Generic Top Level Domain Name (gTLD) Decisions

Complainant is John C. Nordt Co., Inc., Roanoke, VA, USA ("Complainant") represented by James J. Foster, of Wolf, Greenfield & Sacks, P.C. Respondent is Jewlery Exchange, Rochester, NY, USA ("Respondent") represented by Richard H. Holtzberg, of Holtzberg Law Firm.

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

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 March 1, 2001; the Forum received a hard copy of the Complaint on March 5, 2001.

On March 2, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "mothersring.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 4.0 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 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@mothersring.com by e-mail.

A timely response was received and determined to be complete on March 29, 2001.

An additional submission from Complainant was received and determined to be timely and complete on April 5, 2001.

A late additional submission from the Respondent was received on April 9, 2001.

On April 9, 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.

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

A. Complainant

Complainant alleges that it has two registrations for "MOTHER’S RING" with the U.S. Patent and Trademark Office ("USPTO"), the earliest of which has a filing date in 1958. Further, Complainant says that the domain name at issue, mothersring.com, is identical or confusingly similar to its trademark. Moreover, Complainant alleges that Respondent has no rights or legitimate interest in respect of the domain name at issue, because it is not known by that name and does not currently sell any goods identified by that name. By virtue of Respondent’s offer to sell the domain name at issue to Complainant for $20,000 and Respondent’s use of the website associated with the domain name at issue to shunt surfers to Respondent’s jewelryexchangeny.com website, Complainant alleges that Respondent’s bad faith is shown.

B. Respondent

Respondent argues that its domain name at issue is not identical or confusingly similar to a trademark in which the Complainant has rights, because the mark is descriptive and generic in describing rings manufactured and sold by a large number of jewelers. Simply said, Complainant has no enforceable rights in its registered trademark, says Respondent.

Further, Respondent alleges that it has a legal right and a legitimate interest in the domain name at issue, because it registered the domain without knowledge of Complainant’s trademark registration and because of Respondent’s investment of substantial time and financial resources to develop the associated website. Finally, Respondent claims that its offer to transfer the domain name at issue for $20,000 to Complainant was made in a privileged settlement context and should not be considered by this Panelist as evidence of bad faith.

C. Additional Submissions

Complainant’s Additional Submission replies to Respondent’s argument that the trademark has become generic and unenforceable. As long as a trademark identifies that the goods come from a common source, even though unknown, the mark serves the "identification" function argues Complainant. Further, Complainant takes issue with the claim of Respondent that the trademark is diluted and widely misused. In support of this, Complainant offers evidence that Wal-Mart Stores, Inc. discontinued unauthorized use of the "MOTHERS RING" trademark upon demand by Complainant.

Respondent’s Additional Response continues the argument that registration and use of the domain name at issue has always been proper because the trademark has lost any ability to identify associated goods and has become generic. In other respects, it generally provides further argument in support of the original Response.

MOTHER’S RING is a registered trademark of Complainant. The mark was registered for "rings" with the United States Patent and Trademark Office on July 7, 1959 as Registration No. 681,459. Complainant also owns a United States Registration No. 868,383 for THE MOTHER’S RING, also for "rings," which issued on April 22, 1969. Complainant’s trademarks, MOTHER’S RING and THE MOTHER’S RING, have become incontestable. Goods have been sold under one or both of those trademarks throughout the United States for over forty years and the trademarks are widely known in the jewelry business and among the jewelry-buying public. The domain name at issue is substantially identical to the trademarks owned by Complainant.

Respondent’s current name is The Jewelry Exchange and it does not currently sell any goods under any version of "mothers ring." No use is currently made of the mark in the website. Potential ring purchasers who access the mothersring.com website are automatically shunted to Respondent’s jewelryexchangeny.com website, which advertises rings that are in competition with products of Complainant. Respondent thus, at least potentially, diverts those customers, causing lost sales and other harm to Complainant.

Since Respondent is in the jewelry business, it would have likely been aware of Complainant’s trademarks and products and thus is presumed to have intended to appropriate the goodwill associated with the trademark when it initially adopted the domain name. Respondent would have been prudent to do a simple online trademark search prior to registering the domain name at issue and subsequently investing time and resources in the associated website.

Respondent is using the domain name at issue in an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s registered trademark and associated goods.

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.

Respondent’s domain name at issue is identical and/or confusingly similar to Complainant’s MOTHER’S RING trademark. See Coty Cosmetics Inc. v. Jaguar Ltd., AF-0416 (eResolution Oct. 24, 2000) (finding that the domain name <vanillafields.com> is identical in use to the registered Trademarks owned by Complainant); see also Chi-Chi’s Inc. v. Restaurant Commentary, D2000-0321 (WIPO June 29, 2000) (finding <chichis.com> to be identical and/or confusingly similar to Complainant’s CHI-CHI’S service mark).

Respondent has no rights or legitimate interests in the domain name because it is not commonly known by Complainant’s marks and Respondent has not used the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of domain names confusingly similar to Complainant’s mark to sell competing goods was an illegitimate use and not a bona fide offering of goods); see also 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).

Respondent is a competitor of the Complainant and Respondent appears to have intended to appropriate the goodwill associated with the trademark when it initially adopted the domain name. See General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark as a pornographic web site). Respondent registered and has used the domain name at issue in an intentional attempt to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the MOTHERS RING mark as to the source of products on that website. See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that given the competitive relationship Complainant and Respondent, Respondent likely registered the contested domain name with an intent of disrupting Complainant's business resulting from subsequent user confusion).

Complainant contends that Respondent’s offer to sell the domain name at a considerable profit is an additional showing of bad faith. See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, "if you are interested in buying this domain name, we would be ready to sell it for $10,000"). It is not necessary to decide whether this offer, communicated by counsel for Respondent to counsel for Complainant, was submitted under some sort of implied settlement privilege. There is other ample evidence of bad faith within the meaning of Paragraph 4(a)(3) of the Policy and the interpretive decisions cited.

This Panelist commends the high quality of briefing on the part of counsel of the parties. It is the Decision of this Panel that the domain name <mothersring.com> be transferred from Respondent to Complainant.