ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
Under the ICANN Uniform Domain Name Dispute Resolution Policy
1. Parties and Contested Domain Name
The Complainant, Naturewood Home Furnishings Incorporated, brings this action against the Respondent, The Sofa Factory, Inc., pursuant to ICANN’s Uniform Dispute Resolution Policy (the “Policy”) seeking transfer of the registration of the domain names naturewood.net and naturewood.org (the “Domain Names”). The Domain Names were registered through the domain name registrar Network Solutions, Inc. (the “Registrar”).
2. Procedural history
The Complainant filed the Complaint online through eResolution’s web site on July 5, 2001. Payment was received on June 29, 2001. The hardcopy of the Complaint Form and annexes were received July 5, 2001. The Clerk then sent a copy of the Complaint Form and required Cover Sheet in accordance with paragraph 2(a) of ICANN’S Rules for the Policy. On July 6, 2001, the Clerk’s Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On July 27, 2001, the Clerk’s Office appointed a panelist to the case and notified the parties that a decision would be delivered by August 9, 2001. The appointed panelist did not deliver a decision by August 9, 2001. The case was reassigned to this Panelist.
No response to the Complaint was received by eResolution via web site submission, e-mail or postal mail.Section 5(e) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy provides: “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.” Accordingly, all of the facts stated in the Complaint are assumed to be true for purposes of evaluating whether the Domain Names should be transferred pursuant to the Policy.
3. Factual Backgrounds
All facts discussed herein are derived from the Complaint or the annexes submitted by Complainant. The Complainant has been using the trademark NATURWOOD in California, Nevada and Arizona in connection with retail furniture stores since 1948. The Complainant has filed an application to register its NATURWOOD trademark with the U.S. Patent and Trademark Office but the application has not yet registered. Complainant has advertised its NATURWOOD extensively. It spent nearly $1 million in advertising in 1998.
The Respondent is a local competitor of the Complainant in the retail furniture industry. Respondent operates a furniture showroom in the same market area in which Complainant’s furniture showrooms are located. On April 26, 2001, Complainant’s counsel contact « Respondent’s representative, Sheldon. » Sheldon told Complainant’s counsel that Respondent « was trying to sell ‘a bunch’ of domain names, including naturewood.net and naturewood.org » and that Complainant’s counsel would have to speak with Respondent’s president, Mike Midgett, to discuss pricing. After Complainant’s counsel left several telephone messages for Midgett, he returned her call on June 21, 2001, and stated that he would sell each domain name for $20,000. Midgett also said that if the Complainant did not cooperate, Midgett would consider transferring the domain names to another company named « Naturewood » for no consideration, thus preventing Complainant from using the domain names.
As of May 7, 2001, Respondent maintained a web site (to which the domain name naturewood.net was pointed) that listed a number of domain names for sale, including the Domain Names and other domain names associated with the names of other furniture retailers. At least as early as June 21, 2001, Respondent linked the Domain Names to its own web site.
4. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to its trademark, that the Respondent has no legitimate interest in the Domain Name, and that the Respondent registered and used the Domain Name in bad faith. The Respondent has not responded to the Complainant’s allegations.
5. Discussions and Findings
Section 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The second levels of the Domain Names (« naturewood ») are nearly identical to the Complainant’s trademark and trade name, « NATURWOOD. » The two words would be pronounced the same and are very similar in appearance. Accordingly, the Panel finds that the second levels of Domain Names are confusingly similar to the Complainant’s NATURWOOD trademark.
B. Respondent’s Interest in Domain Name
A respondent can demonstrate a legitimate interest in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue
The word «Naturewood» does not form any part of the Respondent’s name and the Respondent has not provided the Panel with any evidence that it used or made preparations to use the Domain Names in connection with a bona fide offering of goods or services. Further, the Respondent has not demonstrated that it made any legitimate noncommercial or fair use of the Domain Names. Finally, the Complainant has submitted a declaration of Lisa Keyes, its Vice President, stating that Respondent has never been known by any trade name the same as or similar to « Naturewood. » Accordingly, the Panel finds that the Respondent does not have any right or legitimate interest in respect of the Domain Names.
C. Bad Faith
Section 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
This list of bad faith factors is not exclusive. Other circumstances can demonstrate bad faith.Because the Respondent is a competitor of the Complainant, the Panel finds that the Respondent has acted in bad faith in violation of Paragraph 4(b)(iii) by registering the Domain Names primarily for the purpose of disrupting the business of a competitor. The Panel also finds bad faith in violation of Paragraph 4(b)(ii) on the ground that the Respondent registered the Domain Names in order to prevent the Complainant from reflecting its mark in corresponding domain names, because the Respondent engaged in a pattern of such conduct by registering several competiors’ names as domain names. Further, because the Respondent offered to sell the Domain Names to Complainant for valuable consideration in excess of out-of-pocket costs, the Panel finds that the Respondent acted in bad faith in violation of Paragraph 4(b)(i) of the Policy. Finally, because the Respondent directed the Domain Names to its web site, the Panel finds that the Respondent acted in bad faith in violation of Paragraph 4(b)(iv) of the Policy, since people who typed in the Domain Names and arrived at Respondent’s web site could have been confused into believing that Respondent or its products are somehow affiliated with Complainant.
Because the Complainant has proved the three elements required for transfer of the Domain Names, the Panel orders that the Domain Names be transferred to the Complainant.