Domain Name – Domain name dispute resolution policy – Bad faith use –  Bad faith registration – Identical – Distinct – Confusingly similar – Trademark – Competitors – Famous Mark – Acquisition of Domain Name.

Complainants are registrants of trademark SUCCESSORIES.  Through extensive use on products and advertising the said mark has become famous.  Respondent is registrant of domain names SUCCESSORIES.COM, SUCCESSORIES.ORG, and SUCESSORIES.COM.  Complainants contend domain names are identical or confusingly similar to Complainants’ mark, that Respondent does not have any right or legitimate interest in respect of domain names, and that names were registered and being used in bad faith.

Held:  Domain Name transferred to Complainant

Domain names in question are identical or confusingly similar to Complainants’ trademark, to which the Respondent has no right or legitimate interest.  Complainants and Respondent are direct competitors.  When the said domain names were obtained by the Respondent, Respondent was familiar with Complainant’s trademark and use of the mark.  At time of registration of domain names, Respondent was considering acquiring Successories, Inc. and obtained names to ensure they would be available as part of company assets.  The acquisition did not take place.Respondent registered and used domain names in bad faith as evidenced by fact that using domain names, Respondent intentionally attempted to attract, now and in the future, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainants’ mark as a source, sponsorship, affiliation, or endorsement of its website or location, or of a product on its website.

Policies Referred to:

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

Registration Agreements Referred to:

Network Solutions, Inc. Registration Agreement, effective July 22, 1998  
Network Solutions, Inc. Registration Agreement, effective January 21, 1999 

The above entitled matter came on for an administrative hearing on April 25, 2000 before the undersigned on the Complaint of Successories, Inc. and Celebrating Excellence, Inc., hereafter "Complainants", against Mach 1, Inc., hereafter "Respondent". Complainants were represented by Malcolm McCaleb Jr., and Carolyn E. Knecht, Foley & Lardner, 330 N. Wabash, Suite 3300, Chicago, Illinois 60611-3608. Representation on behalf of Respondent was by Michael DiGiordano, Marketing Director of Respondent. Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS 

Domain Names: sucessories.com, succesories.com and successories.org Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Mach 1, Inc.
Date of Domain Name Registration: July 22, 1998 and January 21, 1999.
Date Complaint Filed: March 16, 2000
Due Date for a Response: April 10, 2000
Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)l and Rule 4(c): March 17, 2000 

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 March 17, 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 the above Registrar, Network Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainants that the administrative proceeding had commenced. On July 22, 1998 and January 21, 1999, Respondent registered the domain names listed above with Network Solutions, the entity that is the Registrar of the domain names. By registering the domain names with Network Solutions, Respondent agreed to resolve any dispute regarding the domain names through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy. 

FINDINGS OF FACT

1. Complainants own the following federally registered trademark for SUCCESSORIES: 1,909,482. 2. Complainants first registered the mark "SUCCESSORIES on August 1, 1995. Complainant first used the mark "SUCCESSORIES" November 1990. Complainants first used the mark "SUCCESSORIES" in commerce on November 1990. Successories, Inc. has an application to register "SUCCESSORIES", Application serial no. 75-529735, for motivational wall décor. 3. Complainants have widely and continuously used the mark "SUCCESSORIES" in connection with retail store and catalogue services in the area of self-improvement and motivational products. Through extensive use on products and in advertising, SUCCESSORIES has become a famous mark. 4. On July 22, 1998 and January 21, 1999, Registrant registered the domain names in controversy with the Registrar, Network Solutions, Inc. 5. The Registered domain names are identical or confusingly similar to the trademark or service mark in which the Complainants have rights and the Respondent does not have any right or legitimate interests in respect of the domain names, which are the subject of the complaint. 6. Respondent’s use of the domain names intentionally attempts to attract, now and in the future, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainants’ mark as a source, sponsorship, affiliation, or endorsement of its website or location or of a product on its website. 7. The exclusivity of Complainants’ trademark is protected under United States law. 8. Complainants and Respondent are direct competitors. When the three domain names were obtained by Respondent, Respondent was familiar with Complainant’s trademark and use of the trademark. 9. When the domain names were acquired, Respondent was considering acquiring Successories, Inc. and obtained the domain names to make sure they would be available as part of the company assets, apparently to be able to use the SUCCESSORIES name. The acquisition did not take place. 10. No allegation has been made and no evidence has been presented that Respondent has any right or legitimate interest to the domain names as provided in Rule 4(c). 11. Complainants’ prayer for relief requests that the domain names be transferred. 

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 names in question registered by Respondent with Network Solutions, are identical or confusingly similar to Complainants’ trademark SUCCESSORIES and to which Respondent has no right or legitimate interests. 2. Respondent registered and used the domain names in bad faith as evidenced by circumstances that by using the domain names Respondent intentionally attempts to attract, now and in the future, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainants’ mark as a source, sponsorship, affiliation, or endorsement of its website or location or of a product on its website. 3. Respondent has raised the issue the "successories.org" domain name, was set up for non-profit use and should not be addressed as part of this forum. By registering the name Respondent has agreed to resolution of a dispute relating to that name through ICANN’s rules. 4. Under ICANN’s Uniform Domain Name Dispute Resolution Policy Complainant has proven that the domain names should be transferred to Complainants. 

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows: Since there are two complainants which have requested that the domain names in questions be transferred to them, THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAMES, sucessories.com, succesories.com and successories.org, REGISTERED BY RESPONDENT BE TRANSFERRED TO COMPLAINANTS.