Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Laurence Sax DBA Cap Factory, Boston, MA, USA ("Complainant") represented by Jeffrey Upton, of Hanify & King, P.C. The Respondent is California Head Wear, Inc., Los Angeles, CA, USA ("Respondent").

The domain name at issue is cap-factory.com registered with Register.com.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 4, 2000; the Forum received a hard copy of the Complaint on December 4, 2000.

On December 8, 2000, Register.com confirmed by e-mail to the Forum that the domain name cap-factory.com is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 11, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@cap-factory.com by e-mail.

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 January 11, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.

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

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

A. Complainant

Complainant alleges the following with respect to the disputed domain name, cap-factory.com:

B. Respondent

Respondent did not submit a response in this matter.

Complainant holds a certificate of registration on the Principal Register for the service mark CAP FACTORY, USPTO Reg. No. 1,997,839, International Class 42, retail store services featuring hats, registered on September 3, 1996. Complainant also holds a certificate of registration on the Principal Register for the service mark CUSTOM CAP FACTORY, USPTO Reg. No. 2,103,733, International Class 42, retail store services featuring hats, registered on October 7, 1997.

Respondent, California Head Wear, Inc., registered the disputed domain name on May 3, 2000.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order 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;

(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 disputed domain name, cap-factory.com is confusingly similar to Complainant’s CAP FACTORY mark, in which it has a federal trademark registration. See General Electric Co. v. Bakhit, D2000-0386 (WIPO June 22, 2000) (finding that placing a hyphen in domain name between "General" and "Electric" is confusingly similar to Complainant’s mark); Dollar Fin. Group, Inc. v. Advanced Legal Sys., Inc., FA 95102 (Nat. Arb. Forum Aug. 14, 2000) (finding that the domain name loan-mart.com is confusingly similar to the Complainant’s LOAN MART mark).

Respondent does not assert to have any rights or legitimate interests in the disputed domain name cap-factory.com. Respondent has not provided evidence of use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Respondent does not provide evidence that it is commonly known by the domain name cap-factory.com. Respondent does not provide evidence that it is making a legitimate noncommercial or fair use of the disputed domain name. Without any evidence to the contrary, the panel will not accord Respondent rights in cap-factory.com merely because Respondent registered the domain name. See Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) ("…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy").

Respondent has registered and used the domain name in bad faith under ICANN Policy 4(b)(iii) and (iv). Respondent is known as "California Head Wear Inc.", not as "Cap Factory." There is no apparent reason Respondent would register and use cap-factory.com unless it a) intended to disrupt Complainant’s business; or b) intended to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its product or service.

First, the ICANN Policy provides that bad faith may be evidenced by circumstances which indicate Respondent registered a domain name primarily for the purpose of disrupting the business of a competitor. ICANN Policy 4(b)(iii). Complainant has asserted and provided evidence indicating that the parties are, in fact, competitors. Therefore, the panel concludes that bad faith under ICANN Policy 4(b)(iii) is present. See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business).

Second, Respondent’s conduct also indicates bad faith under ICANN Policy 4(b)(iv). By registering and using a domain name which is clearly intended to trade off Complainant’s goodwill, Respondent has demonstrated sufficient intent to warrant transfer of the domain name. See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name bigtex.net to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website).

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name cap-factory.com be transferred from the Respondent to the Complainant.