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DOMAIN NAME DISPUTE ADMINISTRATIVE DECISION

________________________________________________________________

Sunglass Hut Corporation

COMPLAINANT,

vs

AAANET, INC.

RESPONDENT.

DECISION
Forum File No.: FA0003000094370

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The above-entitled matter came on for an administrative hearing on May 11, 2000 before the undersigned on the Complaint of SUNGLASS HUT CORPORATION, hereafter "Complainant", against AAANET, INC., hereafter "Respondent". Mark C. Marron, In-house Senior Counsel, Sunglass Hut Corporation, represents Complainant. Upon the written submitted record, the following decision is made:

 

PROCEDURAL FINDINGS

 

Domain Name: SUNGLASSHOT.COM

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: AAANET, Inc.

Date of Domain Name Registration: July 8, 1998.

Date Complaint filed: March 27, 2000.

Date of Commencement of Administrative Proceeding in Accordance with Rule

2(a)[1] and Rule 4(c): April 6, 2000.

Due date for a Response: April 26, 2000.

Respondent did not file a response as required by Rule 5(a).

After reviewing the Complaint and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORUM (THE FORUM) forwarded the Complaint to the Respondent on April 6, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified Network Solutions, Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceeding had commenced. Respondent did not file a response as required by Rule 5(a).

On July 8, 1998, Respondent registered the domain name SUNGLASSHOT.COM with Domain Name Registrar Network Solutions, Inc., the entity that is the Registrar of the domain name. On April 8, 2000 the Domain Name Registrar NETWORK SOLUTIONS, INC. verified that Respondent is the Registrant for the domain name SUNGLASSHOT.COM and that further by registering its domain name with NETWORK SOLUTIONS, INC., Respondent agreed to resolve any dispute regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution Policy.

 

FINDINGS OF FACT

 

The undisputed evidence establishes that:

1. Complainant first used SUNGLASS HUT in commerce April 30, 1971.

2. Complainant registered SUNGLASS HUT as a Trademark February 2, 1988, with the exception that "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "SUNGLASS", APART FROM THE MARK AS SHOWN."

3. The United States Patent & Trademark Office approved the mark for publication February 2, 1988 (Reg. No. 1,475,511).

4. Complainant has owed the Web site SUNGLASSHUT.COM, registered with Network Solutions, since October 27, 1995, and has sold sunglasses, watches and accessories from that site since that time.

5. Respondent registered the domain name SUNGLASSHOT.COM July 8, 1998.

6. One who accesses SUNGLASSHOT.COM makes a direct link to Respondent's homepage entitled AAAnet.Inc., from which Respondent sells sunglasses, watches and accessories.

7. The two domain names are confusingly similar, differing only in a single letter, the "u" in Complainant's name and the "o" in Respondent's name.

8. Respondent's failure to offer any evidence permits the inference that the similarity of names is misleading and that Respondent intentionally is diverting business from Complainant for the sale of similar goods through electronic commerce.

9. Complainant had a long-standing interest in the name SUNGLASS HUT and filed the domain name SUNGLASSHUT.COM before Respondent filed SUNGLASSHOT.COM.

10. Respondent has shown no legitimate interest to any version of the name SUNGLASS HUT.

11. Complainant has established that the name SUNGLASS HUT is familiar in domestic and international commerce in the market area in which both Complainant and Respondent compete. Complainant has 2,000 retail outlets under the service mark SUNGLASS HUT or SUNGLASS HUT INTERNATIONAL in fifty (50) countries worldwide.

12. The evidence of widespread use of SUNGLASS HUT worldwide allows the inference that Respondent had actual or at least constructive notice as a competitor of the prior use of the mark and name.

13. The following is evidence of Respondent's bad faith in registering the domain name SUNGLASSHOT.COM:

    1. Contrary to ICANN's Uniform Domain Name Dispute Resolution Policy, Paragraph

4(b)(iii) Respondent wrongfully registered a domain name SUNGLASSHOT.COM primarily for the purpose of disrupting the business of a competitor, SUNGLASS HUT and SUN GLASS HUT INTERNATIONAL although Respondent knew or should have known that the domain name registration SUNGLASSHOT.COM would disrupt the business of an entity already using the confusingly similar name in the same general competitive market, and

(b) Contrary to ICANN's Uniform Domain Name Dispute Resolution Policy, Paragraph

4(b)(iv) Respondent, without any established legitimate basis for doing so, used the

domain name SUNGLASSHOT.COM to attract, for commercial gain, internet users to

Respondent's web site or other on-line location, and Respondent intentionally created a

likelihood of confusion with the Complainant's mark as being a source, sponsor, affiliate,

or endorser of Respondent's web site or location or of a product or service on

Respondent's web site, inasmuch as Complainant and Respondent sell similar or the

same products in the same competitive market.

Complainant's prayer for relief requests that the domain name SUNGLASSHOT.COM be transferred from Respondent to Complainant, pursuant to Paragraph 4(i) of ICANN's Uniform Domain Name Dispute Resolution Policy.

 

CONCLUSIONS

 

The undersigned certifies that she has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

  1. The domain name SUNGLASSHOT.COM registered by Respondent on July 8, 1998 is so close as to be identical or confusingly similar to Complainant's SUNGLASS HUT mark and SUNGLASSHUT.COM domain name, to which Complainant has established its legal right and to which Respondent has failed to show any legitimate right or interest.
  2. Respondent acted in bad faith by registering or acquiring the domain name SUNGLASSHOT.COM primarily for the purpose of disrupting the business of a competitor.
  3. Respondent acted in bad faith by wrongfully using the domain name for commercial gain by creating a likelihood of confusion between Complainant and Respondent's respective businesses.

 

DECISION

 

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME SUNGLASSHOT.COM, REGISTERED BY RESPONDENT AAANET, INC., BE TRANSFERRED TO COMPLAINANT SUN GLASS HUT CORPORATION.

DATED: May 11, 2000 by Judge Carolyn Marks Johnson (Ret.), Arbitrator.

 

 

_______________________________________

Honorable Carolyn Marks Johnson

Assigned District Judge

Arbitrator.

[1] Any reference to "Rule" or "Rules are to ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy as supplemented by the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy.