Domain name - Domain name dispute resolution policy - Registered Trademark - Continual Use - Nearly Identical - Established Identity - Confusingly Similar - Bad faith registration - Bad faith use.

Complainant is owner of the registered trademark “The Donut Man”, which he has used in the business of audio and video product production since 1982.  Respondent registered the domain name donutman.com on 15 May 1996, but has not established any business or commercial entity since.  Complainant alleges that donutman.com is nearly identical to his registered trademark, and that such use of nearly identical names is confusing in the mind of customers, and thus disruptive to Complainant’s established business.

Held, Name Transferred to Complainant.

The domain name as registered by Respondent is nearly identical and is confusingly similar to Complainant’s registered trademark “The Donut Man”.  The only difference is the exclusion of the word “the”, which word is usually not present in the domain name of a business.  Thus, this exclusion is of no significance.  Respondent has no legitimate right or interest in the domain name donutman.com.  Instead, the domain name has been registered in bad faith and is being used in bad faith by Respondent to the detriment of Complainant.

Policies referred to:

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Kalina, Arbitrator: -

The above entitled matter came on for an administrative hearing on April 27, 2000 before the undersigned on the Complaint of Robert C. Evans, hereafter “Complainant”, against Marinex Multimedia Corporation, hereafter “Respondent”. Complainant was represented by: Robert C. Evans, 247 Bayshore Dr., Henderson, TN, 37075. There was no representation on behalf of Respondent: Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS 

Domain Name: donutman.com

Domain Name Registrar: Network Solutions Inc.

Domain Name Registrant: Marinex Multimedia Corporation (Donutman-Dom)

Date of Domain Name Registration: May 15, 1996; updated March 6, 1998; placed on “Hold” May 15, 1998

Date of Complaint Filed: March 21, 2000

Date of Commencement of the Administrative Proceeding in Accordance with Rule 2(a) and Rule 4(c): March 27, 2000

Due Date for a Response: April 17, 2000. Respondent did not submit a Response to the Complainant.

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 March 27, 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 Networks Solutions Inc., the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent did not submit a response to The Forum within twenty (20) days pursuant to Rule 5(a).

On May 15, 1996 (updated March 6, 1998), Respondent registered the domain name donutman.com with Network Solutions, the entity that is the Registrar of the domain name. On March 28, 2000, Network Solutions verified that Respondent is the Registrant for the domain name donutman.com, and that further by registering its domain name with Network Solutions Inc., 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. Complainant has been conducting commerce using the name “The Donut Man” since 3-0-1982, acknowledged as the date First Use under trademark Registration No. 1,674,863, registered with the United States Patent and Trademark Office on February 11, 1992 to Complainant Robert C. Evans.

2. Complainant as “The Donut Man” has produced thirty pieces of audio and video product, of which, 8 videos are RIAA registered Gold-status, and two are Platinum-status. Approximately 4 million tapes, videos, and CD’s have been sold under the name “The Donut Man” since 1982 by Complainant.

3. Respondent since registration of the domain name at issue has not established any business or commercial entity.

4. The domain name is nearly identical to Complainant's registered trademark name. The only distinction is the exclusion of the first word in the domain name, “The”, which in E-commerce is of no significance since the word “the” in a business name is usually discarded in the presentation of a business domain name.

5. The use of such nearly identical names is confusing in the mind of customers and public, and disruptive to a viable business entity with an established identity in the marketplace.

6. Complainant's prayer for relief requests that the domain name donutman.com be transferred from Respondent Marinex Multimedia Corporation to Complainant Robert C. Evans.

7. No other legal proceedings have been commenced or terminated in connection with or relative to this domain name dispute.

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 conclusions:
  1. The domain name donutman.com registered by Respondent is nearly identical and is in fact confusingly similar to Complainant’s registered trademark name “The Donut Man”.

2. Complainant has legitimately used the name “donut man” in business since 1982. Respondent has no legitimate right or interest in the domain name donutman.com.

3. The domain name has been registered and is being used in bad faith and to the detriment of Complainant. 

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 donutman.com REGISTERED BY RESPONDENT Marinex Multimedia Corporation be TRANSFERRED TO COMPLAINANT Robert C. Evans.

Dated April 27, 2000 by
Judge Harold Kalina (Ret.)
Arbitrator