[Indexed as: Pearson v. Byers Choice]
[Indexed as: buyerschoice.com]
National Arbitration Forum
Administrative Panel Decision
Forum File Number FA #92015
Judgment: March 9, 2000
Presiding Panelist: Judge Carolyn M. Johnson
Domain Name - Domain Name Dispute - Domain Name Dispute Resolution Policy - Trademark - Confusingly similar - Phonetically similar - Legitimate interest
Complainant was the registrant of United States trademark. Registrant registered the domain name, Buyers Choice. Complainant alleged that its registered trademark, Buyers Choice, and the registered domain names, Buyerschoice.com and Byerschoice.com were confusingly similar, that the Respondent has no rights or legitimate interest in the domain name at issue, and that the Respondent registered and used the domain name at issue in bad faith.
Held: The Domain Name buyerschoice.com reactivated and retained by the Respondent.
Pursuant to Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution, the Complainant has the burden of establishing all of the following 3 elements: 1) That the domain name must be identical or confusingly similar to trademark or service mark in which the complainant has rights; 2) That the Respondent has no rights or legitimate interest in respect of the domain name that is the subject of the dispute; and 3) That the domain name was registered and used in bad faith.
Despite the fact that the domain name BUYERSCHOICE.COM and BYERSCHOICE.COM are identical or confusingly similar to the trademark registered and used by the Complainant, BUYERS CHOICE, the Complainant has the burden of establishing all three elements in order to obtain a favourable result. Since the Complainant failed to prove the second and third elements, the decision was rendered in favour of the Respondent.
Policies Referred to
Uniform Domain Name Dispute Resolution Policy
Registration Agreements Referred to
Network Solutions Domain Name Registration Agreement, effective December
27, 1995
The above entitled matter came on for an administrative hearing on March
9, 2000,
before a three member panel consisting of the undersigned, Judge Carolyn
M.
Johnson and Judge Charles K. McCotter. After due consideration of the
written
submitted record and full discussion by the panel, the following unanimous
decision
is made:
PROCEDURAL FINDINGS
Domain Name : buyerschoice.com
Domain Registrant Byers Choice Date : December 27, 1995
Domain Name Registrar Network Solution
No known conflict of interest exists with any member of the panel.
The Complaint and Response were duly filed in accordance with the rules
and
regulations of the National Arbitration Forum. Subsequently, both parties
filed
additional responses. After confirming administrative compliance, The
Forum
notified the Registrar, ICANN and the Complainant that the administrative
proceeding had commenced in compliance with Rule 4(d).
The Respondent registered the domain name with Network Solutions, the
entity
that is the Registrar of the domain name. In so doing the Respondent
agreed to
resolve any dispute regarding its domain name through ICANNS Uniform
Domain
Name Dispute Resolution Policy.
The Complaint is based on the trademark "Buyers Choice" as registered
by James
Frank Pearson on November 22, 1994.
FINDINGS OF FACT
1.The Complainant is the owner of the trademark/service
mark " Buyers
Choice".
At the time, Mr. Pearson was in the real estate business in the state of Washington.
2.After contacting the Respondent in 1996, Mr. Pearson
filed a dispute notice
with Internic
which resulted in the domain name Buyerschoice.com being deactivated.
3.The Respondent Byers Choice, a Pennsylvania company,
has been in the
business of manufactoring figurines since
1981. Its trademark " Byers
Choice" was registered in 1986. Phonetically
it is the same as "Buyers
Choice". From time to time, Byers Choice
customers have misspelled the
company name "Buyers Choice". In 1995, Byers
Choice Ltd. registered
two domain names, "Buyerschoice.com" and "Byerschoice.com".
Its stated
purpose was to link the two in some way so
that customers who misspelled
the company name would be able to contact
the company.
DISSCUSSION
Pursuant to Paragraph 4(a) of the ICANN Uniform Domain Name Dispute
Resolution
Policy, Complainant must prove the following elements in order to obtain
a
favorable decision:
(1) The domain name must be identical or confusingly similar to a trademark or
service mark in which the Complainant has rights; and
1.The Complainant must show
that the Respondent has no rights or
legitimate interest
in respect of the domain name that is the subject of
this dispute;
and
1.The Complainant must show
that the domain name was registered and
used in bad
faith.
The burden is on the Complainant. If he fails to prove all three elements
the
decision must be for the Respondent.
DECISION
After carefully reviewing all of the submittals in detail, it is the
unanimous decision of
this panel that the Complainant has failed to proved the second and
third elements,
and therefore, it is the decision of the panel that:
The domain name "buyerschoice.com" should be reactivated and retained by the Respondent.
Louis Condon
Arbitrator for the Panel
March 9, 2000
Charleston, SC
Domain Name Not Transferred