ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Complainant: Hi Fibre Textiles (Sugoi) LTD.
Respondent: Peter Anderson
Contested Domain Name: Sugoi.com
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on May 24, 2000. The hard copy of the Complaint Form was received on March 31, 2000, along with the payment. The choice of jurisdiction and cover sheet were received on June 5, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested domain name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry led the Clerk of eResolution to the following conclusion: the Registrar is "CORE INTERNET COUNCIL OF REGISTRARS," the Whois database contains all the required contact information. The Contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An e-mail was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement on May 24, 2000. The requested information was received May 29, 2000.
The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2(a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Official Notification of commencement was e-mailed on June 5, 2000. There was a delay in sending it to ICANN, Network Solutions until June 6, 2000. Because of this delay and in all fairness to the Respondent, the Clerk's Office decided that June 6, 2000 should be taken as the starting date.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on June 6, 2000. That date is the commencement date of the administrative proceeding.
On June 6, 2000, the Clerk's office notified the complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
The e-mail sent to email@example.com and firstname.lastname@example.org; are the only ones to have been 'undeliverable'. The fax to the technical contact was not received but the faxes sent to the domain name holder, administrative contact and billing contact and the Respondent's representative were successful.
The complaint, Official Notification and all the annexes were sent by UPS to the Respondent's various addresses. According to the UPS tracking system, all were delivered.
The Respondent submitted a response on June 26, 2000 by e-mail. The response was one day late. The Respondent submitted a signed version of his response, along with his annexes, which was received on June 27, 2000. The Panel subsequently allowed a late filing of the response, and Complainant was afforded the ability to file any reply materials. Complainant did not file reply materials.
On July 3, 2000, the Clerk's Office contacted Mr. Alfred Frawley, and requested that he act as Panelist in this case.
On July 5, 2000, Mr. Alfred Frawley accepted to act as Panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On July 5, 2000, the Clerk's Office forwarded a user name and a password to Alfred Frawley, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On July 5, 2000, the parties were notified that Mr. Alfred Frawley had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 18, 2000.
3. Factual Background
The Complainant, Hi Fibre Textiles (Sugoi) LTD., sells sporting equipment, with an emphasis on cycling and outerwear. Respondent is an individual who states that he has a, to-date, unexecuted business plan to develop an online service for the Japan market.
4. Parties' Contentions
Complainant contends that it has rights in the trade name to Sugoi and that the Respondent registered the domain name in bad faith, in essence, to divert customers from Complainant's site or to prevent Complainant from using a domain name which was useful in Complainant's business. Respondent contends that Respondent's interest in the domain name is legitimate. Respondent asserts that he has a plan to start a web service for the Japanese market and that "sugoi" is the Japanese colloquial equivalent of "cool" or "awesome". Complainant has offered no evidence negating that assertion.
5. Discussion and Findings
To qualify for a remedy, the Complainant bears the burden of proving each of the three elements set forth in paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Policy"). The Complainant must show:
(1) The domain name 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;
(3) The domain name has been registered and is being used in bad faith.
These factors are discussed in series.
Identity or confusing similarity. The domain name sugoi.com is virtually identical to components of registered or applied-for trademarks of Complainant. Complainant does business under that name. The Panel concludes, based on the record submitted, that the mark Sugoi is a source identifier for Complainant's business and products. Complainant's mark has a broad reach, and several iterations of the mark have been registered. Several additional applications are pending. However, registration does not confer rights in gross -- stated another way, registration does not confer a monopoly on all uses of a term in all classifications of goods and services. If having registrations were all that the ICANN Policy required, Complainant would prevail. However, more is required by the Policy.
Illegitimacy. The Complainant asserts that the Respondent registered the domain name for an improper purpose. Respondent has articulated a purpose -- namely, to provide online service to Japan and claims that he adopted Japanese slang for "awesome" to carry this out. His plan has not been executed, but there is no direct evidence that his plan is a sham. Although the Panel has doubts about the soundness and efficacy of Respondent's plan, he nonetheless appears to have a legitimate purpose. He is not, and has not been, competing directly with Complainant. The parties appear to agree that, for a time, the URL sugoi.com pointed to a website that aggregated sellers of a number of goods and services. Among those sellers were some persons (unrelated to Respondent) who may have sold goods which compete with those of Complainant (although no specific direct competition was shown). No confusion of consumers or diversion of traffic or business from Complainant has been shown.
Bad Faith. The Panel finds no credible evidence that the mark was registered in bad faith, as the term is defined in ICANN Policy. The Panel, having presided over, and participated in, other ICANN arbitrations, recognizes that the non-testimonial procedures do not afford the ability to test and evaluate credibility. An ability to probe the credibility of Respondent's protestations and Complainant's assertions could well advance the question. That alternative is not available here. The indicia of bad faith relied upon by Complainant in this case (e.g., timing of registration, geographic proximity to Complainant) create only a hint that the Respondent knew of Complainant's mark. Standing alone, that does not suffice. However, under the prevailing rules, and in light of countervailing explanations and the inability to evaluate credibility, none of the assertions of Complainant establish bad faith under ICANN policy.
There is no evidence that Respondent has registered other domain names to sell for profit. The evidence that Respondent offered to sell this domain name for profit is inconclusive, in the Panel's view. The only evidence on this score is an after-the-fact memorialization by Complainant's counsel of a year-old conversation between Mr. David Holland of Hi-Fibre and the Respondent in which it is claimed Respondent "strongly implied that [he was] willing to sell it [the domain name] for the right price." ( Annex I ) Respondent challenges this characterization and states that Complainant was soliciting an offer to sell. Whatever the truth may be, it is imperceptible from this confluence of positions. What can be said is that the Panel, even accepting Complainant's assertion at face value, is unpersuaded that Complainant has shown that Respondent primarily registered the domain name to resell it at a profit over and above its direct expenses. This is what the Policy requires.
Insofar as bad faith is lacking, I determine that the most appropriate remedy for this dispute is a dismissal of the Complaint. I therefore dismiss the Complaint without prejudice to Complainant's refiling of a Complaint in the event that evidence of illegitimate purpose and bad faith, based solely on conduct of Respondent after the rendering of this decision, arises.
This decision of the Administrative Panel in Case No. AF-00232 was rendered on the 25th of July, 2000.
Portland, Maine, U.S.A.
(s) Alfred C. Frawley