Barnes & Noble College Bookstores, Inc. v. Jerry Riley

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barnes & Noble College Bookstores, Inc. v. Jerry Riley

Case No. D2001-1330

1. The Parties

(a) Complainant is Barnes & Noble College Bookstores, Inc., a New York

corporation, located and doing business at 33 East 17th Street, New

York, New York, 10003 U.S.A. ("Barnes & Noble").

(b) Barnes & Noble’s contact is Robinson Silverman Pearce Aronsohn &

Berman LLP, 1290 Avenue of the Americas, New York, New York, 10104 U.S.A.

(c) Barnes & Noble’s authorized representative is Robinson Silverman Pearce

Aronsohn & Berman LLP, 1290 Avenue of the Americas, New York, New York,

10104 U.S.A.

(d) Respondent, according to Alldomains.com’s WHOIS database, is Jerry Riley,

Springfield, Missouri, U.S.A. ("Respondent").

2. Domain Name and Registrar

(a) The domain name at issue is as follows: <barnesandnobledigital.com>

(The "Domain Name").

(b) The registrar for the domain name at issue is Alldomains.com ( the "Registrar").

3. Procedural History

(a) The Complaint submitted by Barnes & Noble was received by e-mail on

November 6, 2001, and in hard copy on November 9, 2001, by the WIPO Arbitration

and Mediation Center (the "Center") for decision in accordance with

the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999, (the

"Policy").

(b) The Center verified that the Complaint satisfies the formal requirements

of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy approved

by ICANN on October 24, 1999, (the "Rules") and WIPO Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

(c) Payment in the required amount has been made to the Center.

(d) On November 12, 2001, the Center transmitted to the registrar a request

for registrar verification in connection with this case.

(e) On November 14, 2001, the Center received the registrar’s verification

Response, (1) confirming that the registrar had received a copy of the Complaint

sent by the Center in accordance with the Supplemental Rules, (2) confirming

that the Domain Name is registered with Alldomains.com, (3) confirming that

the Uniform Domain Name Dispute Resolution Policy applies to the Domain Name,

(4) confirming that the Respondent is the current registrant of the Domain Name

(5) providing the full contact details that are available in the registrar’s

WHOIS database for the registrant, the billing contact and the administrative

contact for the Domain Name, and (6) stating that the Domain Name site is "active."

(f) On November 28, 2001, the Center transmitted via post/courier, facsimile

and e-mail Notification of Complaint and Commencement of the Administrative

Proceeding, together with a copy of the Complaint, to the Respondent and via

e-mail to Barnes & Noble’s authorized representatives. The Center advised

that (1) the formal date of the commencement of the administrative proceeding

is November 28, 2001, (2) the response was due by December 18, 2001, (3) in

the event of default the Center would appoint a Panel to review the facts and

to decide the case, (4) the Panel would be entitled to draw such inferences

from Respondent’s default as it considers appropriate, (5) Barnes & Noble

had elected for the matter to be decided by a single panelist.

(g) On January 4, 2002, the Center transmitted to Barnes & Noble via e-mail

and to the Respondent via e-mail Notification of Respondent Default advising

that Respondent failed to comply with the deadline indicated in the Notification

of Complaint and Commencement of Administrative Proceeding for submission of

its Response and that the Center shall proceed to appoint a single-member Administrative

Panel as designated by Barnes & Noble.

(h) On January 18, 2002, the Center transmitted to Barnes & Noble via e-mail

and to the Respondent via e-mail, Notification of Appointment of Administrative

Panel and Projected Decision Date. The notification advised that Mr. Gaynell C. Methvin

had been appointed as the single panelist, and that the decision would be due

on February 1, 2002.

(i) On January 18, 2002, the Center transmitted the file in this case via post/courier

to the appointed panelist, Gaynell Methvin.

4. Factual Background; Parties’ Contentions

a. The Trademarks

The Complaint is based on various trademarks Barnes & Noble registered

in the U.S. Patent and Trademark Office and elsewhere.

"IX. 13. This Complaint is based upon the famous worldwide and United

States registered trademark "BARNES & NOBLE," as well as the United

States registered trademark "BARNESANDNOBLE.COM," both owned by Complainant,

a United States bookseller."

. . .

"XI. 1.a.17. Complainant, Barnes & Noble College Bookstores, Inc.

and their respective affiliates, including Barnes & Noble, Inc., a publicly

traded company and barnesandnoble.com 11c . . . owns and operates over 1,000

retail bookstores, including college and university bookstores, throughout the

United States, and has been doing business under the ‘Barnes & Noble’ mark

exclusively and continuously for over 25 years.

18. Complainant also owns and operates the <barnesandnoble.com> web site

whereby books, CDs, DVDs, videocassettes, music, magazines, computer games and

other items are purchased over the Internet by the general public. The <barnesandnoble.com>

web site is one of the most visited retail Internet sites. An excerpt from the

<barnesandnoble.com> web site is attached hereto as Exhibit 4."

. . .

20. Complainant is the owner of the following valid and subsisting U.S. trademark

registrations in the U.S. Patent and Trademark Office ("USPTO") for

the goods and services recited therein, as evidenced by the records from the

USPTO trademark database annexed hereto as Exhibit 6:

a. BARNES & NOBLE - U.S. Registration NO. 1,128,704, for book distributorship

services and retail bookstore services. The mark was registered on August 12, 1980

and has been in continuous and exclusive use since March, 1975.

b. BARNES & NOBLE & DESIGN - U.S. Registration No. 1,213,581, for book

distributorship services and retail bookstore services. The mark was registered

on October 19, 1982 and has been in continuous and exclusive use since June 1, 1971.

c. BN.COM BARNES & NOBLE DESIGN - U.S. Registration NO. 2,360,295, for

online retail bookstore services, featuring , among other things, books, magazines,

software and general giftware items; entertainment in the nature of providing

online book reviews, interviews with authors, personal recommendations, gift

ideas, and bestseller lists, all related to books, magazines, and general giftware

items; and computer services, namely providing a web site of information about

software.. The mark was registered on June 20, 2000 and has been in continuous

and exclusive use since April 26, 1999.

d. BN.COM - U.S. Registration NO. 2, 360,296, for online retail bookstore services,

featuring, among other things, books, magazines, software and general giftware

items; entertainment in the nature of providing online book reviews, interviews

with authors, personal recommendations, gift ideas, and bestseller lists, all

related to books, magazines, and general giftware items; and computer services,

namely providing a web site of information about software. The mark was registered

on June 20, 2000 and has been in continuous and exclusive use since April 26,

1999.

e. BARNESANDNOBLE.COM - U.S. Registration NO. 2,290,269, for online retail

bookstore services, featuring, among other things, books, magazines, software

and general giftware items; entertainment in the nature of providing online

book reviews, interviews with authors, personal recommendations, gift ideas,

and bestseller lists, all related to books, magazines, and general giftware

items; and computer services, namely providing a web site of information about

software. The mark was registered on November 2, 1999 and has been in continuous

and exclusive use since May 13, 1997.

f. BARNESANDNOBLE.COM & DESIGN - U.S. Registration NO. 2,463,172, for online

retail bookstore services, featuring, among other things, books, magazines,

software and general giftware items; entertainment in the nature of providing

online book reviews, interviews with authors, personal recommendations, gift

ideas, and bestseller lists, all related to books magazines, and general giftware

items; and computer services, namely providing a web site of information about

software. The mark was registered on June 26, 2001 and has been in continuous

and exclusive use since May 13, 1997.

21. Complainant is also the owner of valid and subsisting worldwide trademark

registrations and applications for the mark "BARNES & NOBLE,"

as evidenced by the attached database excerpt annexed hereto as Exhibit 7."

b. The Complaint

Barnes & Noble in support of its position asserts the following:

"a. Complainant’s Rights in the Mark "BARNES & NOBLE"

XI. 1. 19. Complainant registered <barnesandnoble.com> with Network Solutions

on August 10, 1995 and registered <bn.com>, which resolves to the same

site, with Network Solutions on October 19, 1994. An excerpt from the WHOIS

information database in annexed hereto as Exhibit 5.

. . .

22. Complainant, by virtue of its long exclusive and continuous use and the

expenditure of considerable sums for advertising, marketing and promotional

activities, as well as by virtue of the excellence of its products and services,

has developed exceedingly valuable goodwill in the marks ‘BARNES & NOBLE,’

BARNESANDNOBLE.COM’ and the domain name <barnesandnoble.com> (hereinafter,

the ‘Marks’).

23. The Marks have become distinctive of the goods and services listed in Paragraph 17,

supra as a result of Complainant’s efforts in selling, distributing and

promoting goods and services bearing the Marks, and through Complainant’s exclusive

and continuous use of the Marks in commerce long prior to February 1 2001,

the date of Respondent’s domain name registration for <barnesandnobledigital.com>.

24. Complainant has satisfied the requirement of proving rights in the Marks

because of: (a) Complainant’s ownership of valid and subsisting registrations

for the mark "BARNES & NOBLE" and related iterations of such mark;

(b) Complainant’s long exclusive and continuous use of the mark "BARNES

& NOBLE" and (c) the recognized distinctiveness and fame of Complainant’s

mark "BARNES & NOBLE".

b. Respondent’s Registration and Use of <barnesandnobledigital.com>

25. According to the excerpt from the WHOIS information database annexed hereto

as Exhibit 1, Respondent registered <barnesandnobledigital.com> (the ‘Domain

Name’) on February 1, 2001 in the name of Jennifer Graham.

26. As evidenced by the attached web page excerpt taken from Respondent’s web

site, attached hereto as Exhibit 8, Respondent registered the Domain Name and

adopted the mark "BARNES AND NOBLE DIGITAL" for use in connection

with a web site that sells and displays sexually explicit video tapes, DVDs

and other items.

27. On September 28, 2001, Complainant mailed and e-mailed a cease and desist

letter to Respondent demanding that Respondent immediately cease and desist

from any further use of the domain name <barnesandnobledigital.com> and

relinquish the Domain Name to Complainant. A copy of the cease and desist letter

is attached hereto as Exhibit 9.

28. On October 2, 2001, Respondent sent a facsimile reply to the cease and

desist letter to Complainant. A copy of the cease and desist letter is attached

hereto as Exhibit 10. In the reply to the cease and desist letter, Respondent

stated the following:

‘Thank you for informing that my website was being misdirected. We recently

had a hacker attack our servers and our websites were defaced as well as crashing

our servers. I was unaware of the site being misdirected. However the problem

is now fixed. I appreciate your concern for your client. However I contacted

the US Patent and Trade Mark Office as well as my Secretary of State of Missouri

prior to registering the site was assured that there were no conflicts.’

Respondent’s reply amounts to nothing more than incoherent excuses to avoid

liability that do not undercut or diminish the fact that such commercial use

of the Domain Name by Respondent still violates Complainant’s rights.

29. Upon receipt of the facsimile reply to the cease and desist letter, Complainant

conducted a supplemental WHOIS search. Upon information and belief, the Respondent

filed an amendment with the registrar Alldomains.com on October 2, 2001

thereby deleting any reference to the originally listed registrant Jennifer

Graham. The name of the registrant was intentionally left blank by Respondent.

A copy of the amended registrant information taken from the WHOIS information

database is attached hereto as Exhibit 11.

30. Upon receipt of the facsimile reply to the cease and desist letter, Complainant

visited Respondent’s web site located at <barnesandnobledigital.com>.

Upon information and belief, the Respondent revised the web site by deleting

the link to the pornographic web site and replacing it with a home page that

purports to offer web site design services under the name ‘Barnes and Noble

Digital.’ According to the web site, Barnes & Noble Digital conducts web

design, web design consulting and web site design services. A copy of the <barnesandnobledigital.com>

web site is attached hereto as Exhibit 12. In revising the site, Respondent

added the following disclaimer of association to the top of the home page: ‘[T]his

site is not associated with Barnes & Noble, Inc.’[1]

31. Respondent, who is clearly in the adult sex business, made revisions to

its web site in a transparent attempt to avoid liability. However, whether or

not the web site is currently used for pornographic or other commercial purposes,

Respondent is still violating the UDRP and Complainant’s rights. As explained

infra, Respondent is using the Domain Name in bad faith with the intent

of attracting, for commercial gain, Internet users to its commercial web-site

or other on-line location, by creating a likelihood of confusion between Complainant’s

mark and the Domain Name as to source, sponsorship, affiliation, or endorsement

of its web site.

2. The Domain Name Is Nearly Identical or Confusingly Similar To The Trademark

In Which Complainant Has Rights

32. As discussed in paragraphs 17 through 24, supra, the Complainant

clearly has prior rights in the mark and domain name "BARNES & NOBLE".

33. In the instant case, <barnesandnoble.com> is nearly identical or

confusingly similar to Complainant’s federally registered mark, "BARNESANDNOBLE.COM"

and domain name <barnesandnoble.com>. The Respondent’s domain name merely

adds the generic word "digital" to Complainant’s mark. Such Unauthorized

use, Notwithstanding the addition of a generic word, dilutes, tarnishes and

trades off the fame of Complainant’s mark.

34. The Respondent’s domain name is confusingly similar to Complainant’s Marks

in sound, appearance, meaning, connotation and overall commercial impression.

The addition of a generic word to a distinctive registered trademark does not

change the overall commercial impression of the mark and thus, is not sufficient

to overcome a likelihood of confusion between the marks. In this instance, the

commercial impression conveyed by the domain name <barnesandnobledigital.com>

and Complainant’s mark and domain name are one and the same. Accordingly, the

Domain Name creates a likelihood of confusion with Complainant’s mark and domain

name.

35. The U.S. Trademark Office Trademark Trial and Appeal Board has consistently

held that likelihood of confusion is not avoided between otherwise confusingly

similar marks merely by adding or deleting a house mark or matter that is generic,

descriptive or suggestive of the named goods or services. Thus, if the dominant

portion of both marks is the same, then confusion may be likely notwithstanding

peripheral differences. See, e.g. In re El Torito Restaurants Inc., 9

USPQ2d 2002 (TTAB 1988) (MACHO COMBOS with "COMBOS" disclaimed held

likely to be confused with MACHO (stylized), both for food items as a part of

restaurant services); In re Computer Systems Center Inc., 5 USPQ2d 1378

(TTAB 1987) (CSC ADVANCED BUSINESS SYSTEMS for retail computer stores held likely

to be confused with CSC for computer time sharing and computer programming services);

In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986) RESPONSE held

likely to be confused with RESPONSE CARD (with "CARD" disclaimed),

both for banking services); In re United States Shoe Corp., 229 USPQ 707 (TTAB

1985) (CAREER IMAGE (stylized) for clothing held likely to be confused with

CREST CAREER IMAGES (stylized) for uniforms); In re Corning Glass Works,

229 USPQ 65 (TTAB 1985) CONFIRM for a buffered solution equilibrated to yield

predetermined dissolved gas values in a blood gas analyzer held likely to be

confused with CONFIRMCELLS for diagnostic blood reagents for laboratory use);

In re riddle, 225 USPQ 630 (TTAB 19895) (RICHARD PETTY’S ACCU TUNE and

design for automotive service stations held likely to be confused with ACCUTUNE

for automotive testing equipment); and In re Denisi, 225 USPQ 624 (TTAB

1985) (PERRY’S PIZZA held likely to be confused with PERRY’S, both for restaurant

services).

36. Likewise, UDRP panels have consistently recognized that the addition of

a generic word to a complainant’s famous mark creates a likelihood of confusion

between the mark and the disputed domain name. See, Geoffrey, Inc. v. Wayne

O’Hara, FA0105000097152 (June 8, 2001)(the addition of the generic work

"kinky" to the Complainant’s famous mark "Toys ‘R Us" does

not take the disputed domain name out of the realm of confusingly similar);

Yahoo! Inc. v. Casino Yahoo, Inc., WIPO

Case No. D2000-0660 (August 24, 2000) (finding the domain name <casinoyahoo.com>

confusingly similar to Complainant’s mark YAHOO!) and Arthur Guinness Son

& Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case

No. D2001-0026 (March 23, 2001) (finding confusingly similarity where the

domain names in dispute, i.e., <guinnessguide.com>, <guinnesstours.com>,

<guinnessirishstout.com>, <guinnesspubsoftheworld.com>, <guinnessjazzfestival.com>

and <guinnessirishpubs.com> all contain the identical mark of the Complainant

combined with a generic word or term.

37. Accordingly, the Domain Name creates a likelihood of confusion with Complainant’s

Marks, is likely to divert customers to Respondent’s site, and is likely to

dilute and tarnish Complainant’s Marks.

3. The Respondent Has No Legitimate Interests In The Domain Name

38. Respondent cannot demonstrate any legitimate interests in the Domain Name.

Respondent has no relationship with or permission from Complainant for the use

of the Marks. At the time of Respondent’s registration of the Domain Name with

the Registrar on February 1, 2001, Complainant’s Marks were already well-known

on the Internet and throughout the world.

39. Upon information and belief, Respondent uses or intends to use the Domain

Name in connection with a sexually explicit web site. WIPO Panelists have repeatedly

found that use of a disputed domain name to sell adult sex products fails to

demonstrate use of the domain name in connection with a bona fide offering of

goods or services pursuant to Policy Paragraph 4(c)(i). See e.g. Geoffrey,

Inc. v. Wayne O’Hara, Claim Number FA105000097152 (June 8, 2001) citing

Toys "R" Us, Inc. v. Akkaoui, 40 USPQ2d 1836 (N.D. Cal. 1996).

40. Likewise, Respondent’s deceptive attempt after the receipt of Complainant’s

cease and desist letter to appear to be operating a legitimate web design service

fails to demonstrate legitimate use of the domain name in connection with a

bona fide offering of goods or services pursuant to Policy Paragraph 4(c)(i).

See Kathryn Bridget Moynahan v. Fantastic Sites, Inc., WIPO

Case No. D2000-1083 (October 22, 2000).

41. Furthermore, Respondent’s use of the Domain Name is not legitimate noncommercial

or fair use pursuant to Policy Paragraph 4(c)(iii) because the Respondent trades

off the fame of Complainant’s Marks to lure Internet users to its web site for

commercial gain. See e.g., Geoffrey, Inc. v. Wayne O’Hara, Claim Number

FA105000097152 (June 8, 2001) citing Jourdan Holding AG v. AAIM, WIPO

Case No. D2000-0403 (June 27, 2000) (finding no legitimate interest where

(a) Respondent is not a licensee of Complainant; (b) Complainant’s prior rights

in the domain name precede Respondent’s registration; and (c) Respondent

is not commonly know by the domain name in question).

42. In contrast to situations where the respondent is using the domain name

to communicate opinions or criticism about a complainant, see e.g.,

Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, WIPO

Case No. D2000-1104, November 23, 2000 (<wallmartcanadasucks.com>)

and Lockheed Martin Corporation v. Dan Parisi, WIPO

Case No. D2000-1015, January 26, 2001 (<lockheedsucks.com> and <lockheedmartinsucks.com>),

the Respondent in this instance is using the Domain Name solely for commercial

purposes in order to sell products such as sexually explicit video tapes, DVDs

and other items.

4. The Domain Name Was Registered and Is Being Used In Bad Faith

43. Under Paragraph 4 (b) of the Policy, evidence of registration and use in

bad faith may be established by:

(i) Circumstances indicating that the Respondent has registered or has acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of your documented out-of-pocket costs directly

related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the

owner of the trademark or service mark from reflecting the mark in a corresponding

domain name, provided that the Respondent has engaged in a pattern of such conduct;

or

(iii) the Respondent has registered the domain name primarily for the purpose

of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to

attract, for commercial gain, Internet users to your web site or other on-line

location, by creating a likelihood of confusion with the complainant’s mark

as to the source, sponsorship, affiliation, or endorsement of your we site or

location or of a product or service on your web site or location.

44. Respondent’s registration and use of the domain name <barnesandnobledigital.com>

is in clear bad faith for the following reasons:

45. Prior to receiving the cease and desist letter from Complainant, the Domain

Name <barnesandnobledigital.com> resolved to a sexually explicit commercial

web site that intentionally: (a) created a likelihood of confusion between the

Domain Name and Complainant’s famous Marks: (b) diluted and tarnished Complainant’s

famous Marks; and (c) attracted, for commercial gain, Internet users to the

web site by creating a likelihood of confusion with Complainant’s Marks.

46. After Respondent’s received Complainant’s cease and desist letter, Respondent

deceptively changed the appearance of its web site, so that the Domain Name

<barnesandnobledigital.com> now resolves to a commercial web site offering

non-existent web design and other services by a company named "Barnes &

Noble Digital."

47. The only purpose Respondent has for its use of the Domain Name <barnesandnobledigital.com>

is to lure Internet users to its commercial and sexual-explicit web site by

creating confusion with Complainant’s famous Marks. Panelists have consistently

held that the registration and use of the disputed domain name to lure Internet

users to the web site for commercial gain by creating a likelihood of confusion

is evidence of bad faith under Policy ¶4(b)(iv). See Geoffrey, Inc. v. Wayne

O’Hara, Claim Number FA105000097152 (June 8, 2001), State Fair of Texas

f. Granbury.com, FA 95288 (Nat. Arb. Forum September 12, 2000) (finding

bad faith where the Respondent registered the domain name <bigtex.net>

to infringe on the Complainant’s goodwill and attract Internet users to the

Respondent’s website) and State Farm Mut. Auto. Ins. Co. v. Northway,

FA 9544 (Nat. Arb. Forum October 11, 2000) (finding that the Respondent registered

the domain name <statefarmnews.com> in bad faith because Respondent intends

to use Complainant’s marks to attract the public to the website without permission

from Complainant).

48. Respondent’s conduct clearly demonstrates that Respondent registered and

is using the domain name <barnesandnobledigital.com> in bad faith, to

trade off of Complainant’s famous mark and the good will associated with that

mark for the purpose of luring visitors to its sex site or commercial site in

order to sell its adult-oriented merchandise or web site design services. Thus,

the totality of Respondent’s activities constitutes bad faith under the Policy."

c. Remedies Requested

As for relief, Barnes & Noble requests at Paragraph 49:

"Complainant requests that the domain name <barnesandnobledigital.com>

be transferred to Complainant."

d. Respondent’s Answer

Respondent has filed no answer, or any other document, with the Center.

5. Discussion and Findings

Paragraph 4 of the Policy directs that Barnes & Noble must prove, with

respect to the domain name in issue, each of the following:

(i) The domain name in issue are identical or confusingly similar to the BARNES

& NOBLE trademark,

(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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which,

for purposes of Paragraph 4(a)(iii) above, shall be evidence of the registration

and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances which,

if proved by respondent, shall demonstrate respondent’s rights or legitimate

interests to the domain name for purposes of Paragraph 4(a)(ii) above.

a. Identity or Confusing Similarity

On this record, no challenge has been leveled with respect to (1) the validity

of

any BARNES & NOBLE trademarks or service marks, (2) Barnes & Noble’s

rights in those marks with respect to Barnes & Noble’s services and goods,

(3) the global fame and goodwill associated with those marks, or (4) any fact

averred by Barnes & Noble as to promotion of the marks, use of the marks,

and total sales of services and goods under the marks. Accordingly, such facts

are found to be true.

Barnes & Noble urges, and has the burden of proving, that the Domain Name

is either identical to, or confusingly similar to, the BARNES & NOBLE trademarks.

On its face, the Domain Name incorporates the term "Barnes & Noble." Close

identity to the BARNES & NOBLE trademarks is clear. In light of the truth

and controlling nature of the facts and legal arguments set forth in the Complaint,

paragraphs 19 – 42, 44 - 48, the Panel finds that the Domain Name is confusingly

similar to the BARNES & NOBLE trademarks.

b. Rights or Legitimate Interests - Paragraph 4.c Factors

With respect to the Domain Name, Respondent has failed to prove any of the

three circumstances set out in Paragraph 4(c) of the Policy, viz.:

(i) before any notice to Respondent of the dispute, Respondent’s use of or

preparations to use the domain name were in connection with a bona fide offering

of goods or services,

(ii) Respondent or a related entity has been commonly known by the domain name,

and

(iii) Respondent is making legitimate noncommercial or fair use of the domain

name in issue, "without intent for commercial gain to misleadingly divert consumers

or to tarnish the trademark or service mark at issue."

As averred by Barnes & Noble and properly inferred from the undisputed

facts as to Respondent’s conduct, and in light of Respondent’s default, the

uncontroverted facts demonstrate that each of these three factors must be resolved

in favor of Barnes & Noble and against Respondent.

No challenge has been leveled with respect to Barnes & Noble’s averments,

paragraphs 38 - 42 and paragraphs 44 - 48, as to registrant’s conduct.

In light of the foregoing, it is found that this record demonstrates that Respondent

has no rights or legitimate interests vis-a-vis <barnesandnobledigital.com>.

c. Registration and Use in Bad Faith

Registration of the Domain Name in bad faith is a matter of the appropriate

inferences to draw from circumstantial evidence. Despite Respondent’s default,

bad faith must nevertheless be proved by Barnes & Noble.

The facts asserted by Barnes & Noble in support of its position that Respondent’s

registration was in bad faith are found in the Complaint in paragraphs 44 - 48.

These facts are incorporated herein by reference and are found to be true. As

such, these uncontroverted facts and relevant legal authority demonstrate that

Respondent has registered and used the domain name "<barnesandnobledigital.com>"

in bad faith.

6. Decision

The panel has jurisdiction of this dispute. Respondent has received notice

of the commencement of this proceeding, the Policy, the Complaint, and Respondent’s

has been advised of the consequences of its failure to answer. Respondent has

been afforded due process.

With respect to the request for transfer of the Domain Name, the Panel decides

that Barnes & Noble has carried its burden of proving (a) the Domain Name

here is identical to or confusingly similar to the BARNES & NOBLE marks,

(b) Respondent has no rights and no legitimate interests in respect of the Domain

Name, and (c) the Domain Name has been registered and used in bad faith by Respondent.

Accordingly, the Panel requires that the registration of the domain name <barnesandnobledigital.com>

be transferred to Barnes & Noble.

Gaynell C. Methvin

Sole Panelist

Dated: March 26, 2002

Footnote:

1. A Defendant’s use of a disclaimer before

suit is filed demonstrates his recognition that confusion is likely between

the marks. See Esso, Inc. v. Standard Oil Co., 987 f.2D 1, 7 (8th

Cir. 1938).

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