Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Diversified International Inc., Sterling, VA, USA ("Complainant"). The Respondent is Inter Sportz Inc., Canyon, TX, USA ("Respondent").

The domain name at issue is "russianjersey.com," registered with Gandi.

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

Bruce E. Meyerson as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 26, 2000; the Forum received a hard copy of the Complaint on December 26, 2000.

On January 10, 2001, Gandi confirmed by e-mail to the Forum that the domain name "russianjersey.com" is registered with Gandi and that the Respondent is the current registrant of the name. Gandi has verified that Respondent is bound by the Gandi 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 January 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 1, 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@russianjersey.com by e-mail. Respondent was granted a twenty-day extension of time to submit a response, creating a new deadline of February 21, 2001.

A timely response was received and determined to be complete on February 21, 2001.

On February 26, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Bruce E. Meyerson as Panelist.

Respondent supplemented its response on March 5, 2001 without satisfying the requirements of the Forum’s Supplemental Rule 7. The Panel did not consider this supplemental submission in arriving at its decision.

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

Complainant registered the domain name "russianjerseys.com" in June 1998. Complainant is the authorized representative in North America for the Lutch brand of products which are authentic Russian and Soviet hockey jerseys. Complainant asserts that Respondent has no right or legitimate interest in the disputed domain name, "russianjersey.com" because Complainant established "rights" to its domain name two years previously. Complainant also alleges that Respondent has acted in bad faith because the domain name is not the real URL of Respondent.

B. Respondent

Respondent contends that the Complainant does not have a trademark, service mark or common law rights in "russianjerseys.com." Respondent asserts that it is also an authorized representative of Lutch products. Respondent contends that "Russian jersey" is a general term for jerseys made in Russia and it is not a term that is uniquely associated with Complainant's business.

As Complainant has not demonstrated a protectible interest in its domain name "russianjerseys.com" it cannot prevent Respondent from using a similar domain name, "russianjersey.com."

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

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.

In order to prevail in an arbitration pursuant to the Policy, the Complainant must prove each of the three foregoing items. Because I have determined that the Complainant has not proved that Respondent has no right or legitimate interest in the disputed domain name, I find it unnecessary to consider the other two elements.

Respondent has established a domain name virtually identical to the domain name used by Complainant. If Complainant had a bona fide trademark or common law right to "Russian jerseys," perhaps the Complainant could make out a successful case under the Policy. But Complainant has not demonstrated any such rights in this name.

To the contrary, "Russian jerseys" is a general, descriptive term, identifiying an entire category of products---jerseys from Russia. These are common terms and thus the use of these terms by Complainant does not give the Complainant the sole rights to the words. See Sampatti.com Ltd. V. Chetan Rana, AF-0249 (eResolution July 31, 2000).

Complainant's position is influenced in large part by its understanding that it has the exclusive rights to distribute Lutch products in North America. Although the question of the parties' respective rights under licensing agreements with Lutch is beyond the scope of these proceedings, I would make one observation. Complainant would no doubt have a stronger case, if the Internet were limited to North America. Obviously, it is not. The domain names amount to a type of international yellow pages, allowing consumers to search for goods and services from across the globe. If the Internet is to achieve its true potential as a medium to facilitate communication and commerce, access to information about the availability of these goods and services must be relatively easy.

Absent a legally protective interest in the words "Russian jerseys," Complainant's attempt to preclude others from advertising for sale similar items would frustrate reasonable access by consumers to these products. This would not further and promote open and efficient global trade.

Complainant is correct that it has been held that the use of a domain name to route traffic to another web site constitutes bad faith, in such cases, however, it has been found that the offending party had misused a registered mark. E.g., Marriott International v. Momm Amed Ia, FA 95573 (Nat. Arb. Forum Oct. 23, 2000).

Accordingly, the relief requested by Complainant is denied.