[Indexed as:
Marconi v. Evans]
[Indexed as:
Gilbarcoeclipse.com]
The National
Arbitration Forum
Administrative
Panel Decision
Forum File
No.: FA0002000093560
Commenced:
31 January 2000
Judgment:
4 February 2000
Presiding
Panelist: M. John Bender
Domain name - Domain name dispute resolution policy - Worldwide Service mark Worldwide Trademark Trade Names Nearly Identical - Confusingly similar - Bad faith registration - Bad faith use
The Complainant is the owner of trademarks, service marks, and trade names that include the terms "Gilbarco" and "Eclipse". Gilbarco and Eclipse have been used continuously and extensively by the complainant in interstate and international commerce. The Complainant alleges "Gilbarcoeclipse.com" is identical or confusingly similar to the Complainant's registered trademarks.
Held, Name Transferred to Complainant.
The domain name "Gilbarcoeclipse.com" is nearly identical and confusingly similar to trademarks in which Complainant has rights and to which Respondent has no right or legitimate interests.
The Respondent registered the domain name "Gilbarcoeclipse.com" in bad faith and has no rights or legitimate interests in respect to said domain name. The Respondent has made no legitimate use of the domain name "Gilbarcoeclipse.com". Bad faith was shown by the Respondent's actions: 1) the domain name was registered shortly after the Complainant's adoption and rollout of Eclipse; 2) the Respondent's profit motive is evidenced by its offer to sell the domain name to the Complainant.
Policies
referred to
Uniform
Domain Name Dispute Resolution Policy
National Arbitration
Forum's Supplemental Rules to ICANN's Uniform Domain Name Dispute Resolution
Policy
Panel Decision
referred to
--
Bender, Panelist: -
The above entitled
matter came on for an administrative
hearing on
February 4, 2000 before the undersigned on the
Complaint
of Marconi, hereafter "Complainant", against Mr. B.
Evans, hereafter
"Respondent". Complainant was represented
by Steven
Terranova, Esq., Coats & Bennet, 1106 Crescent
Green, Suite
206, Gary, NC 27511. There was no attorney
appearing
on behalf of Respondent. Respondent appeared Pro
Se by e-mail.
Upon the written submitted record, the following
DECISION is
made:
PROCEDURAL
FINDINGS
Domain Name:
Gilbarcoeclipse.com
Domain Name
Registrar: Network Solutions, Inc.
Domain Name
Registrant: Mr. B. Evans
Date of Domain
Name Registration: November 17, 1999
Date Complaint
Filed: January 31, 2000
Date of Commencement
of Administrative Proceeding in
Accordance
with Rule 2(a)[1] and Rule 4(c): February 4, 2000
Due date for
a Response: February 28, 2000. Respondent did
not submit
a Response to the Complaint.
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
February 4,
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 Network Solutions, Inc. (Network Solutions), the
Internet Corporation
for Assigned Names and Numbers
(ICANN), and
the Complainant that the administrative
proceeding
had commenced. Respondent submitted a response
to The Forum
within twenty (20) days pursuant to Rule 5(a).
On November
17, 1999, Respondent registered the domain
name "Gilbarcoeclipse.com"
with Network Solutions, the
entity that
is the Registrar of the domain name. On November
30, 2000,
Network Solutions verified that Respondent is the
Registrant
for the domain name "Gilbarcoeclipse.com", and
that further
by registering its domain name with Network
Solutions,
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. That Complainant
is the owner of trademarks, service marks,
and trade
names that include the terms "Gilbarco" and
"Eclipse".
Complainant also uses the mark "Gilbarco.com" as
the domain
name for its portal Web site. The word "Gilbarco"
is used extensively
at this portal Web site, which is a
significant
method of promoting Marconi.
2. That Complainant
is the owner of at least 2 trademark
registrations
worldwide for Gilbarco and Eclipse.
3. That as
early as October 1999, Complainant and its
predecessor-in-interest
adopted and began using Eclipse as a
product name
from the time it was rolled out in October 1999.
Gilbarco and
Eclipse have been used continuously and
extensively
in interstate and international commerce in
connection
with the advertising and sale in substantial part
over the internet.
4. That Complainant
has invested substantial sums of money in
developing
and marketing its products and service.
5. That Respondent
registered the domain name
"Gilbarcoeclipse.com"
in bad faith and has no rights or
legitimate
interests in respect to said domain name. The
following
is evidence of Respondent's bad faith:
a. That Respondent
registered the domain name on November
17, 1999,
shortly after Complainant's adoption and rollout of
Eclipse in
November at Comdex in Respondents home town of
Las Vegas,
Nevada.
b. That Respondent
has made no legitimate use of the domain
name "Gilbarcoeclipse.com"
and it seeks to profit from its
registration
of said domain name by trading upon the goodwill
associated
with the Respondent and its Eclipse product.
Respondent's
profit motive is evidenced by its offer to sell said
domain name
to Complainant.
6. Respondent
made an offer of proof that Complainant's
evidence was
tainted and that Respondent's son's birth
certificate
would show a non-commercial use, but did not
provide such
proof required under forum rules.
7. Complainant's
prayer for relief requests that the domain
name "Gilbarcoeclipse.com"
be transferred from Respondent
to Complainant.
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 findings and
conclusions:
1. The domain
name "Gilbarcoeclipse.com", registered by
Respondent
on November 17, 1999 with Network Solutions, is
nearly identical
and confusingly similar to trademarks in which
Complainant
has rights and to which Respondent has no right
or legitimate
interests.
2. Respondent
registered and acquired the domain name
"Gilbarcoeclipse.com"
primarily for the purpose of selling or
otherwise
transferring the said domain name registration to the
Complainant
who is the owner of the trade mark or service
mark, or to
a competitor of the Complainant, for valuable
consideration
in excess of Respondent's out-of-pocket costs
directly related
to the domain name. Respondent registered the
domain name
in bad faith.
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 "Gilbarcoeclipse.com"
REGISTERED BY
RESPONDENT
MR. B. EVANS BE TRANSFERRED TO
COMPLAINANT
MARCONI COMMERCE SYSTEMS, INC.
Dated: March
15, 2000, by John A. Bender, Arbitrator.
John Bender
Arbitrator
Name Transferred