Generic Top Level Domain Name (gTLD) Decisions

Cumberland Swan Holdings, Inc., Smyrna, TN, USA
COMPLAINANT,

vs.

Sizemore Sales, Inc., Jeff Sizemore, Plant City, FL, USA
RESPONDENT.

DECISION
Claim Number: FA0005000094891

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is CUMBERLANDSWAN.COM, registered with Network Solutions, Inc. (“NSI”).

PANELIST

            Charles A. Kuechenmeister

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 05/23/2000; The Forum received a hard copy of the Complaint 05/23/2000. 

On 05/31/2000, NSI confirmed by e-mail to The Forum that the domain name CUMBERLANDSWAN.COM is 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 Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy (“UDRP”).

On 05/25/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/21/2000 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 06/21/2000, 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.

On 06/21/2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Charles A. Kuechenmeister as Panelist.

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 ICANN's Rules for Uniform Domain Name Dispute Resolution Policy (the "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 UDRP, the 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

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant is a manufacturer of private label personal care, health and beauty products.  It has operated as such for over one hundred (100) years in the United States and holds trademark rights to the name CUMBERLAND SWAN.  Complaint, p. 2.  Respondent is a former employee of Complainant, who registered the domain name CUMBERLANDSWAN.COM without the Complainant’s knowledge or consent on or about 08/30/99.  Exhibit VIII, Sheet 1.  Complainant learned of this when it sought to establish its own web presence.  Complainant contacted Respondent and secured his oral agreement to transfer the contested domain name to Complainant, but Respondent subsequently failed to perform and no longer returns communications. The original company Mr. Sizemore used to register the domain name is no longer in business at the same address and the phone(s) have been disconnected.  Complaint, p. 2.  Based upon the foregoing, Complainant asserts (1) that the contested domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (2) that Respondent has no rights or legitimate interests in respect of the contested domain name; and (3) that the contested domain name has been registered and is being used in bad faith.

B. Respondent

The Respondent submitted no Response in this matter.

FINDINGS

The Complainant has manufactured private label personal care, health and beauty products in the United States for over 100 years.  The Complainant owns the trademark rights to the name CUMBERLAND SWAN and the logo used by it.

The Respondent is a former employee of the Complainant.  Without the Complainant’s knowledge or consent, he registered the domain name in question.  The Respondent agreed to transfer the domain name but never took the necessary action to complete the transfer.  Currently, the Respondent refuses to communicate with the Complainant.

DISCUSSION

Paragraph 4(a) of the UDRP provides 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.

Identical and/or Confusingly Similar

The contested domain name CUMBERLANDSWAN.COM is identical to the Complainant’s registered mark CUMBERLAND SWAN except for the addition of the domain level designation .COM.

Rights or Legitimate Interests

Complainant's use of the CUMBERLAND SWAN mark is demonstrated by the proof sheet submitted as Exhibit V to the Complaint and is verified by the Complaint, at p. 2.  This demonstrates its common law right to use that mark.

Respondent registered the contested domain names on or about  08/30/99.  Exhibit VIII, sheet 1.  There is no evidence that Respondent has developed or even opened a web site under that name, that he offers or proposes to offer any bona fide goods or services under that name, or that he is commonly known by said name.  See, UDRP ¶ 4(c)(i), (ii).  The Respondent originally agreed to transfer the name to Complainant (Complaint, p. 2 and Exhibit IX).  He has since refused to respond to communications from Complainant regarding negotiations to transfer the contested domain name to Complainant.  It is clear that the Respondent registered the domain name either to sell it to the Complainant or a competitor, or simply to prevent Complainant from using it.

Bad Faith

The Panelist may consider only the information provided in the Complaint in absence of a response.  Rules ¶14.  It is an accepted rule of law that failure to respond operates as an admission of the truth of well pleaded allegations.  See Board of Regents v. Stinson-Head, Inc., 504 So. 2d 1374, 1375 (Fla. Dist. Ct. App. 1987) (applying this rule in an arbitration case).  The Respondent’s failure to submit a response constitutes an admission to the Complainant’s contentions.

Even without relying on Respondent's constructive admission, however, his bad faith is affirmatively demonstrated by the evidence submitted.  Respondent registered the name almost a year ago but is not yet operating any web sites using it.  When contacted by Complainant about the contested domain name he offered no defense or justification for having registered it in his name.  While he agreed informally to transfer the name to Complainant, his subsequent failure to do so evidences a continuing use of the name, albeit passively, in bad faith.  His only apparent motives appear to be either to sell it to Complainant or keep Complainant from registering and using the name for its purposes.  His registration of other domain names using Complainant's mark CUMBERLAND SWAN with variations such as a hyphen between the two words and using different domain level designations, .NET, .ORG (Exhibit VIII), demonstrates a pattern of conduct in this regard.  His conduct thus meets two of the indicia of registration and use in bad faith set forth in UDRP 4(b):

(1) the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(2) the respondent has registered the domain name in order to prevent the owners 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;

Based upon the foregoing, Respondent is found to have registered and to be using the contested domain name in bad faith, in violation of the UDRP.

DECISION

BASED UPON the findings above set forth, the Panelist hereby orders that the relief requested by Complainant be GRANTED, and that the contested domain name, CUMBERLANDSWAN.COM, be transferred from Respondent to Complainant.

Dated:  5 July 2000     Honorable Charles A. Kuechenmeister, Arbitrator