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 ICANN’S 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 "Buyer’s 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