UDRP CASE SUMMARY ARCHIVES - DOMAIN NAME LEGAL DISPUTES

AfterImage Studios, Inc v. Applewood Publishing

[Indexed as: AfterImage Studios v. Applewood Publishing]
[Indexed as: Bulkmale.com]

THE NATIONAL ARBITRATION FORUM 

Case No: FA0004000094643
Commenced: 25 April, 2000
Judgment: 30 May, 2000 

Presiding Panelist: John A. Bender, Arbitrator

Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use. 

That Complainant is the owner of a trademark and trade names that include the term "Bulkmale". Registrant registered the domain name, bulkmale.com. Complainant and its predecessor-in-interest adopted and began using Bulkmale as a product name as early as 1991.  The name was used continuously and extensively in interstate and international commerce in connection with the advertising and sale of products and services. 

Held, Name Transferred to Complainant.

The findings are that the domain name "Bulkmale.com" is nearly identical and confusingly similar to a trademark in which Complainant has rights and to which Respondent has no right or legitimate interests.

The domain name was registered and used in bad faith.  Respondent registered the domain name after Complainant's alleged failure to pay a commercial debt and holds the domain name hostage for payment of that debt.  Respondent also had no pre-trademark legitimate use of the domain name and has sought to commence his new apparel website only after this dispute was ripe; and has made no mention of a bona-fide use before this dispute erupted.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
National Arbitration Forum's Supplemental Rules
 

Registration Agreements referred to

Network Solutions Domain Name Registration Agreement, dated July 4, 1997
 

Panel Decision referred to
--

John A. Bender, Sole Panelist: - 

___________________________________________________

1. The Parties

The Complainant is AfterImage Studios, Inc. ("AfterImage Studios" or "Complainant"). The Respondent is  Applewood Publishing ("Respondent"). 

2. The Domain Name and Registrar

The domain name at issue is bulkmale.com. The domain name is registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170 ("NSI").

3. Procedural History

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)[1] and Rule 4(c): April 25, 2000

Due date for a Response: Respondent submitted a Response within 20 days.

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 25, 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. (Network Solutions), the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent submitted a response to The Forum within twenty (20) days pursuant to Rule 5(a).

On July 4, 1997, Respondent registered the domain name "Bulkmale.com" with Network Solutions, the entity that is the Registrar of the domain name. On April 20, 2000, Network Solutions verified that Respondent is the Registrant for the domain name "Bulkmale.com", and that further by registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name through Network Solutions' and ICANN's Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

4. Findings of Fact 

1. That Complainant is the owner of a trademark and trade names that include the term "Bulkmale". Complainant uses "Bulkmale" as the identifier for its e-mail address at its portal website.

2. That Complainant is the owner of at least 1 trademark registrations for Bulkmale and uses the name extensively in interstate and international commerce.

3. That as early as 1991, Complainant and its predecessor-in-interest adopted and began using Bulkmale as a product name, used continuously and extensively in interstate and international commerce in connection with the advertising and sale of products and services.

4. That Complainant has invested substantial sums of money in developing and marketing its products and service, under the "Bulkmale" mark..

5. That Respondent registered and used the domain name "Bulkmale.com" in bad faith and has no rights or legitimate interests in respect to said domain name. The following is evidence of Respondent's bad faith:
a. Respondent registered the domain name after Complainant's alleged failure to pay a commercial debt and holds the domain name hostage for payment of that debt.
b. Respondent had no pre-trademark legitimate use of the domain name and has sought to commence his new apparel website only after this dispute was ripe; and has made no mention of a bona-fide use before this dispute erupted.

6. Complainant's prayer for relief requests that the domain name "Bulkmale.com" be transferred from Respondent to Complainant.

5. 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 "Bulkmale.com", registered by Respondent with Network Solutions, is nearly identical and confusingly similar to a trademark in which Complainant has rights and to which Respondent has no right or legitimate interests.

2. Respondent registered and acquired the domain name "Bulkmale.com" primarily for the purpose of enforcing an unrelated commercial debt, even though Complainant is the owner of the trade mark and has used the mark as a mainstay of its business since 1991. This amounts to seeking valuable consideration in excess of Respondent's out of pocket costs directly related to the domain name. Respondent has therefore registered and used the domain name in bad faith.

6. 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 "Bulkmale.com" REGISTERED BY RESPONDENT TRANSFERRED TO COMPLAINANT.
 

Dated: May 30, 2000, by John A. Bender, 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.
 
 

Domain Name Transferred

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