Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Complainant in this administrative proceeding is Barnes & Noble College Bookstores, Inc., a New York corporation, located and doing business at 33 East 17^th Street, New York, New York, U.S.A. 10003.

The Respondent is Leasure Interactive, whose postal address is P.O. Box 716, Reisterstown, Maryland, U.S.A. 21136.

The domain name in dispute is as follows: <bunsandnoble.com>. The domain name was registered with Network Solutions, Inc. (NSI) on August 27, 1999.

On October 5, 2001, the WIPO Arbitration and Mediation Center received from Complainant a Complaint , via e-mail, for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999, ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules). As originally filed, the Complaint identified Complainant as "Barnes and Noble College Bookstores, Inc. In an amendment dated February 15, 2002, Complainant moved to amend the Complaint to identify itself as "Barnes & Noble College Bookstores, Inc."

The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, and the administrative panel was properly constituted

The instant Administrative Proceeding was commenced on October 22, 2001.

Respondent did not file a Response and a "Notification of Respondent Default," dated November 20, 2001, was forwarded by WIPO to Respondent.

The decision of the Panel was due to WIPO on or before February 27, 2002.

Complainant Barnes & Noble College Bookstores, Inc. and their respective affiliates (collectively, Barnes & Noble) owns and operates over 1,000 retail bookstores throughout the U.S. Complainant has been doing business under the BARNES & NOBLE mark exclusively and continuously for over 25 years.

Complainant is the owner of U.S. and other registrations for the mark BARNES & NOBLE and <barnesandnoble.com>. See Complaint, Exhibits 6 and 7. Complainant also owns the registration for the domain name <barnesandnoble.com>.

Respondent registered and is presently using the domain name <bunsandnoble.com> in connection with a web site that sells and displays hard core sexual content and merchandise. See Complaint, Exhibit 8. As noted above, Respondent registered the disputed domain name with NSI on August 27, 1999.

On August 10, 2001, Complainant mailed a letter to Respondent demanding that it "cease and desist" from all further use of the domain name <bunsandnoble.com> and relinquish the name to Complainant. See Complaint, Exhibit 9. On August 29, 2001, the letter was returned as "undeliverable." Complainant then sent a copy of the letter to Respondent via e-mail on September 4, 2001. This e-mail has not been responded to. In another effort to contact Respondent, Complainant, on September 14, 2001, sent the cease and desist letter to a company believed to handle the order-fulfillment operations of Respondent's <bunsandnoble.com> web site. On September 15, the order-fulfillment company informed Complainant that it did not own the disputed domain name and had no authority to transfer the name to Complainant.

Complainant contends that it clearly has prior rights in the mark and domain name BARNES & NOBLE and that the disputed domain name <bunsandnoble.com> is confusingly similar to Complainant's BARNES & NOBLE marks in sound, appearance, meaning, connotation, and commercial impression.

Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name. It maintains that: (1) Respondent has no relationship with or permission from Complainant to use the marks; (2) the use of the disputed domain name to sell adult sex products fails to demonstrate use of the domain name in connection with a bona fide offering of goods or services; and (3) Respondent's use of the domain name is not legitimate noncommercial or fair use because Respondent "trades off the fame of Complainant's marks to lure Internet users to its web site for commercial gain."

Complainant finally maintains that Respondent's registration and use of the <bunsandnoble.com> domain name is in bad faith because the web site: (1) creates a likelihood of confusion between the domain name and Complainant's famous marks; (2) dilutes and tarnishes Complainant's famous marks; and (3) attracts, for commercial gain, Internet users to the web site by creating a likelihood of confusion with Complainant's marks. Complainant also alleges that Respondent, through its agent, expressed its intent to sell the domain name to third parties for consideration in excess of the out-of-pocket costs directly related to the domain name.

The Panel has carefully reviewed the evidence presented and determines that Complainant has met all the requirements set forth in para. 4(a) of the Policy.

As an initial matter, the Panel concludes that Barnes & Noble has established rights in its BARNES & NOBLE marks through its registrations in the U.S. and in other countries. The Panel further finds that the domain name <bunsandnoble.com> is confusingly similar to the BARNES & NOBLE marks in so far as the domain name is similar in sound to Complainant's marks.

The Panel further concludes that the evidence supports a determination that Respondent has no legitimate rights or interests in the disputed domain name. While the evidence establishes that Respondent, before any notice of the instant dispute, used its domain name in connection with the offering of goods or services, i.e., adult novelties, previous Panel decisions support a determination that such offering was not "bona fide," within the meaning of para. 4c.(i) of the Policy. As noted, for example, in First American Funds Inc. v. Ult.Search, Inc., WIPO Case D2000-1840, it is necessary to consider the bona fides of the use, as well as the bona fides of the offer for sale, in determining whether Respondent possesses a legitimate right or interest in the domain name. In this case, while the evidence supports a finding of a bona fide offering, it does not support a determination of a bona fide use. Rather, given the prominence and fame of Complainant's marks, it is more probable than not that Respondent, in registering the disputed domain name, was motivated by a desire to benefit from the widespread reputation of the BARNES & NOBLE marks. That being the case, Respondent can not be found to have used the domain name in connection with a "bona fide" offering of goods or services. The evidence does not provide any other basis upon which to find that Respondent has a legitimate right or interest in the domain name.

With respect to the issue of "bad faith" registration and use, the Panel concludes that while none of the enumerated circumstances set forth in para. 4b. of the Policy is applicable, the requisite "bad faith" exists. As noted by the majority in the First American Funds case, supra, "Although the Policy draws a clear distinction between the requirement of showing absence of legitimate right or interest in paragraph 4(a)(ii), and the showing of bad faith registration and use in paragraph 4(a)(iii), in reality it is difficult to separate the consideration of the one from the other. Absence of any right or interest on the part of Respondent may be of assistance in determining bad faith registration and use, and bad faith registration and use may be of assistance in determining the legitimacy of the claimed right or interest." In this case, it is clear to the Panel that Respondent adopted and registered the <bunsandnoble.com> domain name in an effort to take advantage of the goodwill Complainant had built up in its BARNES & NOBLE marks. Under such circumstances, it may be determined that Respondent registered and is using the domain name in "bad faith."

In view of the above, the Panel grants Complainant's request for transfer to it of the domain name <bunsandnoble.com>.

Jeffrey M. Samuels

Sole Panelist

Date: March 25, 2002