UDRP CASE SUMMARY ARCHIVES - DOMAIN NAME LEGAL DISPUTES

Marconi Commerce Systems, Inc. v. Mr. B. Evans

[Indexed as: Marconi v. Evans]
[Indexed as: Gilbarcoeclipse.com]

The National Arbitration Forum
Administrative Panel Decision

Forum File No.: FA0002000093560
Commenced: 31 January 2000
Judgment: 4 February 2000
Presiding Panelist: M. John Bender

Domain name - Domain name dispute resolution policy - Worldwide Service mark - Worldwide Trademark - Trade Names - Nearly Identical - Confusingly similar - Bad faith registration - Bad faith use

The Complainant is the owner of trademarks, service marks, and trade names that include the terms "Gilbarco" and "Eclipse".  Gilbarco and Eclipse have been used continuously and extensively by the complainant in interstate and international commerce.  The Complainant alleges "Gilbarcoeclipse.com" is identical or confusingly similar to the Complainant's registered trademarks.

Held, Name Transferred to Complainant.

The domain name "Gilbarcoeclipse.com" is nearly identical and confusingly similar to trademarks in which Complainant has rights and to which Respondent has no right or legitimate interests.

The Respondent registered the domain name "Gilbarcoeclipse.com" in bad faith and has no rights or legitimate interests in respect to said domain name. The Respondent has made no legitimate use of the domain name "Gilbarcoeclipse.com".  Bad faith was shown by the Respondent's actions: 1) the domain name was registered shortly after the Complainant's adoption and rollout of Eclipse; 2) the Respondent's profit motive is evidenced by its offer to sell the domain name to the Complainant.

Policies referred to
Uniform Domain Name Dispute Resolution Policy
National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Name Dispute Resolution Policy

Panel Decision referred to
--

Bender, Panelist: -

The above entitled matter came on for an administrative
hearing on February 4, 2000 before the undersigned on the
Complaint of Marconi, hereafter "Complainant", against Mr. B.
Evans, hereafter "Respondent". Complainant was represented
by Steven Terranova, Esq., Coats & Bennet, 1106 Crescent
Green, Suite 206, Gary, NC 27511. There was no attorney
appearing on behalf of Respondent. Respondent appeared Pro
Se by e-mail. Upon the written submitted record, the following
DECISION is made:

PROCEDURAL FINDINGS
Domain Name: Gilbarcoeclipse.com
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Mr. B. Evans
Date of Domain Name Registration: November 17, 1999
Date Complaint Filed: January 31, 2000
Date of Commencement of Administrative Proceeding in
Accordance with Rule 2(a)[1] and Rule 4(c): February 4, 2000
Due date for a Response: February 28, 2000. Respondent did
not submit a Response to the Complaint.

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
February 4, 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 November 17, 1999, Respondent registered the domain
name "Gilbarcoeclipse.com" with Network Solutions, the
entity that is the Registrar of the domain name. On November
30, 2000, Network Solutions verified that Respondent is the
Registrant for the domain name "Gilbarcoeclipse.com", and
that further by registering its domain name with Network
Solutions, 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
1. That Complainant is the owner of trademarks, service marks,
and trade names that include the terms "Gilbarco" and
"Eclipse". Complainant also uses the mark "Gilbarco.com" as
the domain name for its portal Web site. The word "Gilbarco"
is used extensively at this portal Web site, which is a
significant method of promoting Marconi.

2. That Complainant is the owner of at least 2 trademark
registrations worldwide for Gilbarco and Eclipse.

3. That as early as October 1999, Complainant and its
predecessor-in-interest adopted and began using Eclipse as a
product name from the time it was rolled out in October 1999.
Gilbarco and Eclipse have been used continuously and
extensively in interstate and international commerce in
connection with the advertising and sale in substantial part
over the internet.

4. That Complainant has invested substantial sums of money in
developing and marketing its products and service.

5. That Respondent registered the domain name
"Gilbarcoeclipse.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. That Respondent registered the domain name on November
17, 1999, shortly after Complainant's adoption and rollout of
Eclipse in November at Comdex in Respondents home town of
Las Vegas, Nevada.

b. That Respondent has made no legitimate use of the domain
name "Gilbarcoeclipse.com" and it seeks to profit from its
registration of said domain name by trading upon the goodwill
associated with the Respondent and its Eclipse product.
Respondent's profit motive is evidenced by its offer to sell said
domain name to Complainant.

6. Respondent made an offer of proof that Complainant's
evidence was tainted and that Respondent's son's birth
certificate would show a non-commercial use, but did not
provide such proof required under forum rules.

7. Complainant's prayer for relief requests that the domain
name "Gilbarcoeclipse.com" be transferred from Respondent
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 "Gilbarcoeclipse.com", registered by
Respondent on November 17, 1999 with Network Solutions, is
nearly identical and confusingly similar to trademarks in which
Complainant has rights and to which Respondent has no right
or legitimate interests.

2. Respondent registered and acquired the domain name
"Gilbarcoeclipse.com" primarily for the purpose of selling or
otherwise transferring the said domain name registration to the
Complainant who is the owner of the trade mark or service
mark, or to a competitor of the Complainant, for valuable
consideration in excess of Respondent's out-of-pocket costs
directly related to the domain name. Respondent registered the
domain name in bad faith.

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 "Gilbarcoeclipse.com" REGISTERED BY
RESPONDENT MR. B. EVANS BE TRANSFERRED TO
COMPLAINANT MARCONI COMMERCE SYSTEMS, INC.

Dated: March 15, 2000, by John A. Bender, Arbitrator.
John Bender
Arbitrator

Name Transferred

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