Forum File No.: FA 0003000094313
The above-entitled matter came on for an administrative
hearing on April 17, 2000, before the undersigned on the Complaint of
Samsonite Corporation, hereafter "Complainant", against Colony Holding,
hereafter "Respondent". Complainant, Samsonite appears by and through
Gregory W. O'Connor, attorney and Respondent, Colony Holding appears
through Jeffrey Kaplan.
Domain Name: Samsonite.org
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Colony Holding Ent. Inc. (Samsonite6.org)
Date of Domain Name Registration: October 29, 1998
Date Complaint Filed: March 13, 2000
Date of Commencement of Administrative Proceeding in Accordance
with Rule 2(a) and Rule 4(c): March 17, 2000.
Due date for a Response: April 10, 2000.
After reviewing the Complaint, and determining it
to be in administrative compliance, the National Arbitration Forum (The
Forum) forwarded the Complaint to the Respondent on March 17, 2000 in
compliance with Rule 2(a), and the administrative proceeding was commenced
pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately
notified Network Solutions, Inc. (Network Solutions), the Internet Corporation
for Assigned Names and Numbers (ICANN), and the Complainant that the
administrative proceeding had commenced. The Respondent responded to
The Forum by memorandum dated March 22, 2000, pursuant to Rule 5(a).
I have concluded to not consider materials submitted by the parties
after this date.
On October 29, 1998, Respondent registered the domain
name "Samsonite.org" with Network Solutions, the entity that is the
Registrar of the domain name. On March 13, 2000, Network Solutions verified
that Respondent is the Registrant for the domain name "Samsonite.org",
and that further by registering its domain name with Network Solutions,
Respondent agreed to resolve any dispute regarding its domain name through
ICANN's Rules for Uniform Domain Name Dispute Resolution Policy, and
the Uniform Domain Name Dispute Resolution Policy.
FINDINGS AND CONCLUSIONS
- The Complainant is a corporation engaged in the manufacture and
sale of all manner of travel goods including luggage, clothing,
umbrellas, leather goods, tables, chairs, luggage carts, luggage
locks, pill organizers, travel clothing irons and other similar
items and retain store services.
- The Respondent is an individual who states intent to use the domain
name to establish a "non-commercial use web page showing comparative
products". Respondent claims to have assigned the domain name to
Peter George on December 29, 1999. This transfer has not been acknowledged
by Network Solutions. Respondent is therefore a proper party to
this action as no transfer can be accomplished until acknowledged
by Network Solutions.
- Complainant holds the exclusive rights to at least sixty-four
registrations with the United States Patent and Trademark Office
for the use of the trademark "Samsonite". In addition, Complainant
has registered the trademark "Samsonite" in countries throughout
the world to protect the use of the "Samsonite" trademark.
- Complainant is registrant of the domain name "samsonite.com" and
maintains an active web site using this trademark name.
- On October 29, 1998, Respondent registered the name "Samsonite.org"
with Network Solutions, Inc. No use has been made of the name although
at least three separate attempts have been made to transfer the
subject domain name to others within the twelve-month period preceding
the filing of this complaint.
- Respondent claims that his proposed use of the site is for "non-commercial
purposes" and its content will be for "comparative advertising".
Respondent's evidence is not sufficient to establish that his use
is exempt from the Federal Trademark Division Act, to-wit:
- To establish an exempt use for comparative advertising
or promotion, the proponent should identify their own competing
goods or services;
- To establish non-commercial use, the proponent should be able
to identify the non-commercial purpose and objectives for the
use of the trademark in more detail than "comparative advertising";
- Comparison of advertising for products generally offered for
retail sale is a commercial activity as it may affect the business
of the concerns involved;
- Use of the domain name "Samsonite.org" does not reflect the
proposed use described by Respondent. Naming a web site whose
purpose is to compare advertising with the name of one of the
companies to be displayed is not a neutral "comparative" use
and is inconsistent with the concept of non-commercial use.
- The domain name in dispute is nearly identical and confusingly
similar to the trademark or service mark in which the Complainant
has established rights.
- Respondent has not established any right or legitimate interest
with respect to the domain name "Samsonite.org".
- Respondent registered the domain name "Samsonite.org" in bad faith
and has no legitimate interests in respect to said domain name.
The following is evidence of bad faith:
- Respondent has shown no legitimate business interest
in any product or service that uses the name "Samsonite";
- Respondent registered the commonly known trademark and business
name of "Samsonite" with actual or constructive knowledge of
its use by Complainant;
- That the domain name "Samsonite.org" would create a likelihood
of confusion with the Complainant's mark and would dilute Complainant's
right in the use of its trademark and established business name;
- Use of the domain name by Respondent would confuse, mislead
and disrupt customers of Complainant's business;
- Respondent has sought payment from Claimant in exchange for
transfer of the domain name which is in excess of his documented
out-of-pocket expenses related to the domain name;
- Respondent has offered to at least two other parties to transfer
the domain name which demonstrates a lack of intent or purpose
to utilize the domain name to further his own legitimate business
- The primary purpose for registering the domain name "Samsonite.org"
is to disrupt the business of Complainant for the personal gain
- The Complainant's prayer for relief requests that the domain name
"Samsonite.org" be transferred from Respondent to Complainant.
The undersigned certifies that he has acted independently
and has no known conflict of interest to serve as the Arbitrator in
this proceeding. Having been duly selected, and being neutral, the undersigned
makes the following DECISION:
- Based upon the foregoing Findings and Conclusions, I find the
domain name registered by the Respondent is nearly identical or
confusingly similar to the business name of the Complainant; that
Respondent has no legitimate interest with respect to the domain
name of "Samsonite.org"; that Respondent registered the domain name
in bad faith for the primary purpose of disrupting the business
of a competitor, the Complainant herein.
Accordingly, pursuant to Rule 4(i), it is decided that
the domain name "Samsonite.org" should be transferred from Respondent
to the Complainant.
Dated: April 17, 2000
Judge James P. Buchele (Retired)