DECISION

James L. Throneburg v. Domain For Sale

Claim Number: FA0203000105959

PARTIES

Complainant is James L. Throneburg, Statesville, NC (“Complainant”) represented by Larry C. Jones, of Alston & Bird, LLP.  Respondent is Domain For Sale, Obninsk, Kaluga, RUSSIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thorlosocks.com>, registered with Bulkregister.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 20, 2002; the Forum received a hard copy of the Complaint on March 25, 2002.

On March 20, 2002, Bulkregister confirmed by e-mail to the Forum that the domain name <thorlosocks.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 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 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@thorlosocks.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 23, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Because the THORLO mark is associated with “socks,” the disputed domain name <thorlosocks.com> is confusingly similar to Complainant’s mark.

2. Respondent did not have preexisting rights to <thorlosocks.com>  before it registered the disputed domain name.  Thus, Respondent has no rights or legitimate interests in the disputed domain name.

3. Respondent is using the disputed domain name for commercial purposes to direct Internet users to a website where sexually explicit images are displayed.  Therefore, Respondent has registered and used the disputed domain name in bad faith.

B. Respondent

No Response was submitted.

FINDINGS

Complainant, James L. Throneburg, has entered into an exclusive license agreement with THOR×LO, Inc. regarding the sale of merchandise under the THORLO mark.  THOR×LO is one of the largest and most well known manufactures of socks in the United States, and sells its products internationally.  Complainant is also the Chairman of the Board and Chief Executive Officer of THOR×LO.

Operating under the exclusive license granted by Complainant, THOR×LO has sold socks in the United States and various parts of the world under the THORLO mark since at least as early as June 17, 1963.  Complainant has obtained several registrations of his THORLO mark throughout the world, including U.S. Trademark Reg. No. 1,119,696, registered on June 5, 1979.  Complainant’s licensee has promoted the THORLO mark internationally in various forms of media, including the Internet at <thorlo.com>.

Respondent, known as “Domain For Sale” registered <thorlosocks.com> on June 26, 2001 and has linked the disputed domain name with third party websites that depict sexually explicit content.  The Technical Contact for the disputed domain name is “NicGod.”  According to Complainant, “NicGod” has been involved in at least one other UDRP dispute involving similar circumstances that are very similar to those in the present case.  See Golden Corral Corp. v. NicGod Domain Services aka For Sale, FA 102621 (Nat. Arb. Forum Jan. 7, 2002) (transferring <goldencorralrest.com> from Respondent to Complainant).   

DISCUSSION

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(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

Complainant has established its rights to the THORLO mark through federal regsitration and subsequent continuous use.

The disputed domain name <thorlosocks.com> is confusingly to Complainant’s THORLO mark.  The disputed domain name incorporates Complainant’s mark in its entirety and merely adds the generic term “socks.”  Such a modification does not change the overall impression of the disputed domain name and thus, the disputed domain name and Complainant’s mark are confusingly similar.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).  The confusing similarity is even more apparent considering that Complainant’s mark is associated with “socks.”  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has not filed a Response.  Thus, the Panel may conclude that Respondent has no rights or legitimate interests in <thorlosocks.com>.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  Since a Response was not filed, the Panel will presume that all allegations in the Complaint are true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Respondent has linked the disputed domain name to a third party website that offers pornographic images.  This activity by Respondent is not a demonstration of using  <thorlosocks.com> in connection with a bona fide offering or service pursuant to Policy ¶ 4(c)(i).  See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).

The only evidence presented describes Respondent as “Domain For Sale” and “NicGod.”  Therefore, Respondent is not commonly known as <thorlosocks.com> and has failed to satisfy Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

By diverting Internet users to a third-party website, Respondent has not made a noncommercial or fair use of <thorlosocks.com> pursuant to Policy ¶ 4(c)(iii).  See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Because Respondent has identified itself as “Domain For Sale,” there is inference that Respondent registered the disputed domain name with the intention to sell it.  This is evidence that Respondent has registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the Respondent’s WHOIS registration information contained the words, “This is domain name is for sale.”).

Respondent has registered a domain name that prevents Complainant from reflecting its THORLO mark in the corresponding domain name.  According to Complainant, Respondent has been involved in similar activity.  See Golden Corral Corp. v. NicGod Domain Services aka For Sale, FA 102621 (Nat. Arb. Forum Jan. 7, 2002) (finding that Respondent has engaged in a pattern of registering domain names infringing upon the marks of others).  Therefore, Respondent has registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii).  See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks).

Respondent has linked a domain name that is confusingly similar to Complainant’s THORLO mark to a third-party website that offers sexually explicit material.  This activity demonstrates that Respondent has used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <thorlosocks.com> domain name be transferred from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: April 29, 2002

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