Domain Name - Domain name dispute resolution policy - Bad faith use -  Bad faith registration - Identical - Distinct - Confusingly similar - Service mark - Travel Goods - Distinct - Advertising - Comparative Advertising - Comparative Products - Non Commercial Use - Federal Trademark Division Act - Intention - Use of Domain Name - Proper Party - Name Transfer.

Complainant is registrant of SAMSONIT> trademark in both U.S. and other countries worldwide, and is also registrant of domain SAMSONITE.COM.  Respondent is registrant of domain name SAMSONITE6.ORG who stated intention in using domain name is to establish a non-commercial web page showing comparative products. Complainant alleges its registered marks and registered domain name were identical or confusingly similar, and that Respondent registered domain name at issue in bad faith.

Held:  Domain Name transferred to Complainant

It is clear that domain name registered by Respondent is nearly identical or confusingly similar to the business name of the Complainant.  It is also clear that Respondent has no legitimate interests with respect to domain name of SAMSONITE6.0RG. Since registering the domain name, Respondent has not made use of domain name, although at least three separate attempts have been made to transfer the said domain name to others.  The primary purpose for registering domain name was to disrupt business of the Complainant for the personal gain of the Respondent.  This is bad faith registration and use.Although Respondent claims that his proposed use of site is for "non-commercial purposes" and its content will be for the purpose of comparative advertising, Respondent's evidence is not sufficient to establish that his use is exempt from Federal Trademark Division Act.Policies Referred to:Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999Legislation Referred to:Federal Trademark Division ActRegistration Agreements Referred to:Network Solutions, Inc. Domain Name Registration Agreement, effective October 1998

PROCEDURAL FINDINGS

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

1. 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. 2. 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. 3. 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. 4. Complainant is registrant of the domain name "samsonite.com" and maintains an active web site using this trademark name. 5. 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. 6. 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: (a) To establish an exempt use for comparative advertising or promotion, the proponent should identify their own competing goods or services; (b) 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"; (c) Comparison of advertising for products generally offered for retail sale is a commercial activity as it may affect the business of the concerns involved; (d) 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. 7. The domain name in dispute is nearly identical and confusingly similar to the trademark or service mark in which the Complainant has established rights. 8. Respondent has not established any right or legitimate interest with respect to the domain name "Samsonite.org". 9. 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: (a) Respondent has shown no legitimate business interest in any product or service that uses the name "Samsonite"; (b) Respondent registered the commonly known trademark and business name of "Samsonite" with actual or constructive knowledge of its use by Complainant; (c) 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; (d) Use of the domain name by Respondent would confuse, mislead and disrupt customers of Complainant's business; (e) 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; (f) 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 interests; (g) The primary purpose for registering the domain name "Samsonite.org" is to disrupt the business of Complainant for the personal gain of Respondent. 10. The Complainant's prayer for relief requests that the domain name "Samsonite.org" be transferred from Respondent to Complainant. 

DECISION

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.
 

Domain Name Transferred