Domain name - U.S. Trademark - Common law trademark - Identical - Confusingly Similar -  Right and Legitimate Interest - Bad faith registration - Bad faith use – Difference of plurality – Divert users.

Complainant was owner of the U.S. trademark registration for the mark, BOY, for use in injection molding machines and parts.  Complainant conducts business on the Internet at boymachines.com.  Respondent registered the domain name, boymachine.com, and is using this domain name as an adults-only website. 

Held, Name Transferred to Complainant.

Respondent’s domain name is confusingly similar to Complainant’s registered mark and identical to Complainant’s common law mark.  Respondent creates confusion with the Complainant’s mark by removing the letter “s” form the Complainant’s business name and corresponding website. 

Respondent has no rights or legitimate interest in respect to the registered domain name because Respondent is using the site to divert users to another site that contains pornographic material. 

Respondent registered and is using the domain names in bad faith.  Respondent is acting in bad faith by programming its website to direct users away from Complainant’s site towards a pornographic site.

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

Cases referred to
EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA,94385 (Nat. Arb. Forum July 7, 2000)

Oxygen Media, LLC v. Primary Source,D2000?0362 (WIPO June 19, 2000) 

Panel Decision referred to 

- Carmody Panelist: -
 

Boy Machines Inc. v Independent?Tom McDonald

PARTIES

The Complainant is Boy Machines, Inc., Exton, PA, USA ("Complainant"). The Respondent is Independent?Tom McDonald, Seattle, WA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is "BOYMACHINE.COM", registered with Network Solutions Inc. ("NSI").

PANELIST(s)

Hon. James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum")         electronically on June 19, 2000; The Forum received a hard copy of the Complaint on June        19, 2000. 

On June 26, 2000, NSI confirmed by e?mail to The Forum that the domain name   "BOYMACHINE.COM" is registered with NSI and that the Respondent is the current        registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain?name disputes brought by third parties in accordance with ICANN’s UDRP.

On June 26, 2000, a Notification of Complaint and Commencement of Administrative       Proceeding (the "Commencement Notification"), setting a deadline of July 17, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email. 

On July 17, 2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default. 
 

On July 18, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody as Panelist. 

Having reviewed the communications records in the case file, the Administrative Panel (the
"Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the
Uniform Rules "to employ reasonably available means calculated to achieve actual notice to
Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name transferred from the Respondent to the         Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent’s use of the domain name constitutes an improper and unlawful infringement of its rights in its registered mark. The Complainant contends that the domain name in question is confusingly similar to the Complainant’s mark, business name, and domain name.

The Complainant suggests that if the Respondent has conducted a domain name search, the existence and prominence of the Complainant’s mark and business would have been apparent. The Complainant maintains that the Respondent’s infringement is detrimental to its business and has created consumer confusion. The Complainant asserts that the Respondent’s registration and use of the domain name has diluted the value of the Complainant’s mark and is inhibiting the Complainant from effectively using its mark.

B. Respondent

The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegations of the Complainant will be deemed true.

FINDINGS

The Complainant owns the U.S. trademark registration for the mark, BOY (registered: December 9, 1975; No. 1,027,026) for use in injection molding machines and parts. The Complainant conducts business on the Internet at <boymachines.com>.

The Respondent registered the domain name in question on or about July 24, 1999. The         Respondent is using the domain name in question as an adults?only website.

DISCUSSION 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that      the complainant must prove each of the following three elements to support a claim that a
domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Complainant has rights in the mark BOY, through its registered trademark. The       Complainant also has common law rights to the name, Boy Machines, which is its corporate name. 

The Respondent’s domain name is confusingly similar to the Complainant’s registered mark and identical to the Complainant’s common law mark. The Respondent creates confusion with the Complainant’s mark by removing the letter "s" from the Complainant’s business name and corresponding website. See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc. FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the domain name <ethnicgrocers.com> is confusingly similar to Complainant’s mark, ETHNICGROCER).

Rights or Legitimate Interests

The Respondent’s registration of the "BOYMACHINE.COM" domain name occurred after the date that the Complainant started using and filed for registration of its mark. 

Further, the Respondent has made no legitimate use of the domain name at issue. The   Respondent has not used the domain name in connection with a bona fide offering of goods and services nor is the Respondent commonly known by the domain name, as set forth in the Policy  4(c)(i) – (iii). Instead, the Respondent is using the site to divert users to another site that contains pornographic material.

Registration and Use in Bad Faith

The Respondent has not responded to the Complaint and, therefore, does not deny that the domain name was registered and is being used in bad faith, as alleged by Complainant.
 

The Respondent is acting in bad faith by programming its website to direct users away from Complainant’s site towards pornographic site. See Oxygen Media, LLC v. Primary Source, D2000?0362 (WIPO June 19, 2000) (finding bad faith where Respondent threatened to develop the domain name, <0xygen.com>, into a pornography site).

The panel concludes that the Respondent registered and used the domain names in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the        decision of the panel that the requested relief be granted. 

Accordingly, for all of the foregoing reasons, it is ordered that the domain name,    "BOYMACHINE.COM" be transferred from the Respondent to the Complainant.

James A. Carmody, Judge (Ret.)
Dated: July 20, 2000