DECISION

totes Isotoner Corporation v. Anthony Mantia d/b/a ze design inc.

Claim Number: FA0308000183999

PARTIES

Complainant is totes Isotoner Corporation, Cincinatti, OH (“Complainant”) represented by Gregory F Ahrens of Wood, Herron & Evans, LLP. Respondent is Anthony Mantia d/b/a ze design inc., Springboro, OH (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <totesisotoner.com> registered with Network Solutions, Inc.

PANEL

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 Panelist in this proceeding.

Paul M. DeCicco as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 14, 2003; the Forum received a hard copy of the Complaint on August 19, 2003.

On August 20, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <totesisotoner.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 August 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 16, 2003 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@totesisotoner.com by e-mail.

A timely Response was received and determined to be complete on September 9, 2003.

On September 15, 2003, Complainant submitted a timely and complete Additional Submission.

On September 19, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Totes Isotoner Corporation, Complainant, is an Ohio corporation, and has been doing business under that name since July 28, 1997. Complainant has invested substantial sums of money in developing and marketing its goods under both its trade name, and the individual trademarks TOTES and ISOTONER. Complainant has become and is now widely known and recognized as the source of goods marketed under the TOTES and ISOTONER marks. As such, the totes Isotoner brand name is closely and universally associated with Complainant. Complainant is the owner of domain names similar to the domain name at issue in this complaint, such as: <totes.com>; <totes.net>; <isotoner.com>; <isotoner.net>; and <isotoner.org>.

Complainant asserts that the at-issue domain name is identical to Complainant’s trade name, since it contains a combination of two of Complainant’s most widely known registered trademarks, TOTES and ISOTONER.

Complainant further alleges that Respondent has made no legitimate use of the domain name <totesisotoner.com>. Respondent is not licensed by, affiliated with, or otherwise in privity with Complainant. Respondent is not making legitimate, fair use of the domain name and appears to have registered the domain name for the purpose of preventing Complainant from registering it.

Complainant claims that Respondent, formerly doing business as “One Big Fish” has registered the domain name primarily for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Respondent’s profit motive is evidenced by a November 9, 1999 copy of a letter from Respondent’s counsel to Complainant’s counsel offering to sell the domain name to Complainant for $8,000 (Exhibit C). Complainant argues by way of rebuttal that Respondent’s counsel, “specifically offered to sell the domain name . . .” because her statement in the November 9, 1999 letter indicates that she has drafted an agreement governing the rights and responsibilities of the parties.

B. Respondent

Respondent contends as follows:

The at-issue domain name is not identical to Complainant’s trademark since the domain name is <totesisotoner.com> and the trademark is for totes and isotoner. The trade name being used is totes-Isotoner which is already owned by Complainant. Complainant also owns other names close to its trade name and does business under <totes.com> and <isotoner.com>.

Complainant has tried to bully Respondent to transfer the domain name only to own anything resembling Complainant’s name. Complainant also owns the domain names <totessucks.com> and <isotonersucks.com>.

Respondent should be considered to have rights to the domain name because Complainant was not known as Totes Isotoner when the domain name was purchased. Furthermore, Complainant was only known as totes. 

Respondent is planning on making legitimate use of the domain name. Respondent is planning on using the domain name as a consumer advocate service. Complainant is doing business under other domain names currently, <totes.com>, <isotoner.com> and <totes-isotoner.com>. Respondent has not registered the domain name for the sole purpose of preventing Complainant from registering the domain name.

Complainant offered Respondent $8,000 to sign over the domain name. This offer was made by Complainant’s legal counsel/authorized representative. Complainant never had the intention to complete the agreement and tried to mislead Respondent into signing over the domain name. This agreement was written by Complainant and the amount offered was determined by Complainant. (Complainant’s Exhibit C). There was no profit motive by Respondent.

C. Additional Submissions

Complainant submitted a rebuttal to Respondent’s Response and such document was considered by the Panel and incorporated above as appropriate.

FINDINGS

Totes Isotoner Corporation is an Ohio corporation, and has been doing business under that name since July 28, 1997. It has invested substantial sums of money in developing and marketing its goods under both its trade name, and the individual trademarks TOTES and ISOTONER. Complainant is widely knows and recognized as the source of goods marketed under the TOTES and ISOTONER marks.

Respondent is not licensed by, affiliated with, or otherwise in privity with Complainant. Respondent is not making use of the domain name. In or about autumn 1999, Complainant purposed that Respondent transfer the at-issue domain for a sum of money. As evidenced by Respondent’s reply letter offered as Complainant’s Exhibit C, Respondent appears to have accepted Complainant’s proposal however, the transaction was never concluded.

At the end of 1999, the parties reached an agreement whereby Complainant would pay Respondent $8,000 to transfer the at-issue domain name. The transaction was never completed.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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.

Identical and/or Confusingly Similar

The domain name is similar to Complainant’s registered marks as written, as heard and in meaning. The at-issue domain name contains a combination of two of Complainant’s most widely known  registered trademarks, TOTES and ISOTONER. The combination of the two fanciful marks into a single domain name accentuates the similarity rather than attenuating it, as suggested by Respondent. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name).

Rights or Legitimate Interests

Respondent is not licensed by, affiliated with or otherwise in privity with Complainant. Moreover, there is no evidence in the record that suggests Respondent is commonly known by TOTES ISOTONER or <totesisotoner.com>. The Panel thus finds that, without more, Respondent has failed to establish any rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

In an attempt to demonstrate rights in the domain name, Respondent claims that he has made preparations for using the domain name for a “consumer advocacy service”. Such use, Respondent infers, would be a “fair use” and not violate Complainant’s trademark rights nor section 4(a)(ii) of the UDRP. However, this broad purpose without further particular specification is unavailing and seems contrived. Indeed, Respondent fails to proffer any evidence whatsoever which would support its having a bona fide intent to use the domain name for such a benign (and saving) purpose. Conspicuously absent from Respondent’s papers is any elaboration on the particulars of this service, business plans, declarations, or other documents which might show the Panel that Respondent’s intended a “fair use” of the at-issue domain name. 

The Panel therefore finds that Respondent does not have rights or interests in the domain name.

Registration and Use in Bad Faith

Finally, to prevail in a UDRP proceeding a Complainant must plead and prove that Respondent registered and used the at-issue domain in bad faith. The bad faith element is actually two elements, requiring Complainant to show both bad faith registration and bad faith use. World Wrestling Federation Entertainment, Inc. v. Brosman, D99-0001 (WIPO Jan. 14 2000). Complainant proffers no clear evidence showing that Respondent registered and used the domain name in bad faith.

While Complainant argues that Respondent offered to sell it the at-issue domain name, Respondent claims that it was Complainant that initiated the idea of transferring the domain name for money. The fact that Respondent’s counsel may have drafted a transfer agreement is not evidence that she “specifically offered to sell” the at-issue domain name as Complainant suggests. Either party to a transaction may draft the related agreement.

Finding that Respondent initiated an offer to sell the domain name given the record now before the Panel requires speculation. Additionally, the letter from Respondent to Complainant of November 1999 appears to be a reply to a September 1999 letter proposal from Complainant. Neither party produced that letter, even though it’s contents would have been helpful to the Panel’s inquiry. The Panel infers that the content of that letter is unfavorable to Complainant’s position, or else Complainant’s counsel, the letter’s originator, would have produced it. Furthermore, we would expect that Complainant’s counsel would have made a written reply to Respondent’s November letter. That reply letter, if there was one, is also conspicuously absent from Complainant’s exhibits, and the record. Neither is there any discussion regarding how Complainant reacted to the November 1999 letter. Therefore the Panel cannot find any basis from which to conclude that Respondent initially offered the at-issue domain name for sale to Complainant.

It is at best unclear who initially approached whom to attempt to transfer the at-issue domain name. All that is clear is that the parties appear to have had negotiations to transfer the domain name, Respondent agreed to transfer the domain name for a sum of money, and the transaction was never completed. Respondent’s consideration of an offer by Complainant does not constitute bad faith registration or use under Policy ¶ 4(b)(i). See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also PRIMEDIA Special Interest Publ’n Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding that Respondent did not register the domain names in bad faith where there is no evidence that Respondent intended to sell the domain name or disrupt Complainant’s business).

Additionally, the Panel concludes that Respondent’s failure to develop a website or otherwise use the <totesisotoner.com> domain name does not necessarily indicate bad faith registration or use. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO October 12, 2001) (finding that where Respondent has not attempted to sell domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of Complainant seeking to disrupt Complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Asphalt Research Tech., Inc. v. Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (finding that Complainant has failed to prove that the domain name <ezstreet.com> was registered and is being used in bad faith or held passively for use by Respondent in bad faith).

Therefore, the Panel finds that Complainant has failed to meet its burden to demonstrate that Respondent has registered and used the domain name in bad faith.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Paul M. DeCicco, Esq., Panelist
Dated: October 3, 2003

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