Generic Top Level Domain Name (gTLD) Decisions

The Complainant is, Gene Autry Survivors Trust, Studio City, CA, USA ("Complainant") represented by Jill M. Pietrini, Manatt, Phelps & Phillips, LLP. The Respondent is Old Records, Corona, CA, USA ("Respondent").

The domain name at issue is geneautry.com, registered with Network Solutions, Inc.

The undersigned certifies that he 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 Karl V. Fink (Retired) is Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 27, 2000; the Forum received a hard copy of the Complaint on November 27, 2000.

On November 29, 2000, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name geneautry.com is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. 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 ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On November 30, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 20, 2000, 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 Respondentís registration as technical, administrative, and billing contacts, and to postmaster@geneautry.com by e-mail.

Respondent submitted communications dated December 13, 2000, December 15, 2000, and January 2, 2001, which have been considered by the Panel.

On December 28, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Judge Karl V. Fink (Retired) as Panelist.

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

A. Complainant

Respondent registered the domain name geneautry.com which corresponds to the name and trademark GENE AUTRY and is confusingly similar to the federally registered trademark GENE AUTRY & Design.

Respondent has registered the domain name, which corresponds to the name and famous trademark of another, and has attempted to use the ownership of this domain name to extort money out of the trademark owner.

The Trust, as the full name suggests, is the surviving trust of Gene Autry. It is the owner of the federally registered trademark GENE AUTRY & Design. The Trust also owns the mark GENE AUTRY, and the goodwill associated with Gene Autryís name, likeness, and image.

In August of 2000, the Trust was in the process of building a website devoted to Gene Autryís life and work, and the ongoing sale of GENE AUTRY merchandise. In doing so, the Trust discovered that the domain name was registered by Respondent.

On August 22, 2000, attorneys for the Trust sent Respondent a cease and desist letter demanding the immediate transfer of the domain name to the Trust.

On August 31, 2000, Respondent telephoned the attorneys for the Trust, and left them a message, and sent an e-mail conveying the same message. Respondent offered to sell the domain name making an original demand of $10,000.

Complainant claims that the grounds for the transfer for the domain name are established by the information that it submitted.

B. Respondent

The National Arbitration Forum has no legal right to make a decision.

After the forum proceeds he will take the matter up with a court of law.

Complainant has lied.

Complainant is the owner of the federally registered trademark GENE AUTRY & Design. The Trust also owns the mark GENE AUTRY, and the goodwill associated with Gene Autryís name, likeness, and image.

Respondent registered the domain name geneautry.com which corresponds to the name and trademark GENE AUTRY and is confusingly similar to the federally registered trademark GENE AUTRY & Design.

On August 22, 2000, attorneys for the Trust sent Respondent a cease and desist letter demanding the immediate transfer of the domain name to the Trust.

On August 31, 2000, Respondent telephoned the attorneys for the Trust, and left them a message, and sent an e-mail conveying the same message. Respondent offered to sell the domain name making an original demand of $10,000.

Respondent has not contested Complainantís assertions with respect to the elements of Complainantís case.

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

Complainant, Gene Autry Survivors Trust, is the owner of a federally registered trademark GENE AUTRY & Design for "pre-recorded videotapes featuring motion picturesí musical sound recording; and pre-recorded compact disks and audio cassettes, featuring music." Complainant has established that it has rights in the trademark and service mark.

The domain name at issue, geneautry.com, is identical or confusingly similar to Complainantís marks. The addition of ë.com.í is of no significance. See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding that there "is no doubt that the domain name [bmw.org] is identical to the Complainantís well-known and registered trademarks [BMW]").

Respondent has not contested Complainantís assertions with respect to this element of the ICANN Policy.

Complainant has proven this element.

Respondent is not using the domain name in a bona fide offering of goods or services, nor has Respondent demonstrated any preparations to do so. See ICANN Policy 4(c)(i). Respondent is not commonly known as geneautry.com. See ICANN Policy 4(c)(ii). Respondent is not making any use of the domain name, noncommercial or otherwise, other than to offer it for sale for $10,000, an amount in excess of out of pocket expenses associated with the acquisition of the domain name. See ICANN Policy 4(c)(iii).

Respondent has chosen not to assert that it has any rights or legitimate interests in the domain name.

Complainant has proven this element.

Respondent has registered and is using the domain name in bad faith by offering it for sale to Complainant for $10,000, an amount clearly in excess of its costs directly related to the domain name, in violation of ICANN Policy 4(b)(i). See World Wrestling Federation Entertainment v. Bossman, D99-0001 (WIPO Jan. 14, 2000) (finding Respondent registered and used the domain name in bad faith by offering it for sale to Complainant for valuable consideration in excess of any out-of-pocket costs directly related to the domain name).

The domain name has been used and registered in bad faith for the reason that the Respondent has registered the domain name for the purpose of preventing the trademark holder, namely the Trust, from obtaining the domain name in violation of ICANN Policy 4(b)(ii).

The Respondent registered the domain name, with full knowledge of the Trustís rights in the name and mark GENE AUTRY. Such knowledge may be inferred from the strong rights that the Trust has in this mark, as well as the fact that GENE AUTRY, as the name of a deceased individual, is sufficiently unique such that Respondent is unlikely to have coined this domain name. See Neuberger Berman Inc. v. Alfred Jacobson, D2000-0323 (WIPO June 12, 2000) (domain "newbergerberman.com" too unique to have been coined).

Respondent does not contest Complainantís assertions of registration and use in bad faith.

Complainant has proven this element.

The panel directs that the domain name "geneautry.com" be transferred to Complainant, Gene Autry Survivors Trust.