Domain name – Domain name dispute resolution – U.S. Service mark – U.S. Trademark – Common law trademarks – Common law use – Supplemental User – Identical – Confusingly Similar – Bad faith registration – Bad faith use.

Complainant was a registrant of United States service mark and United States trademark. Respondentregistered the domain name meadora.com and mondera.com. Complainant conducts its business through its website miadora.com and alleges that Respondent’s registered domain name is virtually identical to its own.Meadora.com was registered after Respondent knew or should have known of Complainant’s intent to conductbusiness online, and Respondent’s domain name diverts Internet users away from Complainants’ site directly to its competition at mondera.com.

Held, Domain Name Transferred to Complainant

Complainant must establish both bad faith registration and bad faith use.Respondent’s domain name MEADORA.COM is confusingly similar, and phonetically identical to the Complainant’s MIADORA.COM site. Complainant has rights in its registered and common law marks since September 15, 1999. Respondent has no rights or legitimate business interests in respect of the domain name. This is evidenced by Respondent’s purpose of using the name to attract commercial gain Internet users to its own web site by creating a likelihood for confusion with the Complainant's Corporate name and trademark and/or service mark. This constitutes bad faith use and registration.Respondent used the domain name primarily for the diversion of Internet users to its own confusingly similar website at MONDERA.COM, a direct competitor of the Complainant. The user is automatically diverted to the site and misdirects potential customers to the Complainant’s competition, interfering with legitimate business interests. Respondent has demonstrated bad faith use of the domain name in its disruption of Complainant’s business.

Policies referred to 

Uniform Domain Name Dispute Resolution Policy (ICANN), October 24, 1999. 

National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Name Dispute Resolution  Policy. 
Black’s Law Dictionary. Revised Fourth Edition. 1968.

Panel Decision referred to

Fink, Panelist: 

The above entitled matter came on for an administrative hearing on May 30, 2000 before the undersigned on the Complaint of the above named Complainant, against Gemkey America Corp. hereafter "Respondent". Complainant is represented by Todd G. Vare, of Barnes & Thornburg, 11 South Meridan Street, Indianapolis, IN  46204.   The Respondent was represented by Douglas L. Hendricks, Morrison & Foerster, 425 Market Street, San Francisco, CA  94105.Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name: Meadora.com Domain Name Registrar: Network Solutions, Inc. Domain Name Registrant:  Gemkey America Corp. Date of Domain Name Registration:  July 23, 1999 Date Complaint Filed: April 21, 2000 Due Date for a Response:  May 19, 2000Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)l and Rule 4(c)[1]: April 27, 2000 Relief Requested by Complainant:   Transfer of the Domain Name to 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 April 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 the above Registrar, Network Solutions, Inc., the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. On July 23, 1999, Respondent registered the domain name "Meadora.com” with Network Solutions, Inc., the entity that is the Registrar of the domain name. 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.
 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:

FINDINGS OF FACT

1.      Miadora is engaged in the business of selling fine jewelry, diamonds, vintage watches and related luxury items online over the Internet. Miadora owns common law trademark and/or service mark rights to the use of “Miadora”, a mark which has been used in the United States since September 15, 1999.
2.      Miadora (under its previous corporate name, Fortu, Inc.) registered the domain name MIADORA.COM with Network Solutions, Inc.  Miadora’s present web site is www.miadora.com, and Miadora conducts its business – the sale of jewelry, diamonds, watches and related luxury items – through this web site. 
3.      An application for the registration of “Miadora” as a service mark is currently pending before the United States Patent and Trademark Office.  Foreign filings for registration of the mark “Miadora” have also been made in a number of other countries. 4.      Respondent, Gemkey America Corp., is the registrant for the subject domain name, “MEADORA.COM”.
5.      Mondera.com is a direct competitor of Miadora in the online sale of jewelry, diamonds, watches, and related luxury items over the internet. The domain name MONDERA.COM was registered by Respondent, Gemkey America Corp., who also registered the subject domain name MEADORA.COM. 
6.      The MEADORA.COM domain name is virtually identical to Complainant’s MIADORA.COM domain name and its “Miadora” mark. The two domain names are identical orally, or phonetically. The only difference is the substitution of the letter “E” for the letter “I”. 
7.      The MEADORA.COM domain name was registered after Respondent knew or should have known of Miadora’s intent to offer for sale jewelry and related items online at www.miadora.com. 
8.      The MEADORA.COM domain name diverts Internet users away from Miadora’s web site at www.miadora.com and directly to Mondera.com’s web site at www.mondera.com.
9.      When the Internet user types in www.meadora.com, the user is diverted to a web page which identifies “Mondera.com”, and states, among other things, “Welcome to Mondera.com.”
10.     Respondent’s registration of MEADORA.COM  interferes with Miadora’s legitimate business interests and improperly diverts and misdirects potential customers to Miadora’s direct competitor, Mondera.com.
11.     Respondent denies that it has acted in bad faith or in violation of the ICANN Uniform Domain Name Dispute Policy. Nevertheless, Respondent stated that it is willing to transfer the MEADORA.COM domain name to Miadora as requested in the Complaint.   
12.     No evidence has been presented that Respondent has any right or legitimate interest to the domain name as provided in Rule 4(c).
13.    Complainants’ prayer for relief requests that the domain name be transferred to Complainant. 

CONCLUSIONS

To obtain relief under paragraph 4(a)of the Policy, the Complainant must prove each of the following: 
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; and 
2.       The Respondent has no right or legitimate interest in the domain name; and 3.       The domain name has been registered and used in bad faith. Similarity Between Registrant’s Domain Name and Complainant’s Trade or Service Mark. The domain name registered by Respondent is confusingly similar to or identical to the trademark and/or service mark owned by Complainant.  The addition of the generic domain name identifier “.com” and the substitution of the letter “E” for the letter “I” does not avoid a likelihood of confusion.  Leaving aside the “.com” the two names are within the doctrine of “idem sonans”, which is defined as “sounding the same or alike; having the same sound”. Black’s Law Dictionary, Revised  Fourth Edition, 1968.  Respondent’s Rights or Legitimate Interest in the Domain Name. 

       Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate interest in the domain name includes: 
1.                  Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute; 
2.                  An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
3.                  Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.        Respondent has made no showing with respect to any of the above factors. The Respondent has no rights or legitimate interest in the domain name. Respondent’s Bad Faith Registration and Use of the Domain Name.

            Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith registration and use includes: 
1.         Circumstances indicating the domain name was registered for the purpose of resale to the trade or service mark owner or a competitor for profit;
2.         A pattern of conduct showing an attempt to prevent others from obtaining domain names corresponding to their trademarks; 
3. Registration of the domain name for the purpose of disrupting the business of a competitor; or  
4. Using the domain name to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location by creating a likelihood of confusion with the trade or service mark owner’s mark.   The Respondent registered and used the domain name in bad faith as evidenced by circumstances indicating that Respondent registered and acquired the domain name for the purpose of using the name to attract for commercial gain Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s corporate name and trademark and/or service mark. Under ICANN’s Uniform Domain Name Dispute Resolution Policy Complainant has proven that the domain name should be transferred to Complainant.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:THE UNDERSIGNED DIRECTS THAT, AS AGREED BY RESPONDENT, THE DOMAIN NAME "Meadora.com” REGISTERED BY RESPONDENT BE TRANSFERRED TO COMPLAINANT,  MIADORA, INC.        

Judge Karl V. Fink, Retired Judge, 
ArbitratorDated: May 30, 2000