DECISION

 

The Swiss Colony, Inc. v. Sahar Sarid d/b/a Commbine.com, LLC

Claim Number: FA0108000098820

PARTIES

The Complainant is The Swiss Colony, Inc., Monroe, WI (“Complainant”) represented by Bradley A. Ullrick, of Lee, Mann, Smith, McWilliams, Sweeney & Ohlson.  The Respondent is Sahar Sarid d/b/a Commbine.com, LLC, Magnolia, TX (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <seventhavenue.com>, registered with Stargate Communications, Inc.

PANEL

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

Anne M. Wallace, Q.C., acted as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 8, 2001; the Forum received a hard copy of the Complaint on August 10, 2001.

On August 8, 2001, Stargate Communications, Inc. confirmed by e-mail to the Forum that the domain name <seventhavenue.com> is registered with Stargate Communications, Inc. and that the Respondent is the current registrant of the name.  Stargate Communications, Inc. has verified that Respondent is bound by the Stargate Communications, 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 August 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 4, 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 postmaster@seventhavenue.com by e-mail.

A timely response was received and determined to be complete on August 13, 2001.

On August 23, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant, The Swiss Colony, Inc., is a Wisconsin corporation having its principal place of business in Munroe, Wisconsin. Complainant is publisher and owner of a well-known mail order catalog, known as SEVENTH AVENUE catalog. Complainant has been using SEVENTH AVENUE in connection with its mail order catalog sales since 1983, and since that time has been continuously mailing its SEVENTH AVENUE catalog.

Complainant now develops seven distinct catalog versions, which are mailed throughout the year to customers and prospects. Complainant has an active group of about 800,000 customers who have bought products from the catalog one or more times in the past year. About 20 million catalogs are mailed annually, with catalog sales of over $150 million. Complainant also purchases items for, and fulfills orders for several affiliated companies through its warehouse facilities in Iowa and Wisconsin. Complainant also markets products in five outlet stores under the name SEVENTH AVENUE, in Wisconsin, Illinois and Iowa.

Respondent, by his own admission to the Washington Post, is in the business of buying and selling of domain names. Evidence before me shows that Respondent owns more than thirty domain names. Examples of names owned by Respondent include: myweightlosscenter.com, medicmd.com, and sexfiesta.com. Many of Respondent’s domain names, including the disputed domain name, are associated with inactive web sites.

In 1986, Complainant registered the service mark SEVENTH AVENUE for mail order catalog sales in the field of general merchandise with the United States Patent and Trademark Office. This registration is now incontestable in accordance with Section 15 and 33(b) of the Lanham Act, codified in U.S.C. ss 1065 and 1115(b).

Complainant argues that Complainant’s federal registration put Respondent on constructive notice of Complainant’s rights to the SEVENTH AVENUE mark before Respondent’s registration of <seventhavenue.com>. Respondent was also put on actual notice of Complainant’s rights before Complainant instituted this proceeding. 

Complainant submits that the disputed domain name is almost identical to Complainant’s mark, the only difference being the .com ending which does not distract from its similarity. Therefore, Complainant contends the domain name is confusingly similar to Complainant’s mark.

Complainant further contends that Respondent, Sarid, and two of his companies, Registral.com and Commbine.com, are in the business of trafficking Internet domain names. Complainant contends that Respondent has no rights or legitimate interest in <seventhavenue.com> because at the time of registration Respondent had no legitimate business relating to or incorporating the term SEVENTH AVENUE nor had Respondent used the <seventhavenue.com> domain name or the SEVENTH AVENUE name in connection with the bona fide offering of goods or services. Furthermore, since Respondent registered the domain name on March 9, 2000, he has not developed any business relating to nor incorporating the term SEVENTH AVENUE. In fact, the domain name bears no relationship to any legitimate business of Respondent. Respondent owns no state or federal trademark or service mark registrations for the SEVENTH AVENUE mark. Respondent has not made any “use of, or demonstrable preparations to use, the domain name in connection with any bona fide offering of goods or services,” as set out in ICANN Policy paragraph 4(c)(i). Respondent’s only use has been to redirect traffic to other web site locations, which is not a bona fide use.

Complainant further contends that Respondent’s only interest in respect of the disputed <seventhavenue.com> domain name is to sell, rent or otherwise use it for profit. Respondent himself admits this in the Washington Post article submitted in evidence.

With respect to the issue of bad faith, Complainant contends that Respondent has on several occasions been found to have registered Internet domain names in bad faith. See, for example: South China Morning Post Publishers Ltd. v. Commbine.com, LLC, D2000-0707 (WIPO Oct. 20, 2000), finding Respondent had shown bad faith by registering southchinamorningpost.com; Garth Brooks v. Commbine.com, LLC, National Arbitration Forum, FA 96097 (Nat. Arb. Forum Jan. 12, 2001), where Respondent was found to be using garthbroooks.com in bad faith; Fisher Controls International, Inc. v. Registral.com LLC, FA 96749 (Nat. Arb. Forum Apr. 20, 2001), where Respondent was found to be using fisher.com in bad faith.

Further, Complainant contends that Respondent’s failure to put the disputed domain name to any legitimate use is also evidence of bad faith.

Complainant further argues that Respondent’s only plausible reason for registering the <seventhavenue.com> domain name was for purpose of selling, renting or otherwise transferring it to another, for an amount of valuable consideration in excess of Respondent’s expenses. As evidence of this contention, Complainant filed copies of e-mail communications between Complainant and Respondent wherein Respondent offered to sell the domain name to Complainant for $40,000.

Lastly, Complainant contends that in the present case Respondent has been shown to have previously and continually been engaged in a pattern of obtaining bad faith registrations of domain names. The natural result of such registrations is that the owners of the trademarks and service marks embodied in the domain name are prevented from reflecting their marks in corresponding domain names. Therefore, it is logical to conclude from the circumstances that Respondent would have to have known and intended this result.

B. Respondent

Respondent’s position, in total, is that the <seventhavenue.com> domain name was registered on March 9, 2000, and three days before that, domain sixthavenue.com was registered on March 6, 2000. The domains were registered as vanity for street names. Respondent was not aware of any trademark for street names. Respondent further says that Complainant’s threats of litigation are arrogant. Lastly, Respondent states that Respondent’s main goal was to have a website whereby businesses in Sixth and Seventh Avenue of New York City could have their own pages. That didn’t work as had been planned, so the current content is in its place.

FINDINGS

I find that the domain name <seventhavenue.com> is confusingly similar to Complainant’s registered service mark SEVENTH AVENUE, that Respondent has no rights or legitimate interest in the disputed domain name and that Respondent has registered and is using the domain name 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.”

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

With the exception of the .com extension, the disputed domain name is identical to Complainant’s SEVENTH AVENUE service mark which is registered and incontestable. Complainant succeeds on this element.

Rights or Legitimate Interests

Given the circumstances outlined above, it is clear that Respondent is not making a bona fide offering of goods or services (ICANN Policy 4(c)(i)). On the evidence before me, in spite of Respondent’s attempt to argue to the contrary, it is clear that Respondent registered this domain name, as he has others, with the intention only of selling the domain name at a considerable profit to someone with a legitimate interest in the name. Furthermore, Respondent’s passive holding of the domain name is also evidence Respondent has no rights or legitimate interest in the name.

Complainant succeeds on this element as well.

Registration and Use in Bad Faith

Respondent has registered and is using the domain name in bad faith, pursuant to Policy 4(b)(i) by acquiring the disputed domain name primarily for the purpose of selling the domain name in excess of its documented out-of-pocket costs. Respondent’s past conduct with respect to other domain names, Respondent’s admissions in the Washington Post and Respondent’s offer to sell this domain name to Complainant for $40,000 are all evidence of bad faith.

Lastly, I agree with the Complainant’s contention that the natural result of the Respondent’s activities in continually engaging in a pattern of obtaining bad faith registrations, is that the owners of the trademarks and service marks embodied in the domain name are prevented from reflecting their marks in corresponding domain names. This pattern of conduct leads to the inference that Respondent intends this result. This, too, is bad faith.

Complainant succeeds on this element as well.

DECISION

For the reasons set out above, I find for the Complainant, and I order that the disputed domain name <seventhavenue.com> be transferred to Complainant.

 

 

Anne M. Wallace, Q.C., Panelist

 

Dated: September 5, 2001

 

 

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