P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com
Successories, Inc. and
Celebrating Excellence, Inc.
COMPLAINANT,
VS.
Mach 1, Inc.
RESPONDENT.
DOMAIN NAME DISPUTE DECISION
Forum File No.: FA000 3000094314
__________________________________________
The above entitled matter came on for an administrative
hearing on April 25, 2000 before the undersigned on the Complaint
of
Successories, Inc. and Celebrating Excellence, Inc., hereafter "Complainants",
against Mach 1, Inc., hereafter
"Respondent". Complainants were represented
by Malcolm McCaleb Jr., and Carolyn E. Knecht, Foley & Lardner,
330 N. Wabash, Suite 3300, Chicago, Illinois 60611-3608. Representation
on behalf of Respondent was by Michael DiGiordano,
Marketing Director
of Respondent. Upon the written submitted record, the following DECISION
is made:
PROCEDURAL FINDINGS
Domain Names: sucessories.com, succesories.com and successories.org
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Mach 1, Inc.
Date of Domain Name Registration: July 22, 1998 and January 21, 1999.
Date Complaint Filed: March 16, 2000
Due Date for a Response: April 10, 2000
Date of Commencement of Administrative Proceeding in Accordance with
Rule 2(a)l and Rule 4(c): March 17, 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
the above Registrar, Network Solutions, the Internet Corporation for
Assigned Names and Numbers (ICANN), and the Complainants
that the administrative
proceeding had commenced. On July 22, 1998 and January 21, 1999, Respondent
registered
the domain names listed above with Network Solutions, the
entity that is the Registrar of the domain names. By registering
the
domain names with Network Solutions, Respondent agreed to resolve any
dispute regarding the domain names
through ICANN's Rules for Uniform
Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute
Resolution Policy.
FINDINGS OF FACT
1 .Complainants own the following federally registered
trademark for SUCCESSORIES: 1,909,482.
- Complainants first registered the mark "SUCCESSORIES on August
1, 1995. Complainant first used the mark "SUCCESSORIES"
November
1990. Complainants first used the mark "SUCCESSORIES" in commerce
on November 1990. Successories,
Inc. has an application to register
"SUCCESSORIES", Application serial no. 75-529735, for motivational
wall décor.
- Complainants have widely and continuously used the mark "SUCCESSORIES"
in connection with retail store and catalogue
services in the area
of self-improvement and motivational products. Through extensive
use on products
and in advertising, SUCCESSORIES has become a famous
mark.
- On July 22, 1998 and January 21, 1999, Registrant registered the
domain names in controversy with the Registrar, Network
Solutions,
Inc.
- The Registered domain names are identical or confusingly similar
to the trademark or service mark in which the Complainants
have
rights and the Respondent does not have any right or legitimate
interests in respect of the domain
names, which are the subject
of the complaint.
- Respondent’s use of the domain names intentionally attempts
to attract, now and in the future, for commercial
gain, internet
users to its website by creating a likelihood of confusion with
the Complainants’
mark as a source, sponsorship, affiliation,
or endorsement of its website or location or of a product on its
website.
- The exclusivity of Complainants’ trademark is protected under
United States law.
- Complainants and Respondent are direct competitors. When the three
domain names were obtained by Respondent, Respondent
was familiar
with Complainant’s trademark and use of the trademark.
- When the domain names were acquired, Respondent was considering
acquiring Successories, Inc. and obtained the domain
names to make
sure they would be available as part of the company assets, apparently
to be able to
use the SUCCESSORIES name. The acquisition did not
take place.
- No allegation has been made and no evidence has been presented
that Respondent has any right or legitimate interest
to the domain
names as provided in Rule 4(c).
- Complainants’ prayer for relief requests that the domain
names be transferred.
CONCLUSIONS
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 impartial, the
undersigned makes the following findings
and conclusions:
1.The domain names in question registered by Respondent
with Network Solutions, are identical or confusingly similar to
Complainants’
trademark SUCCESSORIES and to which Respondent has no right or legitimate
interests.
- Respondent registered and used the domain names in bad faith as
evidenced by circumstances that by using the domain
names Respondent
intentionally attempts to attract, now and in the future, for commercial
gain, internet
users to its website by creating a likelihood of
confusion with the Complainants’ mark as a source, sponsorship,
affiliation, or endorsement of its website or location or of a product
on its website.
- Respondent has raised the issue the "successories.org" domain
name, was set up for non-profit use and should not be
addressed
as part of this forum. By registering the name Respondent has agreed
to resolution of a dispute
relating to that name through ICANN’s
rules.
- Under ICANN’s Uniform Domain Name Dispute Resolution Policy
Complainant has proven that the domain names should
be transferred
to Complainants.
DECISION Based upon the above findings and conclusions,
and pursuant to Rule 4(i), it is decided as follows: Since there are
two complainants which have requested that the domain names in questions
be transferred to them, THE UNDERSIGNED
DIRECTS THAT THE DOMAIN NAMES,
sucessories.com, succesories.com and successories.org, REGISTERED BY
RESPONDENT
BE TRANSFERRED TO COMPLAINANTS. Dated: April 25, 2000 by
Judge Karl V. Fink (Ret.),
Arbitrator
Honorable Karl V. Fink
