[Indexed as:
Babbitt v. Marketing Support]
[Indexed as:
Babbitt.com]
The National
Arbitration Forum
Administrative
Panel Decision
Forum File
No. 0003000094317
Commenced:
16 March 2000
Judgement:
14 April 2000
Presiding Panelist: Judge John J. Upchurch, [Retired]
Domain name - U.S. Service mark - Confusingly similar Bad faith registration not found - Offer to rent domain name from Complainant.
Complainant was holder of registered service mark "Babbitt." Respondent registered domain name "babbitt.com".
Held, Name Not Transferred to Complainant
Complainant to secure relief must prove the following: 1. The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; 2. Respondent has no rights or legitimate interest in respect to the domain name; 3. Complainant has registered and used the domain name in bad faith.
As to the first question of similarity, it is clear to this Panel that the domain name babbitt.com is similar to a trademark in which Complainant has rights.
Respondent has legitimate interest to the domain name babbitt.com. Respondent did not act in bad faith. At the time of registration, Respondent was unaware of Complainants Babbitt International Inc. and their registered trademark containing the word Babbitt. The surname Babbitt, which Complainant seeks to defend, results in more than 31,000 hits on an Alta Vista search, few of which points to either Complaint or Respondent. An employee of Respondent contacted Complainant offering to rent the domain name babbit.com and provide space on Respondents server.
Cases referred
to:
--
Policies referred to:
ICANN Rules
for Uniform Domain Name Dispute Resolution Policy
Uniform Domain
Name Resolution Policy as supplemented by the National Arbitration Forum's
Supplemental Rules to ICANN's Uniform Domain Resolution Policy (Rules 2(a),
4(c) and 4(d)).
PROCEDURAL FINDINGS
Domain Name:
babbitt.com
Domain Name
Registrar: Network Solutions, Inc.
Domain Name
Registrant: Marketing Support Systems;
Administrative
Contact: Greg Ricks
Date of Domain
Name Registration: March 11, 1996
Date Complaint
Filed: March 16, 2000
Date Response
to Complaint Filed: April 5, 2000.
Response was
timely filed.After reviewing the complaint, and determining it to be in
administrative compliance, the National Arbitration Forum ("Forum") forwarded
the complaint to Respondent in compliance with Rule 2(a) of ICANNs Rules
for Uniform Domain Name Dispute Resolution Policy and the administrative
proceeding was commenced pursuant to Rule 4(c). In compliance with Rule
4(d), the Forum immediately notified Network Solutions that the administrative
proceeding had commenced. The Complaint and Response were docketed and
forwarded to the undersigned arbitrator for decision on April 7, 2000.
FINDINGS
OF FACT
1.
On March 18, 2000, Network Solutions, Inc. confirmed that Respondent registered
the domain name "babbitt.com" under the registrant name Marketing Support
Systems, 26 Center Avenue, Sulphur, Louisiana 70663, with Greg Ricks designated
administrative contact. Network Solutions acknowledged the commencement
of this administrative proceeding and that the domain name registrant is
bound by the Network Solutions Service Agreement Version 4.0. Accordingly,
Respondent agreed to resolve any dispute regarding its domain name registration
pursuant to ICANNs Rules for Uniform Domain Name Dispute Resolution Policy.
Neither the complainant not the respondent contests the jurisdiction of
the Forum or the undersigned arbitrator to resolve this controversy. 2.
Complaint alleges, and Respondent does not deny, that it is the owner of
U.S. Trademark Registration 1,816,726 for "Babbitt" issued by the United
States Patent and Trademark Office for a registration term of ten (10)
years from January 18, 1994, and that said registration is in full force
and effect.
3.
Complainant points out the identical nature of the domain name at issue
and its trademark.
4.
An employee of Respondent contacted Complainant by e-mail on May 5, 1998
offering to rent the domain name "babbitt.com" and provide space on Respondents
server. As pointed out by the Respondent, the surname "Babbitt", which
Complainant seeks to defend, results in more than 31,000 hits on an Alta
Vista search, few of which point to either Complainant or Respondent.
1. Respondent
asserts that at the time the domain name "babbitt.com" was registered,
he had never heard of Babbitt International, Inc., nor did he have any
knowledge that Babbitt International, Inc. had a registered trademark containing
the word "Babbitt". I find this assertion to be credible.
2.
Accordingly, I find as matters of fact and pursuant to paragraph 4 of the
Policy that:
a.
The domain name "babbitt.com" is identical or confusingly similar to the
"Babbitt" trademark in which Complainant has legitimate rights; however,
b.
The Respondent has substantial rights and legitimate interests in respect
of the domain name "babbitt.com;" and c. Respondent has not registered
or used the domain name at issue in bad faith.
CONCLUSION
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 conclusion:1. Respondent may rightfully continue in the use of its
domain, "babbitt.com" and has in no manner acted in bad faith.
DECISION
Based upon
the above findings and conclusions, and pursuant to Rule 4(i) of the ICANNs
Rules for Uniform Domain Name Dispute Resolution Policy and the National
Arbitration Forums Supplemental Rules to ICANNs Uniform Domain Resolution
Policy, it is decided as follows:THE UNDERSIGNED DIRECTS THAT THE DOMAIN
NAME "BABBITT.COM," REGISTERED BY RESPONDENT MARKETING SUPPORT SYSTEMS
BE MAINTAINED WITH MARKETING SUPPORT SYSTEMS AND NOT BE TRANSFERRED TO
BABBITT INTERNATIONAL, INC.