., Amsec Enterprises, L.C. v. McCall, D2001-0083 (WIPO Apr. 3, 2001).

The burden being on Complainant to establish its case, the Panel does not find that the requisite facts needed to support paragraph 4(a)(i) of the ICANN Policy have been clearly established.

Rights or Legitimate Interests

Another close question for the Panel is whether Respondent has rights or legitimate interests in respect of the contested domain names.  As stated, Respondent claims that it does have rights and legitimate interests in respect of the domain names (i) because of the State of Ohio fictitious name registration issued to Respondent’s parent company, and (ii) because “generic” domain names that point or re-direct to the same web pages that are located under the <uriworld.com> domain name is a proper use of the contested domain names.

However, Respondent has never used the fictitious name SUNTAN SUPPLY COMPANY in connection with its business.  The Panel, moreover, is highly suspect of Respondent’s motives in registering, and Respondent’s manner of use of, the contested domain names, given the acrimonious history between the parties who are direct competitors located in the same city.

Neither parties’ allegations are the subject of factual witness testimony that has been tested by cross-examination. The highly factual nature of Respondent’s motives and its rights to the disputed domain names remains an open question.  The burden being on Complainant to establish its case, the Panel does not find that the requisite facts needed to support paragraph 4(a)(ii) of the ICANN Policy have been clearly established.

Registration and Use in Bad Faith

Even if Complainant had definitively established its case under paragraphs 4(a)(i) and (ii) of the ICANN Policy, it is a very close question whether the bad faith registration and use requirements of paragraph 4(a)(iii) of the Policy have been met.  Respondent “appears” to have registered the contested domain names in order to prevent Complainant from reflecting SUNTAN SUPPLY in two corresponding domain names.  By registering two such domain names, Respondent “may” have engaged in a pattern of such conduct.  ICANN Policy, ¶ 4(b)(ii).  Additionally, a logical inference could be made that Respondent registered the contested domain names primarily for the purpose of disrupting the business of Complainant, who clearly is Respondent’s competitor, and/or to create a likelihood of confusion with Complainant’s alleged mark. Policy, ¶ 4(b)(iii), (iv).  Respondent denies that any such inferences can be drawn from the evidence submitted.

In the Panel’s view, there simply are not enough undisputed facts to conclusively support these findings in the context of this truncated proceeding under the ICANN Policy.  The burden being on Complainant to establish its case, the Panel does not find that the requisite facts needed to support ¶4(a)(iii) of the ICANN Policy have been clearly established.

The Significance of the Panel’s Findings

The Panel’s findings herein are limited by the very streamlined nature of  arbitration proceedings under the ICANN Policy.  If Complainant and Respondent wish to pursue this matter further, given that they both are United States corporations, it is recommended that they take advantage of the remedies and procedural mechanisms available in a U.S. District Court action under the U.S. Trademark Act, the Anti-Cybersquatting Consumer Protection Act, and/or the Declaratory Judgment Act, as may be applicable.

DECISION

For the foregoing reasons, Complainant’s request for the transfer of the <suntan-supply.com> and <suntansupply.net> domain names to it is DENIED.

Jonathan Hudis, Esq., Panelist

Dated: June 18, 2001

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