[Indexed as: Hain Food Group and Celestial Seasonings v. MIC]
[Indexed as: HAINCELESTIAL.NET]
National Arbitration Forum
Administrative Panel Decision
Forum File No.: FA0005000094729
Commenced: 8 May, 2000.
Judgment: 15 June, 2000.
Presiding Arbitrator: Honorable William H. Andrews
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.
Complainants 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 Respondents
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 Respondents 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 ICANNs 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,
childrens 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 Registrants 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 Complainants 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 Registrants Domain Name and Complainants
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 Complainants registered trademark,
service mark and domain names.
2) Respondents Rights or Legitimate Interest in the Domain Name.
Under 4(c) of the Policy, evidence of a registrants 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) RespondentsBad Faith Registration and Use of the Domain Name.
Under 4(b) of the Policy, evidence of Respondents 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 complainants 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
Claimants assertion that the Respondents 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 Respondents
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 Respondents 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 ICANNs Rules for Uniform
Domain Name Dispute Resolution Policy, and any reference to Policy or
Policies refers to ICANNs Uniform Domain Name Dispute Resolution Policy.
Domain Name Transferred