Boy Machines, Inc
v.
Independent - Tom McDonald
[Indexed as: Boy Machine v. McDonald]
[Indexed as: BOYMACHINE.COM]
National Arbitration Forum
Administrative Panel Decision
Forum File No: FA0006000095045
Commenced: 26 June, 2000
Judgment: 20 July, 2000
Presiding Panelists: James A. Carmody
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.
Respondents domain name is confusingly similar to Complainants registered mark and identical to Complainants common law mark. Respondent creates confusion with the Complainants mark by removing the letter s form the Complainants 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 Complainants site towards a pornographic site.
Policies referred to
ICANNs Rules for Uniform Domain Name Dispute Resolution Policy
National Arbitration Forums Supplemental Rules to ICANNs 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 ICANNs 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 Respondents 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 Complainants 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 Forums 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 Respondents 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 Complainants 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 Complainants mark and business would have been apparent. The Complainant maintains that the Respondents infringement is detrimental to its business and has created consumer confusion. The Complainant asserts that the Respondents registration and use of the domain name has diluted the value of the Complainants 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 Respondents domain name is confusingly similar to the Complainants registered mark and identical to the Complainants common law mark. The Respondent creates confusion with the Complainants mark by removing the letter "s" from the Complainants 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 Complainants mark, ETHNICGROCER).
Rights or Legitimate Interests
The Respondents 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 Complainants 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
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