[Indexed as:
Bonide Products v. Prestunes]
[Indexed as:
Bonide.com]
National Arbitration
Forum
Administrative
Decision
Decision: Forum
File No.: FA000200094205
Judgement:
March 31, 2000
Bad faith use and registration - ICANNs Uniform Domain Name Dispute Resolution Policy - Offers to sell domain name in excess of out-of-pocket expenses - Domain name identical to trademark - False contact information.
That Complainant is the owner of the mark BONIDE and Complainant holds the U.S. Trademark Registration for the mark BONIDE. Bonide is a Trademark for fertilizers for commercial, agricultural and domestic use as a pesticide, herbicide, fungicide and insecticide. Respondent registered BONIDE.COM as its domain name. Respondent does not enjoy a relationship with Complainant as a licensee or otherwise. Respondent had registered thirty-five (35) domain names at the time of this complaint, most of which are not up and running.
Held , domain name transferred to Complainant.
Respondent has registered, as a domain name, a mark which is identical to the trademark registered and used by Complainant without having right or legitimate interest in respect to the domain name and that Respondent did so primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of Complainant for valuable consideration in excess of documented out-of-pocket cost directly related to the domain name.
The following
is evidence of Respondents bad faith:
a. That
Respondent registered the domain name and offered it for sale at a profit.
b. That
Respondent made no legitimate use of the domain name and seeks to profit
from its registration by trading upon the goodwill associated with the
BONIDE mark.
c. That
Respondent provided incomplete and/or false contact information in the
offer of sale.
d. That
Respondent, or persons affiliated with Respondent, have engaged in a pattern
of registering domain names that infringe upon other entities marks.
PROCEDURAL FINDINGS
Domain Name: BONIDE.COM
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Prestunes (BONIDE DOM)
65 Waterfield Rd.
Osterville, MA 02655-1514 USA
Date of Domain Name Registration: September 9, 1997
Date Complaint filed: February 25, 2000.
Date of Commencement of Administrative Proceeding in Accordance with Rule
2(a)[1] and Rule 4(c): February 28, 2000.
Due date for a Response: March 20, 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 February 28, 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 Domain Name Registrar NETWORK SOLUTIONS, INC., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceeding had commenced. Respondent submitted a response to the Forum within twenty (20) days pursuant to Rule 5(a).
On September 9, 1997, Respondent registered the domain name BONIDE.COM with NETWORK SOLUTIONS, INC., the entity that is the Registrar of the domain name. On February 28, 2000, the Domain Name Registrar NETWORK SOLUTIONS, INC., verified that Respondent is the Registrant for the domain name BONIDE.COM, and that further by registering its domain name with NETWORK SOLUTIONS, INC., Respondent agreed to resolve any dispute regarding its domain name through ICANNs 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 the mark BONIDE and Complainant holds the U.S. Trademark Registration for the mark BONIDE, claiming a date of first use for December 18, 1927, although the Trademark Principal Register is dated March 2, 1999.
2. That Respondent registered BONIDE.COM as its domain name September 9, 1997.
3. That Bonide is a Trademark for fertilizers for commercial, agricultural and domestic use as a pesticide, herbicide, fungicide and insecticide.
4. That Respondent does not enjoy a relationship with Complainant as a licensee or otherwise.
5. That the record suggests that Respondents assertion that he has not offered to sell the domain name BONIDE.COM is false; that the record shows that Respondent offered to sell the domain name and that greater weight should be given to Complainants contention that Respondent offered to sell the domain name to Complainant for an amount well in excess of Respondents out-of-pocket expenses.
6. That Respondent had registered thirty-five (35) domain names at the time of this complaint, most of which are not up and running.
7. That Respondent has not developed and has not made good faith use of the domain name BONIDE.COM.
8. That Respondent has registered, as a domain name, a mark which is identical to the trademark registered and used by Complainant without having right or legitimate interest in respect to the domain name and that Respondent did so primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of Complainant for valuable consideration in excess of documented out-of-pocket cost directly related to the domain name.
9. That Respondent revealed prior knowledge of the similarity of Complainants trademark when he contended that Complainant could use another domain name BonideProducts.com.
10. That Respondent failed to establish a need for, right to, interest in, or business relationship giving rise to an anticipated right in the name BONIDE.COM.
11. That Complainant has a legitimate interest in protecting the good will of its trademark, having engaged in the production of agricultural fertilizer for seventy-three (73) years using the name Bonide.
12. That Respondent has not shown any interest in any business operation related to fertilizer production.
13. That Respondent registered the domain name BONIDE.COM in bad faith and has no rights or legitimate interests in respect to said domain name. The following is evidence of Respondents bad faith:
a. That Respondent registered the domain name and offered it for sale at a profit.
b. That Respondent made no legitimate use of the domain name and seeks to profit from its registration by trading upon the goodwill associated with the BONIDE mark.
c. That Respondent provided incomplete and/or false contact information in the offer of sale..
d. That Respondent, or persons affiliated with Respondent, have engaged in a pattern of registering domain names that infringe upon other entities marks.
Complainants prayer for relief requests that the domain name BONIDE.COM be transferred from Respondent to Complainant.
CONCLUSIONS
The undersigned certifies that she 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. That contrary to ICANNs UDNDP, Paragraph 4(b)(I), Respondent registered and acquired the domain name BONIDE.COM in bad faith 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 Respondents out-of-pocket costs directly related to the domain name.
2. That contrary to ICANNS Uniform Domain Name Dispute Policy Paragraph 4(b)(ii), Respondent registered the domain name BONIDE.COM on September 9, 1997 with NETWORK SOLUTIONS, INC., although the domain name was identical to or confusingly similar to Complainants Registered Trademark BONIDE, a mark in which Complainant has rights and to which Respondent has no right or legitimate interest.
3. That contrary to ICANN UDNDP, Paragraph 4(b)(ii), Respondent registered and acquired the domain name BONIDE.COM to prevent Complainant from reflecting its trademark in a corresponding domain name, as evidenced by Respondents pattern of conduct in obtaining numerous domain names.
4. That Respondent failed to develop or make good faith use of the domain name.
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 BONIDE.COM REGISTERED BY RESPONDENT PRESTUNES (BONIDE-DOM) BE TRANSFERRED TO COMPLAINANT BONIDE PRODUCTS, INC.
DATED:
March 31, 2000 by Judge Carolyn Marks Johnson (Ret.), Arbitrator.
Honorable
Carolyn Marks Johnson
[1]
Any reference to Rule or Rules are to ICANNs Rules for Uniform Domain
Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution
Policy as supplemented by the National Arbitration Forums Supplemental
Rules to ICANNs Uniform Domain Resolution Policy.
Domain Name Transferred