Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use.

Complainant was registrant of United States service mark and United States trademark for both Hain Food Group and Celestial Seasonings, Inc. .  Complainant merged Hain and Celestial on March 6, 2000.  Respondent  registered HAINCELESTIAL.NET on March 6, 2000. 

Held, Name Transferred to Complainant.

The domain name is clearly identical and similarly confusing and is almost identical to the name of the new company.
 Because the Respondent failed to assert any affirmative evidence that it has a legitimate right to use the domain name, it is reasonable and acceptable for the Arbitrator to infer and find that Respondent has no rights or legitimate interest in the domain name.
Complainant’s assertion that Respondent registering of the domain name was in bad faith is both logical and appropriate considering that the registration was executed on the same day of the announced merger of Hain and Celestial. The timing of the announcement and of Respondent’s registration is suspicious and cannot be dismissed as a coincidence.  In the absence of any evidence provided by Respondent to contest the inference of bad faith, the Arbitrator finds that Respondent’s registration of the domain name was an act of bad faith.

Policies referred to

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

Honorable William H. Andrews, Arbitrator

The above-entitled matter came on for an administrative hearing on June 6, 2000 before the undersigned on the Complaint of THE HAIN FOOD GROUP and CELESTIAL SEASONINGS, INC., hereafter Complainant, against MIC, hereafter Respondent.  Mark N. Mutterperl, Esq. of Fulbright and Jaworski, L.L.P. represents Complainant.  Upon the written submitted record, the following decision is made: 

PROCEDURAL FINDINGS                 
Domain Name:                         HAINCELESTIAL.NET
Domain Name Registrar:                       Alabanza, Inc. d/b/a Bulkregister.com
Domain Name Registrant:                     MIC
Date of Domain Name Registration:      March 6, 2000
Date Complaint Filed:                           May 8, 2000
Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)[1][1] and Rule 4(c):                                      May 8, 2000
Due Date for a Response:                     May 30, 2000
Respondent did not file a response as required by rule 5(a).
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 May 8, 2000 in compliance with Rule 2(a), and the administrative proceeding commenced pursuant to Rule 4(c).  In compliance with Rule 4(d), The Forum immediately notified Alabanza, Inc., d/b/a Bulkregister.com, the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceeding had commenced. Respondent did not file a response within twenty (20) days as required by Rule 5(a). 

On March 6, 2000, Respondent registered the domain name HAINCELESTIAL.NET with Domain Name Registrar Inc., Alabanza, d/b/a BULKREGISTER.COM., the entity that is the Registrar of the domain name. On May 9, 2000, the Domain Name Registrar Alabanza, d/b/a BULKREGISTER.COM., verified that Respondent is the Registrant for the domain name HAINCELESTIAL.NET and that further by registering its domain name with Alabanza, d/b/a BULKREGISTER.COM., Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules and Policies.

FINDINGS OF FACT
The undisputed evidence establishes that:
1. The Hain Food Group and Celestial Seasonings, Inc. are well known publicly traded companies that announced on March 6, 2000, their intention to merge their operations. The name of the combined company  will be THE HAIN CELESTIAL GROUP, INC. 
2. On March 6, 2000, the same day of the merger announcement, the Respondent registered         the domain name HAINCELESTIAL.NET.
3. Celestial Seasonings, Inc. sells herbal teas, clothing, stationary, children’s toys and a wide variety of other products both in stores and through its website.  Celestial Seasonings, Inc. first used the mark CELESTIAL in 1974 and first used the mark in commerce that same year. Celestial registered the word CELESTIAL with the U.S. Patent & Trademark Office as a trademark on 3/26/1996 (serial # 74-221360), and as a service mark on 9/22/1992 (serial # 74-125698).
4. The Hain Food Group markets, distributes and sells natural, organic, and specialty food products. The Hain Food Group first used the mark HAIN in 1928 and first used the mark in commerce in 1928. The Hain Food Group registered the word HAIN with the U.S. Patent & Trademark Office as a trademark on 7/26/1966 (serial # 73-631150), and renewed the trademark three different times. 
5. Celestial Seasonings, Inc. registered the domain names HAIN-CELESTIAL.COM and HAIN-CELESTIAL.NET shortly after the merger announcement. 

PARTIES CONTENTIONS
1. Complainant contends that Registrant’s domain name HAINCELESTIAL.NET is confusingly similar to the registered and famous trademarks CELESTIAL and HAIN. In addition, it is identical to, and confusingly similar to the name of the new company, The Hain Celestial Group.
2. Complainant contends that Respondent has no rights or legitimate interest in the domain name or any rights or legitimate interests in the famous registered trademarks of Hain Food Group and Celestial Seasonings, Inc.
3. Complainant contends that Respondent registered and is using the domain name in bad faith.
4. Respondent has not contested that the domain name is identical to or confusingly similar to Complainant’s trademark.
5. Respondent has not contested that it has no right or legitimate interest in the disputed domain name.
6. Respondent has not contested that it has acted in bad faith in registering and using the domain name.

DISCUSSION AND CONCLUSIONS
To obtain a relief under  4(a) of the Policy, the Complainant must prove each of the following:
1)         That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2)         That the Respondent has no rights or legitimate interest in the domain name; and
3)         That the domain name has been registered and used in bad faith.

1)  Similarity Between Registrant’s Domain Name and Complainant’s Trademark, Service Mark and Domain name.
The domain name HAINCELESTIAL.NET is clearly identical and similarly confusing with the Hain and Celestial trademarks, and is almost identical to the name of the new company, The Hain Celestial Group and its registered domain names HAIN-CELESTIAL.NET and CELESTIAL-NET.COM. The distinction between HAINCELESTIAL.NET as a compound word and the hyphenated or separate words of Hain and Celestial is not significant. The Arbitrator finds that the domain name is confusingly similar to Complainant’s registered trademark, service mark and domain names.
2) Respondent’s Rights or Legitimate Interest in the Domain Name.
Under 4(c) of the Policy, evidence of a registrant’s rights or legitimate interest in the domain name includes:

(i)         Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(ii)        An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
(iii)       Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
The Respondent has made no showing with respect to any of the above factors. In contrast, Complainant has asserted that Respondent has no rights or legitimate interest in the domain name by providing evidence that it has sole and exclusive rights to the words HAIN and CELESTIAL. Because the Respondent failed to assert any affirmative evidence that it has a legitimate right to use the domain name, it is reasonable and acceptable for the Arbitrator to infer and find that Respondent has no rights or legitimate interest in the domain name HAINCELESTIAL.NET.
3)  Respondent’sBad Faith Registration and Use of the Domain Name.
Under  4(b) of the Policy, evidence of Respondent’s bad faith registration and use includes:
(i)         circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or 
(ii)        you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of conduct; or
(iii)       you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv)       by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Pursuant to 14 of the Rules, the Arbitrator shall draw inferences as deemed appropriate when the Respondent fails to respond to a complaint, and the Arbitrator shall make a decision based on the complaint only. The Claimant’s assertion that the Respondent’s registering of the domain name HAINCELESTIAL.NET was in bad faith is both logical and appropriate considering that the registration was executed on the same day of the announced merger of Hain and Celestial. The timing of the announcement and of the Respondent’s registration is suspicious and cannot be dismissed as a coincidence. 
It is clearly logical to imply that when the Respondent learned of the merger between the two companies, it registered the domain name with the purpose of: selling, renting, or otherwise transferring the rights thereto to the newly formed Hain Celestial Group, Inc., for financial gain. In the absence of any evidence provided by the Respondent to contest the inference of bad faith, the Arbitrator finds that the Respondent’s registration of the domain name HAINCELESTIAL.NET was an act of bad faith. 
Accordingly, the Arbitrator finds that the Complainant met its burden in presenting a prima facie case  against the Respondent. Under the standards applicable to this proceeding, the Arbitrator concludes that the Complainant is entitled to relief on the record presented.

DECISION
Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:
THE UNDERSIGNED ARBITRATOR DIRECTS THAT THE DOMAIN NAME HAINCELESTIAL.NET, REGISTERED BY RESPONDENT MIC, BE TRANSFERRED TO COMPLAINANT HAIN FOOD GROUP AND CELESTIAL SEASONS, INC. 
DATED: June 15, 2000 by Honorable William H. Andrews, Arbitrator.
[1] Any reference to Rule, or Rules, refers to ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy, and any reference to “Policy” or “Policies” refers to ICANN’s Uniform Domain Name Dispute Resolution Policy.