Gabriel Brothers, Inc. and Rugged Wearhouse, Inc. v. MSNHOSTING.COM
Claim Number: FA0111000101570
Complainant is Gabriel Brothers, Inc. and Rugged Wearhouse, Inc., Morgantown, WV (“Complainant”) represented by Carla C. Calcagno, of Howrey Simon Arnold & White. Respondent is MSNHOSTING.COM, Los Angeles, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domains name at issue are <ruggedwearhouse.org> and <ruggedwearhouse.net>, registered with Tucows.
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.
James A. Carmody, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 31, 2001; the Forum received a hard copy of the Complaint on November 2, 2001.
On November 1, 2001, Tucows confirmed by e-mail to the Forum that the domain names <ruggedwearhouse.org> and <ruggedwearhouse.net> are registered with Tucows and that Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 November 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 26, 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 email@example.com, firstname.lastname@example.org 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 December 11, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 names be transferred from the Respondent to the Complainant.
Respondent’s <ruggedwearhouse.org> and <ruggedwearhouse.net> domain names are identical to Complainant’s registered RUGEED WEARHOUSE trademark.
Respondent does not have any rights or legitimate interests in the domain names at issue.
Respondent registered and used the domain names in bad faith.
No Response received.
Complainant registered the RUGGED WEARHOUSE mark December 16, 1997. Complainant has continuously used the mark in its apparel, footwear, and related accessories business since 1996.
Complainant does over 20 million dollars in sales through its 19 store chain. Moreover, Complainant has spent more than one million in advertising promoting valuable goodwill associated with the mark. Finally, due to Complainant’s advertising, its mark is famous within the Virginia/Maryland area where Respondent is located.
Due to Respondent’s registration of the domain names at issue, Complainant has had to use the less appropriate <rwearhouse.com> domain name to develop a presence on the Internet.
Respondent registered the <ruggedwearhouse.net> and <ruggedwearhouse.org> domain names at issue on October 27, 2001. Respondent’s predecessor in interest, CCVA transferred the domain names to Respondent when Complainant filed an ICANN complaint against it. CCVA and Respondent are thought to be affiliates as CCVA’s billing address identifies Respondent as the administrative contact.
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.
Identical and/or Confusingly Similar
Respondent’s <ruggedwearhouse.net> and <ruggedwearhouse.org> domain names are identical to Complainant’s registered trademark because the addition of a top level like “.net” or “.org” to the domain names does not sufficiently distinguish them from the Complainant’s registered mark. See World Wrestling Fed'n Entm't., Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (finding that “[t]he addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish those names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent”); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also Technology Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to the Complainant’s mark, RADIO SHACK).
The Panel finds that Policy ¶ 4(a)(i) has been satisified.
Respondent’s failure to provide both a response and evidence that it has rights in the domain name indicates that Respondent has no rights or legitimate interests. 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).
Respondent does not have any rights or legitimate interests in the domain names at issue where it passively held the domain names. See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).
Respondent is not commonly known by the domain names and as a result it is not found to have rights or legitimate interests in it pursuant to 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 domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Respondent’s inactive use of the domain names is not considered a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), and as a result Respondent is not found to have any rights or legitimate interests in the domain name. See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where Respondent had made no actual use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s predecessor in interest’s attempt to sell the domain names to Complainant is evidence of bad faith use pursuant to Policy ¶ 4(b)(i). See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith). Moreover, Respondent’s attempt to sell the domain names at an auction house is evidence of bad faith. See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use).
Respondent’s passive holding of the domain names is evidence of bad faith. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or website that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith); see also Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that the Respondent registered and uses the domain name in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <ruggedwearhouse.org> and <ruggedwearhouse.net> be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 17, 2001
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