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Generic Top Level Domain Name (gTLD) Decisions |
Del Laboratories, Inc. v Nett Corp.
Claim Number: FA0202000104555
PARTIES
The
Complainant is Del Laboratories, Inc.,
Uniondale, NY (“Complainant”) represented by Jeffrey L. Eichen, of Schnader,
Harrison, Segal & Lewis, LLP.
The Respondent is Nett Corp.,
Tallahassee, FL (“Respondent”) represented by Howard M. Neu, of Law
Offices of Howard Neu, P.A.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <lacross.com>
and<cornsilk.com>, registered with Verisign - Network Solutions, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and, to
the best of their knowledge, have no known conflict
in serving as Panelists in
this proceeding.
M.
Scott Donahey Esq., Peter L. Michaelson Esq. and Alan L. Limbury Esq. as
Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on February 6, 2002; the Forum received
a hard copy of the
Complaint on February 8, 2002.
On
February 8, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the
Forum that the domain names <lacross.com> and <cornsilk.com> are registered with Verisign - Network
Solutions, Inc. and that the Respondent is the current registrant of the
names. Verisign - Network Solutions,
Inc. has verified that Respondent is bound by the Verisign - Network Solutions,
Inc. 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 11, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of March 4, 2002 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@lacross.com, postmaster@cornsilk.com by
e-mail.
A
timely Response was received and determined to be complete on March 4, 2002.
Additional
submissions were received from Complainant on March 11, 2002.
On March 15, 2002, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed M. Scott
Donahey Esq., Peter L. Michaelson Esq. and Alan L. Limbury Esq. as Panelists.
RELIEF SOUGHT
The
Complainant requests that the domain names be transferred from the Respondent
to the Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
B.
Respondent
Prior to
the receipt of this Complaint, Respondent had no knowledge of the existence of
Complainant or any trademarks owned by the
Complainant.
Respondent
is in the business of warehousing and utilizing domains primarily of a generic
nature and at no time has Respondent sought
to sell or transfer any such
domains to any other party including Complainant.
Respondent
registered the disputed domain names and has used them continuously since that
date as a search engine.
Respondent
has never utilized the domain <lacross.com> to sell nail tools or
implements, nor used the domain <cornsilk.com> to sell makeup.
A
search of “Google” search engine for the word “LACROSS” reveals 10800 listings
for the word.
Although
the proper dictionary spelling of the sport “lacrosse” is with an “e” at the
end, the sport is commonly described with or
without the “e”. The LACROSS name
is very popular. It is the name of at
least 3 cities (Lacross, Wisconsin, Kansas and Washington), a brand of boots, a
brand of shower door enclosures,
a brand of ties, the surname of thousands of
individuals, a commercial & industrial electrical contractor company, a
pattern
of carpeting, and a brand of grooming equipment, to name just a few of
its uses.
A
search of the AOL SEARCH reveals that there are 9398 listings of the word
“CORNSILK”, and a search of the GOOGLE search engine reveals
a total of 45,900
listings. The CORNSILK name is also very
popular. In addition to its definition
as a part of an ear of corn, there is the cornsilk fly, cornsilk duvet cover,
sold by TARGET©, cornsilk
capsules used by herbalists, the Cornsilk (tm) Rose,
the cornsilk finish, Coleco’s CORNSILK KIDS (tm), various person’s surnames
and
Cornsilk’s Indian Crafts Mall, to name just a few of its uses.
Respondent
denies that it has not used and is not using the domain names for any
legitimate business purpose or “other non-commercial
activity”. Respondent has a legitimate business
interest in creating traffic to web sites on the Internet and utilizes these
domains among others
to do so. Further, Respondent did not acquire these
domains to either compete with Complainant or sell them to Complainant or
anyone
else as evidenced by Respondent counsel’s letter to Complainant’s
counsel indicating that the domains were not for sale.
Respondent
denies that it registered or has ever used the disputed domain names in bad
faith. At no time has Respondent
utilized Complainant’s trademarks of the words LACROSS or CORNSILK. Respondent
specifically denies each
of the circumstances specified in paragraph 4(b) of
the Policy.
Complainant
points out various other domains allegedly owned by Respondent including six
out of 400 that are similar to registered
trademarks. Thus, Complainant would
automatically brand Respondent as a cybersquatter because of the 1.5% of his
domains that are
similar to registered trademarks. However, Complainant fails to show how any of these other domains
are relevant to this case or how ownership thereof may be considered
to be
cybersquatting.
Significantly,
Complainant refers to Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,
D2001-0031 (WIPO Apr. 13, 2001).
The holding in that case was in favor of RESPONDENT, wherein the Panel
decided that although Respondent’s domain <sweeps.com>
was identical to
Complainant’s mark, Respondent had a legitimate business interest in the domain
and ruled for Respondent.
Although
the Respondent has registered and used in its business <lacross.com>
since March 22, 1999, <lacross.net> was only registered by Hakon Haugnes
of London, England, in January 2001, which provided
Complainant with ample time
to acquire that domain, but failed to do so.
Although
Complainant was cognizant of Respondent’s registration of <lacross.com>
in September 2000, by virtue of the letter it wrote to Respondent, it made no
attempt to “protect” its trademark “corn silk”
by registering the domain <cornsilk.com>. Although Respondent didn’t register <cornsilk.com>
until September 12, 2001, <cornsilk.net> and all other TLDs are available
to Complainant as of the date of filing this
response.
Other
Administrative Panels have held that resolving domains to search engines
comprises a “legitimate business purpose”.
In Howard B. Srevens, Inc. dba PCProfessor v. The PC Professor, D2001-1282
(WIPO Dec. 21, 2001) respondent contended that it “was providing free
information services at the web site to which the domain name
resolves” (i.e.
search engine). The Panel held that “
the domain name registered by Respondent is identical to the mark in which the
Complainant has rights, but that
the Respondent has rights or legitimate
interest in respect of the domain name at issue, and that the Respondent’s domain
name has
not been registered and is not being used in bad faith”.
The
terms “lacross” and “cornsilk” are generic and, although trademarked by
Complainant, are in general use by the general public. Thus, they are not “famous”, enough for
purposes of the Policy, to allow Complainant exclusive use of the words. See The Clorox Co. v. Marble Solutions, D2001-0923
(WIPO Nov. 20, 2001) and Virgin Enter.,
Ltd. v. Internet Domains, D2001-1008 (WIPO Oct. 16, 2001).
Complainant
cannot and has not exhibited any evidence of “bad faith” registration and use
under the Policy, paragraph 4(b)(i) by Respondent.
In
General Mach. Prod. Co., Inc. v. Prime Domains, FA 92531 (Nat. Arb.
Forum Mar. 16, 2000) where the facts were similar, complainant asserted that
respondent had no trademark or other
intellectual property rights to the domain
name; the domain names were not the legal name of respondent; respondent had no
prior
lawful use of the domain names; respondent was not doing business under
the domain name <craftwork.com>; respondent was not
using nor were there
any demonstrable preparations to use the domain name <craftwork.com> in
connection with a bona fide offering
of goods or services; respondent as an
individual, business or other organization was not commonly known under the
domain names;
and respondent did not have a legitimate non-commercial fair use
of the domain names. All of these
allegations are contained in the instant Complaint. Complainant failed to prove that Respondent had no rights or
legitimate interest in respect to the domain name.
In
the instant case, Complainant’s trademark is not fanciful or arbitrary and
Complainant has submitted no evidence to establish either
fame or strong
secondary meaning in its mark such that consumers are likely to associate <lacross.com>
or <cornsilk.com> only with Complainant. See also Grodberg v. Rugly Enter., LLC., FA 92975 (Nat.
Arb. Forum Mar. 2, 2000) (where there was no showing that “phonespell” had
acquired any secondary meaning).
In
CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar.
28, 2000) the panel found that even though the domain <concierge.com> was
identical to complainant’s mark,
the mark was not famous or distinctive, and
further that “CONCIERGE is not so associated with just one source that only
that source
could claim a legitimate use of the mark”. Additionally, complainant argued that
respondent lacked a legitimate interest in the name because it was never known
as CONCIERGE
prior to using the domain name and was notified of complainant’s
objections before it commercially launched its site. The Panel found those arguments to be without merit.
It
has been held that a complainant is required to prove not only that the domain
has been registered in bad faith, but that it is also being used
in bad faith.
It
is obvious that Complainant’s trademarks “LACROSS” and “CORNSILK” and
Respondent’s domains <lacross.com> and <cornsilk.com>
are virtually identical. However, there
is nothing independently famous about Complainant’s trademarks. The words
“lacross” and “cornsilk” are common words
with a number of uses. Thus, even though the domains are similar to
the trademarks, no confusion is generated.
Respondent
can prove that it has “rights or a legitimate interest in respect to the domain
names” in that they are being used in its
business. The fact that some other
domain names registered by Respondent may be identical to trademarks owned by
others is, in itself,
insufficient evidence of the intent to profit from or
otherwise abuse such trademark rights.
Complainant
cannot provide any evidence to indicate that Respondent knew or should have
known of its trade name use or trademark registrations
such as a direct
relationship or wide reputation of or extensive publicity in connection with
Complainants’ trade name or trademarks.
Respondent affirmatively alleges that it had no such knowledge when
registering the domain names <lacross.com> and <cornsilk.com>,
nor does it have such knowledge in the use of that domain.
There
is no evidence in the Complaint or in its attachments that Respondent
registered the disputed domain names for the purpose of
disrupting the business
of a competitor. Nor can the
Complainant show that Respondent intentionally attempted to create a likelihood
of confusion with Complainants’ mark.
C.
Additional Submissions
First,
Respondent identifies itself as being “in the business of warehousing and
utilizing domains primarily of a generic nature”
and “creating traffic to web
sites on the Internet.” As it turns
out, however, all of Respondent’s domain names (or at least all of the ones
located by Complainant) resolve to virtually
identical web pages; in none of
which is there anything to suggest that Respondent is engaged in any legitimate
business at all. The web sites do not
offer any advertising, text, pictures, video or any other sort of recognizable
content. Instead, all of the web pages
contain the same list of generic links and state “This Site Has Not Yet Been
Developed,” as though Respondent
plans to add content to the site in the
future. However, no such content has ever
been added. How can Respondent claim
that it is in the business of “utilizing” domain names such as <lacross.com>
and <cornsilk.com> and “creating traffic” for its web sites when
its domain names resolve to web sites that are nothing more than identical,
minimal
“place holders”? The Panel can
safely reject these claims as completely unsupported by the facts.
Interestingly,
however, Complainant has been able to locate some clues as to Respondent’s true
business—registering and reselling
domain names. Complainant recently located a web site at the address <domainsforsale.com>
that is virtually identical to that reached through
the disputed domain names.
The domain name <domainsforsale.com> is registered to a Cayman Islands
corporation, so information
about the true owner of this web site is not
readily available. However, the
similarities between this web site and Respondent’s other web sites are
striking. And the name of the web
site—“domains for sale”—describes Respondent’s business exactly. It would be difficult to imagine how two
completely unrelated entities came up with web sites as closely matched as
these two. The Panel should reject
Respondent’s self-serving but inaccurate description of its business.
FINDINGS
The Panel finds that the disputed domain
names are identical to trademarks in which the Complainant has rights; the
Respondent has
no rights or legitimate interests in respect of the disputed
domain names and that those names were registered and are being used
in bad faith.
DISCUSSION
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.” Since both parties and the Registrar are resident in the United
States, it is appropriate to apply
principles of United States law.
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.
Identical and/or Confusingly Similar
Essential or virtual identity is sufficient
for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc
v. Camp Creek. Co., Inc., D2000‑0113 (WIPO Apr. 13, 2000), Toyota Jidosha Kabushiki Kaisha v. S&S
Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000); Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) and Blue
Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000).
See
also Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., [2000] USCA2 33; 202 F.3d 489,
497-98 (2d Cir. 2000) (the differences
between the trademark “sporty’s” and the domain name <sportys.com> –
specifically, an apostrophe
in the trademark and the addition of .com in the domain name – are
“inconsequential”, such that the domain name is “indistinguishable” from and
“certainly ‘confusingly
similar’ to the protected mark”); Brookfield Communications, Inc. v. West Coast Entertainment Corp.[1999] USCA9 225; ,
174 F.3d 1036, 1055 (9th Cir. 1999) (differences between the domain
name <moviebuff.com> and the mark “MovieBuff” are “inconsequential”). See
also Public Serv. Co. v. Nexus Energy
Software, Inc., 36 F.Supp.2d 436 (D. Mass. 1999)
(<energyplace.com> and “Energy Place” are virtually identical); Minnesota Mining & Mfg. Co. v. Taylor,
21 F.Supp.2d 1003, 1005 (D.Minn. 1998) (<post-it.com> and “Post-It” are
the same); Interstellar Starship Services
Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997)(<epix.com>
“is the same mark” as EPIX); Planned
Parenthood Federation of America, Inc. v. Bucci, No. 97-0629, 1997 WL
133313, at *8 (S.D.N.Y. Mar. 24, 1997) (<planned-parenthood.com> and
“Planned Parenthood” are essentially
identical), aff’d, 152 F.3d 920 (2d Cir. 1998), cert. denied, 525 U.S. 834, 119 S.Ct. 90, 142 L.Ed.2d 71 (1998).
The
Respondent acknowledges that the Complainant’s trademarks and the disputed
domain names are virtually identical and the Panel
so finds. The Complainant has established this
element.
Rights or Legitimate Interests
On the material before the Panel it appears that Respondent,
Nett Corporation, is not commonly known by either of the disputed domain
names.
It is clear from the Complaint and from the correspondence between the parties
that Complainant has not licensed or otherwise
authorized Respondent to
register the disputed domain names nor to use its trademarks. Those marks have been registered in the
United States for many years in connection with Complainant’s goods and those
registrations
are incontestable. The widespread availability over many years of
Complainant’s goods in national retail chain stores throughout
the United States
and the large volume of such of inexpensive articles required to generate over
US$50 million in annual worldwide
sales leads the Panel to conclude that the
Complainant’s marks are well-known amongst consumers, including consumers in
Tallahassee,
Florida, where Respondent is located, and have become distinctive,
in the fields of nail implements and makeup, of Complainant’s
products.
These circumstances are sufficient to
constitute a prima facie showing by
Complainant of absence of rights or legitimate interest in the disputed domain
names on the part of Respondent. The
evidentiary burden therefore shifts to Respondent to show by concrete evidence
that it does have rights or legitimate interests
in those names: Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and the cases
there cited.
Respondent
contends the terms “lacross” and “cornsilk” are generic and, although
trademarked by Complainant, are in general use by
the public and are thus not
“famous” enough for purposes of the Policy, to allow Complainant exclusive use
of the words. It cites as authority for
this proposition The Clorox Co. v. Marble Solutions, D2001-0923 (WIPO Nov. 20, 2001) and Virgin Enter.,
Ltd. v. Internet Domains, D2001-1008 (WIPO Oct. 16, 2001). Neither of those cases supports that
proposition.
In Clorox the Panel specifically
rejected the submission that the word Clorox had become generic for bleach and
also found for Complainant on the issue of legitimacy. In Virgin
the domain name <virginmail> was found not to be identical or confusingly
similar to the trademark VIRGIN. Moreover, respondent
was found to have a
legitimate interest in the domain name because of the use to which that name
was put (an adult website featuring
sexually inexperienced females). That use had
some connection with the domain name, a feature notably absent here.
In any event, the proposition is
untenable. Respondent appears to concede that words in common use are not
barred from registration
or use as trademarks where, as here, they are arbitrary
in relation to the goods or services in connection with which they are used.
In
requiring a complainant to establish both rights in a trademark and absence in
the respondent of any rights or legitimate interests
in the domain name, the
Policy contemplates that a complainant may succeed in the absence of an
entitlement to exclusive use of the
words comprising the mark.
Respondent points to General Mach.
Prod. Co., Inc. v Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000)
as factually similar, where complainant failed to establish this element. The
registered
mark in that case was
stylized and the relevant passage in that case was:
“General
Machines has not proven, however, that Prime Domains has no legitimate
interests in respect of the domain name craftwork.com.
General Machines'
trademark is not fanciful or arbitrary, and General Machines has submitted no
evidence to establish either fame
or strong secondary meaning in its mark such
that consumers are likely to associate craftwork.com only with General
Machines. As
Prime Domains has demonstrated, the term "craftwork" is
in widespread use in a descriptive sense. The Panel finds therefore
that Prime
Domains has rebutted General Machines' arguments and has proven that it is in
the business of selling generic and descriptive
domain names such as
craftwork.com. As a result, Prime Domains does have a legitimate interest in
the domain name. That Prime Domains
has offered to sell this descriptive,
non-source identifying domain name does not make its interest illegitimate”.
Here, Complainant has submitted evidence
of its use and advertising of the marks (Complaint Ex. B, D and F) and
Respondent has not
contradicted Complainant’s assertions as to the value of its
annual sales, its advertising expenditure and nationwide distribution.
Respondent has noted the dictionary meanings of lacrosse and corn silk but has
pointed in particular to the use of these terms by
others as brands.
The Panel is of the view that “la cross”
(without a final “e”) is not descriptive at all and that “corn silk” is not in
widespread
use as a descriptive expression to the same degree as
craftwork. It finds on the evidence and
on Complainant’s uncontradicted assertions that CORN SILK has achieved
secondary meaning amongst consumers
in the United States as denoting
Complainant’s makeup products and that LA CROSS denotes Complainant’s nail
products. Accordingly the Panel
considers that the facts of this case differ from those found in General
Machines. For the same reason the Panel does not find Respondent’s
citations of Grodberg v. Rugly Enterprises, LLC, FA 92975 (Nat.
Arb. Forum Mar. 2, 2000) <phonespell.com> or CRS Technology Corp. v.
Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000)<concierge.com>
to be persuasive.
Respondent states that prior to receipt of this Complaint,
it had no knowledge of the existence of Complainant or of any trademarks
owned
by Complainant (Response [5.1]). In light of Complainant’s counsel’s letters to
Respondent dated September 8, 2000 (Complaint
Ex. I) and December 6, 2001
(Complaint Ex.K) the Panel does not accept this assertion.
Respondent describes its business as
warehousing and utilizing domain names primarily of a generic nature
[emphasis added by the Panel]. It does not deny Complainant’s assertion that it
has also registered some domain
names incorporating the well-known trademarks
of others. It states that it has used the disputed domain names continuously
since
registration as a search engine. It claims a legitimate business interest
in creating traffic to web sites on the Internet and that
it utilizes the
disputed domain names, among others, to do so. Although no detail is provided
as to how the generation of such traffic
constitutes a business, the Panel
accepts that Respondent derives commercial gain from this activity.
Respondent has several web sites displaying virtually
identical layout and content, in no case mentioning or having anything
explicitly
to do with the domain name that leads to the site (such as lacross,
cornsilk, studebaker, jaguarxjs, chynawwf, wwfwarzone and futurama)
(Complaint
Ex. H, J and N) but in each case stating “This Site Has Not Yet Been Developed”
and offering arriving Internauts opportunities
to reach other web sites in
which they might have an interest.
To arrive at Respondent’s sites connected
to the disputed domain names in the first place, the Internaut must be looking
for <lacross.com> or <cornsilk.com>. It is possible
that some Internauts might be interested in the sport of lacrosse and omit to
type the final “e”, either by design
or by accident. It is possible that others might be interested in the silky tuft
or tassel at the tip of an ear of corn. The absence from those sites
of any
content relating to the common English meanings of the disputed domain names
leads the Panel to conclude that, contrary to
its assertions, Respondent did
not have those meanings in mind when it registered the disputed domain names
and that Respondent’s
use of the disputed domain names to resolve to search
sites unrelated to the names themselves is not bona fide use. See, e.g Multimatic,
Inc. v Heinz Jakob / Effecta, AF0264 (eResolution Sept. 16, 2000):
“Far
more is needed to show use or proper preparation for such use, on which
legitimacy can be predicated, than merely linking, through
a third-party site,
a contested domain name to a page containing a list of links”.
Respondent cites Howard B. Srevens,
Inc. dba PCProfessor v. The PC Professor, D2001-1282 (WIPO Dec. 21, 2001)
as authority for the proposition that resolving domain names to search engines
comprises a legitimate
business purpose. The domain name in that case did not
resolve to a search engine but to a web site at which respondent answered
questions related to personal computers without charge for the inquiry.
Having regard to Complainant’s
well-known, longstanding trademarks and the widespread availability in the
United States of its products,
the Panel concludes that most Internauts
arriving at Respondent’s sites <lacross.com> and <cornsilk.com>
are looking for a site associated with Complainant’s products and that
Respondent derives commercial benefit from this traffic.
Since the volume of
traffic likely to be generated from seekers of information about the game of
lacrosse and about tassels on the
tips of ears of corn is minuscule by
comparison with that likely to be generated from persons interested in
Complainant’s products,
the Panel regards it as highly improbable, to say the
least, that Respondent was unaware of the reputation enjoyed by Complainant’s
trademarks when registering the disputed domain names. The Panel finds
Respondent was so aware.
Use which intentionally trades on the
fame of another cannot constitute a “bona fide” offering of goods or services: Ciccone, p/k/a Madonna v. Parisi and “Madonna.com,”
D2000-0847 (WIPO Oct. 12, 2000).
Respondent has not demonstrated by
concrete evidence that it has rights or legitimate interests in respect of the
disputed domain
names. Complainant has
established this element.
Registration and Use in Bad Faith
Respondent points to other users of the
words lacross, lacrosse and corn silk and to the interests of others in those
words as trademarks
or domain names. The Policy does not call upon the Panel to
consider nor to adjudicate the rights of others not present in the
proceeding. The Panel is instructed to
evaluate only the rights, interests, and conduct of the parties. In this regard
the Panel respectfully
adopts the dissenting opinion in First Am. Funds,
Inc. v Ult. Search, Inc., D2000-1840 (WIPO Apr. 20, 2001).
In SportSoft Golf, Inc. v. Hale
Irwin’s Golfers’ Passport, FA 94956 (Nat. Arb. Forum July 11, 2000) a
finding of bad faith was made where the respondent “knew or should have known”
of the registration
and use of the trade mark prior to registering the domain
name. Likewise Marriott Int’l, Inc. v. Marriot, FA 94737 (Nat. Arb.
Forum June 15, 2000); Canada Inc. v. Ursino, AF-0211 (eResolution July
3, 2000) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com, FA
95037 (Nat. Arb. Forum July 20, 2000).
Here the Panel finds Respondent had
actual knowledge of Complainant’s marks and did not register the disputed
domain names with the
common dictionary meanings of lacrosse or corn silk in
mind. Under these circumstances
Respondent’s reliance upon dictionary meanings is of no avail:
“The statement that
"madonna" is a word in the English language, by itself, is no more of
a defense than would be the similar
statement made in reference to the word
"coke". Respondent has not even
attempted to tie in his web site to any dictionary definition of madonna. The only plausible explanation for
Respondent’s actions appears to be an intentional effort to trade upon the fame
of Complainant’s
name and mark for commercial gain”: Ciccone,
p/k/a Madonna v. Parisi and
“Madonna.com,”
D2000-0847 (WIPO Oct. 12, 2000).
The Panel finds that, in generating
traffic to his web sites, with knowledge of Complainant’s marks, Respondent has
used the disputed
domain names intentionally to attract, for commercial gain,
Internauts to his web sites by creating a likelihood of confusion with
Complainant’s marks as to the source, sponsorship, affiliation or endorsement
of Respondent’s web sites. This is evidence of both
bad faith registration and
use under paragraph 4(b)(iv) of the Policy.
Complainant has established this element.
DECISION
Pursuant to Paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel directs that the domain names <lacross.com>
and <cornsilk.com> be transferred to Complainant.
___________________________________________________
Alan L. Limbury
Presiding Panelist
M. Scott Donahey
Panelist
Peter L. Michaelson
Panelist
Dated: March 26, 2002
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