Domain name – Domain name dispute resolution policy – U.S. Trademark – Confusingly similar – Identical - Bad faith registration – Bad faith use – Diverting business through domain name - Name transferred.

Complainant was registrant of United States trademark.  Registrant registered the domain name, www.bigdog.com.  Complainant alleged that its registered marks and its Internet website address, www.bigdogs.com, were identical to the registered domain name and that Respondents registered the domain name at issue in bad faith.

Held, Name Transferred to Complainant.

Complainant is a nationally renowned manufacturer and retailer of clothing, accessories, sporting goods and other items sold in connection with its BIG DOG trademarks.

Complainant has spent considerable time and money promoting its e-commerce business, which is rapidly growing.  It utilizes an Internet website which is located at www.bigdogs.com.  Complainant has utilized “bigdogs.com” since 1996, and its trademark application to register the trademark is presently pending before the United States Patent and Trademark Office.

The domain name “bigdog.com” was registered by the Respondents with Network Solutions on July 10, 1997.  Respondents utilize over fifty [50] registered domain names to funnel Internet traffic to their own website located at www.cyberlinks.com without regard to trademark registration.  Respondents have a pattern of registering multiple domain names which are the registered trademarks of others.

It is clear that the domain name BIGDOG.COM is identical or confusingly similar to trademarks registered by the Complainant and the Internet website address used by Complainant.  Respondents have no rights or legitimate interest in respect of domain name, for they are clearly seeking commercial gain by misleadingly diverting BIG DOG customers to their own website, www.cyberlinks.com. This is bad faith registration.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy

Registration Agreements referred to

Registration with Network Solutions, effective July 10, 1997

Administrative Decision referred to
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Perluss, Arbitrator: - 

The above-entitled matter came on regularly for an administrative hearing on March
7, 2000, before the undersigned, on the Complaint of Big Dog Holdings, Inc. dba
Big Dog Sportswear, hereinafter "Complainant," against Frank Day and Red River
Farms, Inc., hereinafter "Respondent."

Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name: bigdog.com

Domain Name Registrar: Network Solutions

Domain Name Registrant: Frank Day, Red River Farms, Inc.

Date of Domain Name Registration: July 10, 1997

Date Complaint Filed: February 3, 2000

Date of Commencement of Administrative Proceedings in Accordance with Rule
2(a)[1] and Rule 4(c): February 3, 2000 

Due Date for a Response: February 26, 2000

Respondents have not submitted a Response to the Complaint. After reviewing the
Complaint for administrative compliance, The National Arbitration Forum,
hereinafter "The Forum," transferred the Complaint to the Respondents 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 the above Registrar, ICANN and the Complainant that the administrative
proceeding had commenced.

Respondents had registered the domain name in issue with Network Solutions, the
entity that is the Registrar of the domain name. By registering their domain name
with Network Solutions, Respondents agreed to resolve any dispute regarding its
domain name through ICANN's Uniform Domain Name Dispute Resolution Policy.

Respondents did not submit a Response to The Forum within twenty [20] days
pursuant to Rule 5(a).
 
FINDINGS OF FACT

1. The Complainant is a nationally renowned manufacturer and retailer of clothing,
accessories, sporting goods and other items sold in connection with its BIG DOG
trademarks.

2. The Complainant has spent considerable time and money promoting its
e-commerce business, which is rapidly growing. It utilizes an Internet website
located at www.bigdogs.com.

3. The Complainant has since 1984 utilized its BIG DOG trademarks. It has
registered with the United States Patent and Trademarks Office, the trademark
"BIG DOG," Nos. 2,000,495 and 2,257,394 on September 17, 1996, and June
29, 1999, respectively. It also has registered trademarks which utilize the name
"BIG DOG," such as "BIG DOGS," "BIG DOG SPORTSWEAR," "BIG BIG
DOGS," and "LITTLE BIG DOGS."

4. The Complainant has utilized "bigdogs.com" since 1996, and its trademark
application to register the trademark is presently pending before the United States
Patent and Trademarks Office.

5. Respondents have registered at least fifty [50] domain names, including the
domain name "bigdog.com" here in issue. Respondents utilize these names to funnel
Internet traffic to its own website located at www.cyberlinks.com without regard to
trademark registration.

6. The domain name in issue is identical to the one of Complainant's federally
registered trademark. Moreover, it is confusingly similar to other BIG DOG
registered trademarks.

7. Respondents have demonstrated no rights or legitimate interest in the domain
name, but, to the contrary, they are creating confusion and utilizing the domain
name to divert and usurp BIG DOG customers.

8. Respondents have acted in bad faith in that their sole purpose in using the
domain name is to divert Internet users to its website. It does this by exploiting the
Internet users' association of the Complainant's trademarks with the Complainant's
business. Respondents have registered at least fifty [50] domain names, some of
which are the registered trademarks of other entities. It necessarily is found,
accordingly, that the registration of the domain name here in issue by Respondents
was in bad faith.

9. Complainant's prayer for relief seeks that the domain name "bigdog.com" be
transferred from Respondents to Complainant.

CONCLUSIONS

The undersigned certifies that he 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 "bigdog.com" registered with Network Solutions on July 10,
1997, is confusingly similar to the Complainant's trademarks. Indeed, the domain
name is identical to the prior registration of the trademark "BIG DOG," with the
United States Patent and Trademarks Office by Complainant on September 17,
1996.

2. Respondents are not making a legitimate noncommercial or fair use of the
domain name, for they clearly are seeking commercial gain by misleadingly diverting
consumers to their own website.

3. Respondents have registered the domain name primarily for the purpose of
disrupting the business of the Complainant. Additionally, Respondents have acted
in clear violation of Complainant's trademark rights. Moreover, Respondents have
a pattern of registering multiple domain names which are the registered trademarks
of others. In so doing, inter alia, Respondents have acted in bad faith.

DECISION

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

IT IS DIRECTED THAT THE DOMAIN NAME "bigdog.com" REGISTERED
BY RESPONDENTS Frank Day, Red River Farms, Inc. BE TRANSFERRED
TO COMPLAINANT Big Dog Holdings, Inc. dba Big Dog Sportswear.

Dated: March 9, 2000, by Judge Irving H. Perluss [Retired], Arbitrator. 

IRVING H. PERLUSS

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