Generic Top Level Domain Name (gTLD) Decisions

Complainant is Sunglass Hut Corporation, Coral Gables, FL, USA ("Complainant") represented by Mark C. Maroon. Respondent is Domain Administrator, Huntington Beach, CA, USA ("Respondent").

The domain name at issue is "sunglasseshut.com" registered with BulkRegister.

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.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 20, 2001; the Forum received a hard copy of the Complaint on February 26, 2001.

On February 21, 2001, BulkRegister confirmed by e-mail to the Forum that the domain name "sunglasseshut.com" is registered with BulkRegister and that Respondent is the current registrant of the name. BulkRegister has verified that Respondent is bound by the BulkRegister 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 March 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 2, 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@sunglasseshut.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 April 6, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed the Hon. James A. Carmody 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 Respondent.

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

A. Complainant

Complainant contends that Respondent has registered a domain name that is identical to and confusingly similar to its trademark registered for and in use by Complainant. Further, Complainant contends that Respondent has no rights or legitimate interests to the domain name, and that Respondent has registered and is using the domain name in bad faith.

Respondent submitted no response in this matter

The service mark owned by Complainant upon which this dispute is based, is "Sunglass Hut," applied to retail optical store services and retail sunglass store services, as well as in e-commerce. Complainant has used the name and mark "Sunglass Hut" in connection with its services continuously April 1971. On February 2, 1988, Complainant obtained a U.S. registered service mark for "Sunglass Hut," which is still current.

Additionally, Complainant has obtained service mark registrations for "Sunglass Hut" or "Sunglass Hut International" in over 50 countries worldwide.

Nearly 2,000 retail outlets owned by Complainant offer services under its "Sunglass Hut" and "Sunglass Hut International" marks. In addition to the United States, retail outlets have been established in Australia, Belgium, Switzerland, Spain, France, the United Kingdom, the Republic of Ireland, the Netherlands, New Zealand, Portugal and Singapore.

Complainant is also the owner of the domain name <sunglasshut.com>, registered with Network Solutions on October 27, 1995, where it has sold sunglasses and related accessories since that time.

Respondent is using the domain name to link to a website that states, "Sung’s Lasses Hut -- Home of the most Beautiful Girls around the world." The site then states, "Our site is being remodeled. Please come back soon."

On December 11, 2000, Complainant sent Respondent a "cease and desist" letter.

Respondent’s developing website is consistent with an email response sent by Respondent to Complainant in reply to Complainant’s "cease and desist" letter. In Respondent’s email, he indicated that his intended use of the domain name was for a website in connection with beautiful females from the Sung Dynasty.

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.

Respondent deliberately chose the domain name in question, set apart from Complainant’s mark only by the letters "es." This slight variation is confusingly similar to Complainant’s SUNGLASS HUT mark. See National Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s "National Geographic" mark); Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that "the addition of an "s" to the end of the Complainant’s mark, "Cream Pie" does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation").

The Panel concludes that Policy ¶ 4(a)(i) is satisfied.

Respondent claims it plans to use the domain name in connection with a website devoted to beautiful females from the Sung Dynasty. This creative idea paradoxically coincides with Complainant’s SUNGLASS HUT mark. Prior UDRP Panels have found no rights or legitimate interests in a domain name where respondent’s purported use seems rather dubious. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding no rights or legitimate interests where the Respondent’s proposed business plan does not correspond with the Respondent’s use of the word "Reuters" or the acronym "REttungsUnfallTransportERkennungsServiceMOBILE" which the Respondent claims the domain name represents). As such, this Panel cannot find any rights or legitimate interests in the domain name.

Moreover, Respondent is not commonly known by the disputed domain name, nor has Respondent used the domain name in connection with a legitimate or noncommercial use.

See Broadcom Corp. v Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

The Panel concludes that Policy ¶ 4(a)(ii) is satisfied.

The subject domain name has been registered and used by Respondent in bad faith.

While Respondent’s website indicates future development of the website, no actual use has been established. This Panel concludes that Complainant need not wait until Respondent actually posts subject matter on the website in order to seek transfer of the domain name. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because "It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy"). It is clear that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Policy ¶ 4(b)(iv).

Respondent’s intended use of the site to display "Beautiful Girls" is likely to be offensive and derogatory to Complainant and its customers who would be confused when accessing the Respondent’s website. See CCA Indust., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that "this association with a pornographic web site can itself constitute a bad faith"); MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith). Respondent is not prohibited from creating and maintaining such a website, but it cannot be allowed to use the confusingly similar domain name in connection with such an endeavor.

The Panel concludes that Policy ¶ 4(a)(iii) is satisfied.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "sunglasseshut.com" be transferred from the Respondent to the Complainant.