Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Zale Delaware, Inc., Irving, TX, USA ("Complainant") represented by Pamela S. Ratliff, of Thompson & Knight LLP. The Respondent is Vincent Espsoito, Staten Island, NY, USA ("Respondent").

The domain name at issue is "baileybanksbiddle.com" registered with Network Solutions.

The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Judge Ralph Yachnin, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 26, 2001; the Forum received a hard copy of the Complaint on January 29, 2001.

On January 29, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "baileybanksbiddle.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 21, 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@baileybanksbiddle.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On February 28,2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

The domain name "baileybanksbiddle.com" registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, namely, Complainant’s BAILEY BANKS & BIDDLE mark.

Respondent has no rights or legitimate interest with respect to "baileybanksbiddle.com". Respondent is not named Bailey Banks Biddle, he owns no trademarks or service marks incorporating these names, and he has never done business under the name Bailey Banks Biddle. Respondent is not offering goods or services under this name and is not commonly known as Bailey Banks Biddle.

Respondent registered and is using "baileybanksbiddle.com" in bad faith. It is not plausible that Respondent was unaware of Complainant’s famous trademark when he registered the domain name.

B. Respondent

The Respondent has not disputed the contentions addressed in the Complaint.

Established in 1832, BAILEY BANKS & BIDDLE is Complainant’s line of upscale jewelry stores. Complainant operates over 100 BAILEY BANKS & BIDDLE jewelry stores throughout the United States and in foreign countries. Complainant owns several trademark registrations for the mark BAILEY BANKS & BIDDLE in the United States and in foreign countries

Complainant first registered the mark BAILEY BANKS & BIDDLE in the United States for jewelry store services on July 31, 1979 (Reg. No. 1,123,513).

Respondent registered the Internet domain name "baileybanksbiddle.com" with Network Solutions, Inc. on January 15, 2000.

The domain name "baileybanksbiddle.com" does not yet and has not ever hosted an active web site. Respondent has not made any commercial or non-commercial activity in connection with the domain name or under the name Bailey Banks Biddle.

Complainant has made numerous unsuccessful attempts to contact Respondent regarding the domain name. Complainant sent two certified letters to Respondent explaining that Complainant owns the registered BAILEY BANKS & BIDDLE trademark and wishes to obtain ownership of the domain name from Respondent. Attached to each certified letter was a registrant name change agreement for Respondent’s signature. Someone (the signature is illegible) signed for at least one of the certified letters. However, Respondent has never responded to Complainant regarding the letters. Complainant also telephoned Respondent on several occasions, but was unable to reach Respondent or to leave a message for him.

According to the Network Solutions registrant records, Respondent has no valid email address and no fax number. At one point, Respondent engaged an attorney who called and left a message for Complainant. However, repeated calls to Respondent’s attorney were not returned. Thus, despite its efforts, Complainant has been unable to speak with Respondent, either directly or through counsel, regarding the domain name.

Respondent registered at least 40 domain names on January 14, 2000 and January 15, 2000, including "baileybanksbiddle.com". Respondent has not established an active web site at any of these domains. Furthermore, many of the domain names appear to be alternate spellings or intentional misspellings of domain names previously registered by third parties. For example, Respondent’s domain "how2looseweight.com" appears to be a misspelled version of "howtoloseweight.com", which is owned by PCH1 advertising and was registered in 1997. Respondent’s domain "saintjohnsuniversity.com" appears to be an alternate spelling of "stjohns.edu", which is owned by St. John’s University and was registered in 1991.

Paragraph 15(a) of the 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."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the 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:

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

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

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

The domain name "baileybanksbiddle.com" is the Complainant’s trademark BAILEY BANKS & BIDDLE minus the ampersand symbol ("&"). Symbols may not be used in domain names and are usually omitted. See PG&E Corp. v. Anderson D2000-1264 (WIPO Nov. 22, 2000), (noting that PG&E’s home web page is found at "www.pge.com" because the ampersand symbol is not reproducible in a domain name). Such a deletion is insignificant and therefore the domain name is confusingly similar to the Complainant’s trademark. See Strasburger & Price, LLP v. NameIsForSale.com, FA 94290 (Nat. Arb. Forum May 18, 2000) (finding "strasburgerprice.com" is confusingly similar to the Complainant’s STRASBURGER & PRICE mark).

Complainant has shown that Respondent is not commonly known by the domain name. Nor is Respondent using the domain name in connection with a bona fide offering of goods, services or for a legitimate noncommercial or fair use under Policy 4(c)(i), (ii) and (iii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainants’ marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Respondent asserted no rights or legitimate interests in the domain name at issue. Accordingly, Respondent’s failure to show evidence sufficient to rebut Complainant’s assertions, entitles the Panel to conclude that Respondent has no such rights or legitimate interests in regard to the domain name at issue. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and no use of the domain names has been proved).

Respondent has made no use of the domain name in question and Respondent’s failure to use the domain name constitutes passive holding. Passive holding is a demonstration of bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy).

Respondent has demonstrated a pattern of registering domain names confusingly similar to others’ marks and domain names. Also, Respondent’s registration of a domain name confusingly similar to the Complainant’s mark has prevented the complainant from using the mark. Given such a pattern of conduct, the Panel concludes that Respondent’s registering of the "baileybanksbiddle.com" domain name was in bad faith. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the Respondent violated Policy 4(b)(ii), as revealed by the number of other domain name registrations incorporating others’ trademarks and the fact that the domain names in question do not link to any on-line presence or website).

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Accordingly, it is Ordered that the domain name "baileybanksbiddle.com" be transferred from Respondent to Complainant.