Zale Delaware, Inc. v. Sandra Tedesco

[Indexed as: Zale Delaware v. Tedesco]
[Indexed as: GORDONSJEWELERS.COM et al.]

Forum File No.: FA0005000094799

Commenced: 12 May 2000.
Judgment: 27 June 2000.

Presiding Panelist: Robert R. Merhige, Jr.

Domain name - Domain name dispute resolution policy - U.S. Trade Mark - Failure to respond - Identical - Confusingly similar - Bad faith registration - Distinction between ".COM" and ".NET".

Complainant operates jewelry stores around the world and owns trademark registrations for the marks BaileyBanksandBiddle and Gordon'sJewelers in the U.S. and other countries. Respondent registered the domain names BAILEYBANDSANDBIDDLE.COM, GORDONSJEWELERS.COM and GORDONSJEWELERS.NET.

HELD, Names Transferred to Complainant.

The Respondent failed to respond to the complaint and was found accordingly in default.  It was nevertheless concluded that the domain names in issue are identical to Complainant's marks.  As a matter of distinction, it was noted that the mark GordonsJewelers.com and GordonsJewelers.net were confusingly similar.

Respondent did not offer goods or services  under the disputed names and is not commonly known by the domain names, giving them neither rights nor a legitimate interest in any of the domain names.  It was further concluded that Respondent's registration of the domain names was primarily for the purpose of selling or transferring them and constitutes bad faith. 
 

Policies Referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999.
 

PARTIES

The Complainant is Zale Delaware, Inc., Irving, TX, USA ("Complainant"). The
Respondent is Sandra Tedesco, New York, NY, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain names at issue are "BAILEYBANKSANDBIDDLE.COM",
"GORDONSJEWELERS.COM", and "GORDONSJEWELERS.NET" registered with
Network Solutions, Inc. "NSI".

PANELIST(s)   Robert R. Merhige, Jr. as Panelist.
 

Merhige, Jr., Panelist -

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum")
electronically on 05/09/2000; The Forum received a hard copy of the Complaint 05/12/2000.

On 05/13/2000, NSI confirmed by e-mail to The Forum that the domain names
"BAILEYBANKSANDBIDDLE.COM", "GORDONSJEWELERS.COM", and
"GORDONSJEWELERS.NET" are registered with NSI and that the Respondent is the current registrant of the name.  NSI has verified that Respondent is bound by the Network Solutions Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's UDRP.

On 05/12/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/16/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts by email. 

On 06/16/2000, pursuant to Complainant's request to have the dispute decided by a single-member panel, the Forum appointed the undersigned, Robert R. Merhige, Jr., as Panelist.  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. 

Having reviewed the communications records in the case file, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform 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 the Respondent.
 

RELIEF SOUGHT

            Complainant requests the contested names in issue be transferred to it.
 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends that it owns and holds rights to the domain names in issue and that Respondent has wrongfully registered the internet domain names "baileybanksandbiddle.com," "gordonsjewelers.com," and "gordonsjewelers.net" with Network Solutions, Inc.  Complainant also alleges that these domain names are identical or nearly identical to Complainant's trademarks, which were registered as trademarks long before Respondent registered the domain names with Network Solutions, Inc.  Complainant further asserts that it owns the exclusive rights in these trademarks, and that the Respondent has no rights or legitimate interest in the said name.  Complainant further asserts that Respondent registered the domain names primarily for the purpose of selling or otherwise transferring the domain name registrations to the Complainant.

B. Respondent

Respondent, having failed to respond to the Complaint herein, is accordingly in default.
 

FINDINGS

The record reflects that Complainant is a jewelry retailer headquartered in Irving, Texas.  Complainant sells jewelry through retail stores and over the internet, having opened its first store in Wichita Falls, Texas, in 1924.  As of the date of the filing of the Complaint herein, Complainant operates in excess of 1,000 jewelry stores throughout the world and owns trademark registrations for the marks BaileyBanksandBiddle®, Gordon'sJewelers®, in the United States and in a number of other countries.  As a consequence of these registrations, it is a fair conclusion that trademark registration offices around the world have recognized the Complainant's exclusive rights in the marks in issue by virtue of said offices having granted registration marks.  Specifically, the mark BaileyBanksandBiddle® was registered for jewelry store services on July 31, 1979; the mark Gordon'sJewelers® was registered for retail jewelry store services on March 5, 1991.

The record further reflects that Respondent is not offering goods or services under these names and is not commonly known by the domain names.  I find that Respondent does not have any rights or legitimate interest in any of the domain names in issue and further that Complainant has the exclusive right to each of those names. 

I further conclude from the unrefuted record that Respondent's registration of the domain names in issue was primarily for the purpose of selling or transferring them and her use of them as reflected in the record constitutes bad faith.

Accordingly, I conclude that Complainant has borne its burden of proof as required by Paragraph 4(b)(i)(ii) and (iii) of ICANN's Uniform Name Dispute Policy.
 

DISCUSSION 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs
that the complainant must prove each of the following three elements in order to
demonstrate claims 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.

The record reflects that the domain names in issue are, as a practical matter, identical to Complainant's marks.  The only minor distinction, which at the least is confusingly similar to Complainant's mark, is that in the mark GordonsJewelers.com there is the addition of the letters ".net."

Identical and/or Confusingly Similar

Each of the domain names in issue appear to be identical to those marks which are owned by the Complainant herein. 
 

DECISION

Based on the above-stated findings, it is Ordered as follows:

That the domain names BaileyBanksandBiddle.com, GordonsJewelers.com and GordonsJewelers.net be forthwith transferred to the Complainant.

The undersigned certifies that he has acted independently and has no known conflict in serving as the arbitrator in this proceeding.

Robert R. Merhige, Jr.
Dated:   June 27, 2000