Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Furrytails Limited, Park Royal, LONDON ("Complainant") represented by Robert H.G. Lockwood, of Smith, Gambrell, & Russell, LLP. The Respondent is Andrew Mitchell d/b/a Oxford Die-Cast, Woodstock, GA, USA ("Respondent").

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

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.

Honorable Paul A. Dorf (Ret.) 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 "furrytails.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@furrytails.com by e-mail.

A timely response was received and determined to be complete on February 15, 2001.

On February 23, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

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

A. Complainant

The Complainant contends that the domain name registered by the Respondent is identical or confusingly similar to Complainant’s mark, that the Respondent has no rights or legitimate interest in the domain name, and that the domain name was registered in bad faith.

B. Respondent

The Respondent contends that the domain name at issue is not identical or confusingly similar to Complainant’s mark, that the Respondent has rights and a legitimate interest in the domain name, and that the domain name was not registered in bad faith.

The Complainant is a UK company engaged in the business of designing, manufacturing and importing promotional plush toys, operating under the name "Furrytails, Ltd. The Respondent is a US company engaged in the business of marketing promotional resin collectibles of animals and characters, operating under the name "Furrytails, Inc."

On June 11, 1997, Respondent entered into Sales Agreement with the Complainant. At the time of the sale, Respondent was engaged in the business of marketing soft toys under the names Dial-A-Bear and Oxford Corporation. The Respondent then became an employee of Complainant. A Non-Competition clause was included in the Sales Agreement, and said clause was to remain in effect for so long as the Respondent remained an employee of the Complainant, as well as an additional six (6) months after leaving said employment. Respondent’s employment was terminated in April, 1998. Complainant liquidated the company eleven months after entering into the Sales Agreement with Respondent.

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.

At first glance, it appears that the domain name at issue is identical to the Complainant’s trade name; however, the term "furry tails" is comprised of generic words used to describe a creature’s tail. See Pet Warehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000) (finding that the domain name <petwarehouse.com> is not identical or confusingly similar because it contains two generic words). Also, the Complainant operates its promotional plush toy business in the United Kingdom and the Respondent operates its promotional resin collectible business in the United States. See also Realmark Cape Harbour L.L.C. v. Lewis, D2000-1435 (WIPO Dec. 11, 2000) (finding that other geographical locations in the United States and other countries may share the name "Cape Harbor" or "Cape Harbour" does not preclude that name from becoming associated with a particular provider of products or services in a limited geographic area).

The Complainant did not file a trademark application prior to the commencement of this proceeding. In fact, the Complainant filed its application on the same day as the Complaint was filed.

The Respondent’s employment with the Complainant was terminated in April, 1998. Even though there was a Non Competition clause in the Sales Agreement, the Respondent abided by the terms of the Agreement, and did not register the domain name at issue until seven (7) months after his termination.

Also, the Respondent is engaged in the business of marketing promotional resin collectibles of animals and characters in the United States, using the name "Furrytails, Inc." and intends to use the website as a marketplace. See Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding rights and legitimate interests in the domain name where the Respondent sought to develop a bona fide business use for the domain name).

The Respondent registered the domain name at issue more than two years ago. In addition, the Complainant and Respondent do business in different geographic locations, and the Complainant has registered the domain name "furrytails.co.uk" which reflects both its common law mark and geographic location. Finally, no evidence has been presented to support Complainant’s claim that Respondent offered to sell, for monetary gain, the domain name at issue to the Complainant. See Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug 21, 2000) (finding no bad faith even though Respondent’s ownership and purported use of the domain name frustrates Complainant’s efforts where the record does not indicate any purpose or intent on the part of the Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion).

As the Complainant has failed to prove each of the three elements under Section 4(a) of the Policy, the Complainant’s request for cancellation or transfer is denied. The domain name "furrytails.com" shall remain with the Respondent.