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Generic Top Level Domain Name (gTLD) Decisions |
Hi Fibre Textiles (Sugoi) Ltd. v.Peter
Anderson
Claim Number: FA0403000243507
PARTIES
Complainant
is Hi Fibre Textiles (Sugoi) Ltd. (“Complainant”), represented by David Wotherspoon, of Fasken Martineau DuMoulin,
2100-1075 West Georgia Street, Vancouver, BC, V6E 3G2, Canada. Respondent is Peter Anderson (“Respondent”),
of 636-205 Kimta Road, Victoria, BC,
V9A 6T5.
REGISTRAR AND DISPUTED
DOMAIN NAME
The
domain name at issue is <sugoi.com>,
registered with Network Solutions
Inc. (“Registrar”).
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
James
Bridgeman as Panelist.
PROCEDURAL HISTORY
On
March 2, 2004 Complainant submitted a Complaint in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”)
to the National
Arbitration Forum (the “Forum”) electronically; the Forum received a hard copy
of the Complaint on March 15, 2004.
On
March 5, 2004, Registrar confirmed by e-mail to the Forum that said domain name
<sugoi.com> is registered with
Registrar, that Respondent is the current registrant of the name, that the status
of the domain name registration is “active,” that the language of the Service
Agreement is English, and that Respondent has submitted
in its Registration
Agreement to the jurisdiction at the location of the principal office of
Registrar for court adjudication of
disputes concerning or arising from the use
of said domain name.
A
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of
April 5, 2004 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.
On
April 5, 2004 Respondent filed a Response by fax.
On
April 8, 2004 Complainant filed an Additional Submission.
On April 19, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed James Bridgeman
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant holds several trademark
registrations for the SUGOI mark, including registrations in the United States,
United Kingdom,
and Canada. Complainant
registered the SUGOI mark with Canadian authorities on January 27, 1989 (TMA
350434). Complainant has since then carried
on an international business and currently
has 612 international dealers, 1085 dealers in the United States and 661
dealers in Canada.
Complainant
furthermore operates a website at <sugoi.ca> through which consumers
worldwide can access information and purchase
products bearing Complainant’s
SUGOI marks. In addition, Complainant
owns the domain names <sugoi.net>, <sugoi.biz>, and
<sugoi.info>.
South-western
British Columbia is Complainant's strongest area of business and the "home
base" of the business where Complainant’s
SUGOI marks have been used and
promoted most extensively for the last 15 years.
In
July 2000, Complainant and Respondent were involved in a dispute under the UDRP
regarding the domain name <sugoi.com> at
issue in these proceedings (eResolution Case No. AF-0232). The administrative
panel dismissed that complaint. Complainant submits
that said complaint was
dismissed without prejudice, against Respondent on the sole basis that
Respondent "appeared" to
have a legitimate purpose for the said
registration as he had a business plan to provide online services to the
Japanese market.
While the panel had doubts about the "soundness and
efficacy of Respondent's plan," it found that there was "no direct
evidence that his plan is a sham."
Therefore, the panel dismissed the complaint expressly "without
prejudice to Complainant's refiling of a complaint in the event
that evidence
of illegitimate purpose and bad faith, based solely on conduct of Respondent
after the rendering of this decision,
arises."
Since
that decision Respondent’s website at the <sugoi.com> address has
not changed in any way - it remains a static website with a listing of links to
miscellaneous other websites. Complainant
submits that Respondent's inaction
and passive holding of the website over the past three years is evidence of
both illegitimate
purpose and bad faith.
Complainant
further submits that the only apparent purpose for Respondent's holding of the
domain is to frustrate Complainant in reflecting
its trademarks in a
corresponding domain name - <sugoi.com>. Respondent's use is
illegitimate, made in bad faith and causes confusion with Complainant's
trademarks.
Complainant
submits that the following is the chronology of the key events that are
relevant to this administrative proceeding:
·
October 15, 1987 - Complainant began
using its SUGOI marks.
·
1994 - Complainant began what has
become extensive and continuous sale of its products under the SUGOI marks in
Japan. Complainant
has annexed documentation to the Complaint supporting this
assertion.
·
September 1998 - Approximately a decade
after Complainant began using its SUGOI marks, Respondent registered the domain
name <sugoi.com> with Network Solutions Inc.
·
Spring 1999 - Mr. David Hollands, on
behalf of Complainant, contacted Respondent in connection with Respondent’s
registration of the
<sugoi.com> domain name. Respondent did not state that it had any
plans to use the domain name.
Respondent verbally indicated, and admitted in writing, its willingness
to sell the domain to Complainant for an amount in excess
of Respondent’s
out-of-pocket costs directly related to the domain name.
·
June 1999 - Respondent was a principal
in a company called "Axess Mail Order Depot Ltd." Although the
company had used that
name since 1994, Respondent caused the company name to be
changed in June 1999 to "Sugoi Online Internet Services Ltd." This change followed very shortly after
Complainant contacted Respondent concerning the domain name.
·
September 1998 to April 2000 - Prior to
April 30, 2000 Respondent displayed some photographs of himself and his
motorcycle on the
website established at the
<sugoi.com> address and provided links to an apparently
unrelated business called "Commission Junction." The Commission
Junction
website linked users to a list of links to "All Merchants,"
some of which dealt in wares similar or identical to the wares
of Complainant.
·
April 11, 2000 - Complainant's lawyer,
Mr. Wotherspoon, contacted Respondent by e-mail letter, demanding that
Respondent transfer
said <sugoi.com> registration to Complainant.
·
April 17, 2000 - Respondent's lawyer,
Mr. Van Cuylenborg, replied to Mr. Wotherspoon indicating that his client would
not agree to
transfer said <sugoi.com> registration and that
Respondent had commercial plans for the site.
·
April 30, 2000 - Respondent changed its
use of the website established at said <sugoi.com> address to
provide links to various other web pages. Again, this change followed very
shortly after Complainant and Respondent
exchanged correspondence concerning
the disputed domain name.
·
May 2000 - Complainant filed a
complaint against Respondent with eResolution (said eResolution AF-00232). In
those proceedings Respondent
contended that it had a business plan to use the
site for online services aimed at the Japanese market. No copy of a business
plan
was submitted as part of the Response in that case.
·
July 25, 2000 - The eResolution
panelist determined that in light of Respondent's statements regarding his plan
for <sugoi.com>,
the panelist could not order the transfer of the domain name. The panelist
expressed doubts about the "soundness and efficacy
of Respondent's
plan," but could find no direct evidence that his plan was a sham. Therefore, the panelist expressly stated
that the decision in that case (the "2000 Decision") was without
prejudice to Complainant's
ability to file another complaint against Respondent
at a later date.
·
July 25, 2000 to July 25, 2003 -
Contrary to Respondent's alleged business plan, Respondent has not developed
the <sugoi.com> website
during the last three (3) years in any way.
The content of <sugoi.com>
has remained unchanged since April 30, 2000.
The static site is composed of a simple list of links to four (4)
Internet search engines, and forty (40) Japanese manufacturers and
hotels.
·
January 2003 to January 2004 -
Complainant received complaints from people who had attempted to access
Complainant's website through
a link at a second website ("Non- affiliated
Website") in an attempt to receive information about Complainant's
products.
The Non- affiliated Website attempted to link to Complainant’s Sugoi
brand, but instead placed a link to Respondent's website at
the <sugoi.com>
address in each of the following examples,
i. <thesportingwoman.com/friends.shtml>;
ii. <theshoregroup.com/bio/elladee.htm>;
iii. <travelsport.tv/manufacturers.html>;
and
iv.
<ecospirit.ca/updates/update.2002.07.24.htm>.
Complainant
submits that the contested domain name is virtually identical to the distinctive
portion of all of Complainant's registered
trademarks.
Complainant
further submits that Respondent does not have any rights or legitimate
interests in the contested domain name.
Pursuant to Paragraphs 4(c)(i), (ii) and (iii) of the Policy, Respondent
has not used the domain name in connection with the bona fide offering
of goods or services; Respondent has not been commonly known by the domain
name; and Respondent is not making a legitimate
non-commercial or fair use of
the domain name.
Furthermore,
Complainant submits that Respondent has made no bona fide offering of
goods on its website established at the <sugoi.com> address and
the fact that Respondent has been engaged in passive holding of the site for
over three years belies its previous
statements regarding its planned use of
said <sugoi.com> domain. Said passive holding is disrupting the
business of Complainant and preventing Complainant from reflecting its
trademark
in a corresponding domain name.
Considering
Respondent's failure to develop the site in the intervening period,
Respondent's bald assertion of a "plan"
is insufficient to show a bona
fide offering of goods or services.
In Tourism and Corporate Automation Ltd. v. TSI Ltd., AF-0096
(eRes. Mar. 26, 2000), the panel held that "it will not be sufficient for
a domain holder to merely assert that it has
plans for the commercial use of
the domain name" since "a domain name holder in a domain name dispute
easily could make
an assertion of planned use."
The
following circumstances cast a colorable shadow on Respondent’s claim to have a
legitimate interest in the domain name:
·
The crystallization of Respondent's
commercial plans to use the domain name came after Complainant contacted
Respondent;
·
The change in Respondent's company name
after it was contacted by Complainant;
·
The change in content of the web-page
immediately after Respondent received a letter from Complainant's lawyer;
·
Respondent is not commonly known by the
domain name. Although Respondent
changed the name of its company to "Sugoi Online Internet Services
Ltd." in June 1999, there is no local
address or telephone number listed
for this business in the white pages, yellow pages or Canada 411 Internet
directories;
·
Respondent's company - "Sugoi
Online Internet Services Ltd." - appears to be in default as the last
annual report filed
was on November 8, 2001, and
·
Furthermore, the incorporation of the
name "Sugoi Online Internet Services Ltd." cannot be used to show
Respondent is known
by that name since the name was only incorporated after
Respondent became aware of Complainant's concerns. In this regard Complainant
cites the decision in Credit Management Solutions Inc. v. Collex Resource
Management, D2000-0029 (WIPO Mar. 21, 2000);
·
Respondent's current passive holding of
the site is not a legitimate, non-commercial or fair use of the domain name as
required by
Paragraph 4(c)(iii) of the Policy. The April 30, 2000 changes to
Respondent’s website do not constitute legitimate non-commercial
use of the
site.
Respondent's
passive holding of the <sugoi.com> domain name prevents
Complainant from reflecting its registered SUGOI marks in a corresponding
domain name.
Passive
holding of a domain can amount to bad faith use in the right circumstances: Telstra
Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 20,
2000). Respondent's passive holding of <sugoi.com> is in and of
itself evidence of bad faith registration and use of the <sugoi.com>
domain: American Home Products Corporation v. Haymont Veterinary Clinic,
D2000-0502 (WIPO Aug. 2, 2000). In Awesome
Kids LLC v. Selavy Communications, D2001-0210 (WIPO Apr. 20, 2001), the
administrative panel found that, "continuing retention and minimal use of
the contested
domain name, now over a period stretching approximately 18 months
amounts to passive holding which, while being fully cognizant of
Complainant's
trade-mark rights, evidences bad faith use."
There
is no apparent development by Respondent of a commercial online service for
Japan as was claimed at the time. The
only apparent use now is that the domain is being passively held in bad faith
to prevent Complainant from pursuing a legitimate
business interest in the
domain.
Since
at least the Spring of 1999, and well before Respondent registered <sugoi.com>,
Respondent has been well aware of Complainant's trademark rights. Given the
close geographic proximity of Respondent to the
most intensive area of
Complainant's business, Respondent must be deemed to have known about
Complainant's SUGOI marks prior to registering
the domain.
While
passive holding is alone sufficient to establish bad faith, there are several
other indicia of Respondent's bad faith and use of <sugoi.com>.
Although Respondent was careful not to make a clear offer to sell the domain to
Complainant, there is strong circumstantial
evidence to suggest that Respondent
registered the domain for the primary purpose of selling it to
Complainant. Respondent verbally
indicated and admitted in writing its willingness to sell the domain to
Complainant for an amount in excess of
Respondent’s out-of-pocket costs
directly related to the domain name.
B.
Respondent
Respondent relies on the finding of the panel in eResolution
AF-0232
that it has rights and legitimate interests in the <sugoi.com> domain name. Moreover, Respondent asserts that it is
primarily using the domain name for web hosting and e-mail services.
Respondent refutes
Complainant’s allegation that Respondent attempted to sell the <sugoi.com>
domain
name registration. Respondent asserts
that Complainant contacted Respondent and attempted to induce Respondent to
solicit an offer for the domain name
registration.
Respondent
claims that it has lacked the resources to
develop the site beyond its current state, but has plans to do so in the
future. Respondent has provided
no evidence of these plans. Also, Respondent
states that it has been reluctant to further develop the website for fear of
reprisal
from Complainant. Respondent
is willing to post a disclaimer on the website to reduce confusion and provide
a link to Complainant’s website.
Respondent
further submits that Complainant’s mark is generic. Respondent asserts that the word “sugoi” is a Japanese word that
translates to “cool” or “awesome.”
Respondent
primarily relies on the previous panel’s finding that the <sugoi.com>
domain name was not registered or used in bad faith.
Furthermore,
Respondent asserts that it did not register the <sugoi.com> domain
name in order to sell the domain name registration to Complainant for a
profit. Respondent argues that it did
not register or use the domain name in bad faith pursuant to Paragraph 4(b)(i)
of the Policy because
Complainant initiated the discussion of selling the
domain name.
Moreover,
Respondent asserts that it is willing to provide a disclaimer and link to
Complainant’s website.
C. Additional
Submissions
In
Additional Submissions, Complainant submits that Respondent’s submissions omit
certain required elements. Most
significantly, they fail to include the required certification that the contents
are complete and accurate. This is a
material failing on the part of Respondent.
Complainant submits that arbitration should proceed as though no
Response had been filed.
FINDINGS
Most
of the facts are not in dispute. The significant areas of conflict between the
Parties relates to the inferences that can be
taken from the matters discussed
at the alleged conversation between Complainant’s representative and Respondent
and whether Respondent
had a bona fide business plan to develop a
website at the <sugoi.com>
Internet address.
This
Administrative Panel makes no finding of fact in relation to said alleged
conversation, but for reasons given below, finds that
on the balance of
probabilities Respondent did not have a bona fide business plan for said domain name.
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 Complainant must prove each of the following three elements to obtain an
order that a domain
name should be cancelled or transferred:
i.
the domain
name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has
rights;
ii.
Respondent
has no rights or legitimate interests in respect of the domain name; and
iii.
the
domain name has been registered and is being used in bad faith.
Preliminary Procedural Issues
There are two procedural issues to be
addressed in this decision.
Res Judicata
Both parties
previously were involved in a dispute over the said <sugoi.com>
domain name viz. Hi Fibre
Textiles (Sugoi) Ltd. v. Anderson, AF-0232 (eRes. July 25, 2000). The
administrative panel in that case found that Respondent had a business plan for
the domain name and therefore had rights and legitimate
interests in the domain
name. The administrative panel
took a most unusual step however and dismissed the complaint “without prejudice
to Complainant’s filing of a Complaint in the event
that evidence of
illegitimate purpose and bad faith, based solely on conduct of Respondent after
the rendering of this decision,
arises.” This was clearly because of the
administrative panel’s reservations relating to Respondent’s defence.
Because
that complaint was rejected without prejudice to Complainant’s right to refile
in those circumstances, and because the subject
matter of these proceedings
relate primarily to the inference that can be taken from inactivity by
Respondent subsequent to the earlier
decision, the issue of res judicata
does not arise in this case. See
Cluett, Peabody & Co., Inc. v. Sanford Bus Writing Serv., FA 95842
(Nat. Arb. Forum Dec. 12, 2000) (allowing a Complaint to be refiled because the
previous Panelist had “expressly reserved
the right of Complainant to recharge
bad faith registration and use of the domain name in or [at] issue”); see
also Jones Apparel Group Inc. v. Jones Apparel Group.com, D2001-1041
(WIPO Oct. 16, 2001) (allowing refiling as the previous Panelist gave the “green
light in the clearest possible way to refiling the Complaint [emphasis in
original]”).
Admissibility of
Response
Complainant has alleged that Respondent’s failure to
include the certification statement required by ICANN Rule 5(b)(viii) makes the
Response deficient. In the view of this Administrative Panel it would be
inappropriate to rule the Response inadmissible due to such
a minor formal
deficiency. As this Administrative Panel is finding for Complainant it would be
pointless in the circumstances to
ask Respondent to file a Response in proper
form. See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21,
2002) (finding that "[r]uling a Response inadmissible because of formal
deficiencies would
be an extreme remedy not consistent with the basic
principles of due process").
Complainant
has established that it has rights in the SUGOI trademark through its various
registrations. It is noteworthy that there
is a limitation on the United
Kingdom registration to the effect that the registration gives Complainant no
right to the exclusive
use of the word SUGOI and that the word “sugoi” means
“awesome” in Japanese. Nonetheless, Complainant’s registrations are sufficient
to establish its rights for the purposes of the first element in the test
required under the Policy. See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that Panel decisions have held that registration of a mark is prima facie
evidence of validity,
which creates a rebuttable presumption that the mark is
inherently distinctive. Respondent has
the burden of refuting this assumption).
Respondent’s
domain name is identical to Complainant’s mark. The domain name <sugoi.com>
consists of Complainant’s trademark with the addition of “.com.” The presence
of the “.com” element is irrelevant in making this
determination. This is not
an issue in dispute between the parties.
See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain
(gTLD)
“.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top-level of the domain name such as
“.net” or “.com” does not affect the domain
name for the purpose of determining
whether it is identical or confusingly similar).
The domain name is clearly identical to
Complainants mark.
There
has been no change in Respondent’s website for over three years. It is common
cause that Respondent has an active site at the
domain address consisting
essentially of links to other sites. Complainant has alleged that this amounts
to passive holding. The
fact that the content is not changing does not mean
that the site is inactive. Because the site has been active, notwithstanding
that the content has remained unchanged, this Administrative Panel rejects
Complainant’s claim that Respondent has been engaged in
passive holding of the
domain name.
Respondent’s
inactivity over the past three years is however relevant to the issue of
whether Respondent has any rights or legitimate
interest in said domain name.
In earlier proceedings Respondent claimed to have a business plan for the site.
He succeeded in those
proceedings primarily for that reason. At that time, the
administrative panel clearly held some doubts as to whether that was a bona
fide defense and clearly expressed these concerns.
Respondent claims that it has lacked the resources to develop the site
beyond its current state, but has plans to do so in the future. Respondent
further states
that it has been reluctant to further develop the website for
fear of reprisal from Complainant. Respondent has not furnished any
evidence of
these alleged plans.
Furthermore in a
letter dated April 17, 2000, a copy of which has been submitted as an annex to
the Complaint, Respondent’s lawyers
state that it “has been actively engaged in
technology and ‘internet’ business for eight (8) years.” This being the case,
on balance
it is more likely that Respondent would have had sufficient
resources to develop the site to some extent if it had the mind to do
so.
In the circumstances Respondent’s
explanation is not convincing and consequently this Administrative Panel
accepts that Complainant
has established on the balance of probabilities that
Respondent has no rights or legitimate interests in the said domain name.
See Wal-Mart Stores, Inc. v.
Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that Respondent
had no rights or legitimate interests where he decided to develop the website
for the sale of wall products after receiving Complainant’s “cease and desist”
notice); see also Household Int’l,
Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (holding
that Respondent’s “vague and unsupported assertion of ‘plans to sell household
goods, supplies and appliances over the Internet’” was insufficient to be
considered proof of a legitimate business plan); see also Open Sys. Computing AS v. Alessandri,
D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent did not establish
rights and legitimate interests in the domain name where
Respondent mentioned
that it had a business plan for the website at the time of registration but did
not furnish any evidence in
support of this claim); see also LFP,
Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (finding
that despite suffering significant injuries as a result of an accident, “the
Panel
would not only need to excuse the Respondent’s past 2+ year delay but
also sanction that delay to extend for an indefinite amount
of time into the
future. This the Panel will not do.”).
In
the earlier proceeding the panel was not convinced that Respondent had
registered and was using the domain name in bad faith, but
the panelist clearly
had concerns on this aspect also and stated: “The Panel finds no credible
evidence that the mark was registered in bad faith … The panel … recognizes
that the non-testimonial procedures
do not afford the ability to test and
evaluate credibility. An ability to probe the credibility of Respondent’s
protestations and
Complainant’s assertions could well advance the question.
That alternative is not available here. The indicia of bad faith relied
upon by
Complainant in this case (e.g. timing of registration, geographic proximity to
Complainant) create only a hint that Respondent
knew of Complainant’s mark.
Standing alone, that does not suffice. However under the prevailing rules, and
in the light of counteravailing
explanations, and the ability to evaluate
credibility, none of the assertions of Complainant establish bad faith …”
The
fact that Respondent has not made any changes to the content of the website in
over three years allows this Administrative Panel
to infer that the concerns of
the panel in Hi Fibre Textiles (Sugoi)
Ltd. v. Anderson, AF-0232 (eRes. July 25, 2000) were well founded
and Respondent never had any bona fide intentions of putting a business
plan into place.
It
would appear that there was no substantial evidence of such a business plan
provided to the administrative panel in the earlier
proceedings and Respondent
has not provided any such evidence in these proceedings.
In
the circumstances, and given the clear reservations expressed by the
administrative panel in the earlier proceedings, the explanations
given by
Respondent for its inaction over the past three years are not convincing.
Complainant
has established that on the balance of probabilities, Respondent was aware of
Complainant’s business and presumably its
trademark rights when Respondent
registered said domain name. Respondent may have also been aware that the word
means “awesome” in
the Japanese language, as it would appear that Respondent
lived in Japan for a period of time; however, the evidence relating to
the
content of Respondent’s website prior to Complainant’s first challenge would
seem to indicate that the focus on Japan was not
the reason for the
registration in the first place. See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there
is a legal presumption of bad faith, when Respondent reasonably should have
been
aware of Complainant’s trademarks, actually or constructively.”); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status
that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Pfizer,
Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because
the link between Complainant’s mark and the content advertised on Respondent’s
website was obvious, Respondent “must have known about the Complainant’s mark
when it registered the subject domain name”).
On
the balance of probabilities Respondent has registered said domain name
primarily for the purpose of selling, renting, or otherwise
transferring the
domain name registration to Complainant who is the owner of the SUGOI trademark
and service mark or to a competitor
of Complainant, for valuable consideration
in excess of Respondent’s documented out-of-pocket costs directly related to
the domain
name. See Pocatello Idaho
Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb.
21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is
some accompanying evidence
that the domain name was registered because of its
value that is in some way dependent on the trademark of another, and then an
offer
to sell it to the trademark owner or a competitor of the trademark
owner"); see also Little Six,
Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding
Respondent's offer to sell the domain name at issue to Complainant was evidence
of bad faith).
DECISION
Accordingly, it is Ordered that the <sugoi.com> domain name be TRANSFERRED
from Respondent to Complainant.
James
Bridgeman Panelist
Dated: May 3, 2004
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