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).
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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