Glenn Hugh, Inc. v. The Sporn Company,
Inc.
Claim Number: FA0507000515478
PARTIES
Complainant
is Glenn Hugh, Inc. (“Complainant”),
represented by Jonathan B. Summers, 125 Wolf Road, Suite 302, Albany, NY
12205. Respondent is The Sporn Company, Inc. (“Respondent”),
represented by Karen A. Rhoades, of Siegal Law Offices, LLC, 16 Corporate Woods Blvd., Albany, NY
12211.
The
domain names at issue are <glennpeter.com>
and <glennpeterjewelers.com>, registered with Domainbank.com.
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.
David
E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 18, 2005.
On
July 15, 2005, Domainbank.com confirmed by e-mail to the National Arbitration
Forum that the domain names <glennpeter.com>
and <glennpeterjewelers.com> are registered with Domainbank.com
and that the Respondent is the current registrant of the name. Domainbank.com has verified that Respondent
is bound by the Domainbank.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
July 21, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 10,
2005 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@glennpeter.com and
postmaster@glennpeterjewelers.com by e-mail.
A
timely Response was received and determined to be complete on August 8, 2005.
On August 17, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
operates retail jewelry stores in upstate New York under the name Glennpeter
Jewelers. Complainant registered the
service marks GLENNPETER and GLENNPETER JEWELERS in New York State in December
2004; these marks have been used by Complainant and its predecessors since
1977.
Respondent’s
principal is a former employee and business partner of Complainant who now
operates competing jewelry stores under a different name. In May 1999 the parties entered into a
corporate separation agreement under which, in relevant part, Complainant
retained all rights to the Glennpeter name and service marks.
Respondent
is the registered owner of the disputed domain names <glennpeter.com> and
<glennpeterjewelers.com>, the latter of which was registered in
January 2003. Complainant alleges that
Respondent has refused Complainant’s request that it voluntarily surrender the
domain names pursuant to the parties’ 1999 agreement. Complainant further alleges that Respondent’s purpose in
retaining the domain names is to frustrate Complainant’s marketing efforts,
disrupt its business, and create consumer confusion.
B.
Respondent
Respondent’s
principal owned and operated retail stores under the name Glennpeter Jewelers
from 1986 to 1999, and it presently operates stores that were formerly known by
that name. Respondent states that its
present stores continue to honor warranties on jewelry that was sold when the
stores operated as Glennpeter.
Respondent alleges that for these reasons it has a legitimate interest
in the disputed domain names.
Respondent
claims that the disputed domain names had not yet been registered in 1999, when
the parties’ agreement was entered into, and that Respondent later registered
the domain names in order to reference the former name of his business.
FINDINGS
The Panel finds that the disputed domain
names are identical to service marks in which the Complainant has rights,
Respondent lacks rights or legitimate interests in the disputed domain names,
and Respondent registered and is using the disputed domain names in bad faith.
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.
Complainant has rights to the service
marks GLENNPETER and GLENNPETER JEWELERS, and the disputed domain names are
identical to these marks. The first
element is satisfied.
To prevail on the second element,
Complainant must prove that Respondent lacks rights or legitimate interests in
the disputed domain names. Complainant
is the present owner of the GLENNPETER and GLENNPETER JEWELERS service
marks. While Respondent previously
operated businesses under the Glennpeter name, it has no present rights in the name.
The fact that Respondent’s stores still honor warranties on goods that
were sold when the stores operated under the name now owned by Complainant does
not give Respondent a right to do business under that name. Furthermore, in the Panel’s view, this does
not rise to the level of a legitimate trademark dispute that would preclude
resolution under the Policy. The Panel
finds that Complainant has sustained its burden of proving that Respondent
lacks rights or legitimate interests in the disputed domain names.
The disputed domain name <glennpeterjewelers.com> was
registered by Respondent in January 2003.
However, the other disputed domain name, <glennpeter.com>, has been registered since 1995, according
to public whois records. The Complaint
fails to identify the date on which this domain name was acquired by
Respondent; the Response states that Respondent registered both disputed domain
names in January 2003. According to the
Panel’s independent research, the domain name <glennpeter.com> apparently was registered under the name of
the parties’ combined corporation prior to 1999, and at some time between then
and 2002 the registration was transferred into Respondent’s name. For purposes of this proceeding, it is
sufficient to note that both of the disputed domain names were registered or
acquired by Respondent between 1999 and 2003.
Complainant
alleges that Respondent registered the disputed domain names in order to
frustrate Complainant’s marketing efforts, disrupt its business, and create
consumer confusion. Respondent claims
that it registered the names because they correspond to the name under which
Respondent’s retail stores formerly operated, but this claim is belied by the
fact that Respondent seems to have made no active use of either disputed domain
name. The Panel finds that the disputed
domain names were registered by Respondent primarily for the purpose of
disrupting Complainant’s competing business.
Under paragraph 4(b)(iii) of the Policy, this circumstance serves as
evidence of bad faith registration and use of the domain names. On this basis the Panel finds that
Respondent registered and is using the disputed domain names in bad faith.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <glennpeter.com>
and <glennpeterjewelers.com> domain name be TRANSFERRED
from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 29, 2005
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