[Indexed as:
T.M. Pacific Co. v. Corelli]
[Indexed as:
Bodyandsoul.com]
National Arbitration
Forum
Domain Name
Dispute Administrative Decision
Forum File
No.: FA0003000094235
Commenced:
3 March 2000
Judgement:
12 April 2000
Arbitrator:
Honorable Carolyn Marks Johnson
Domain name Domain name dispute resolution Wrongful registration Confusion with trademark Misrepresentation Lack of intention to develop
Complainant acquired trademark Body and Soul. Registrant registered domain name BODYANDSOUL.COM. Complainant claims that registered domain name is identical and confusingly similar. Registrant registered domain name in bad faith.
Held, Name Transferred to Complainant
Complainant
wrongfully registered domain name. Domain name BODYANDSOUL.COM is
very similar to the registered trademark Body and Soul. The Registrant
had no legitimate interest or rights regarding the domain name. Domain
name was wrongfully acquired by Respondent.
After registering
the domain, Respondent offered to sell domain name to Complainant for amount
substantially greater than out-of-pocket costs incurred, and there was
no substantial development of domain name. This demonstrates a lack of
intention on behalf of the Respondent to develop the domain.
Respondent
knew or should have known that registering the domain name BODYANDSOUL.COM
would cause confusion with the Complainants trademark. Respondent
registered domain in order to interfere with use of owner of rightful trademark.
Respondent registered a number of names and had no proof, financial or
ability-wise, that he could develop these domains.
Policies
referred to:
Uniform
Domain Name Dispute Resolution Policy
Johnson, Panelist
--
The above-entitled
matter came on for an administrative hearing on April 12, 2000 before the
undersigned on the Complaint of T. M. PACIFIC COMPANY, INC., dba BODY AND
SOUL, A HAWAII CORPORATION, hereafter "Complainant", against ADAM CORELLI,
hereafter "Respondent". K. James Steiner, Jr. Esq. represents Complainant.
Lisa Balaban, Esq. represents Respondent. Upon the written submitted record,
the following decision is made:
PROCEDURAL FINDINGS
Domain Name:
BODYANDSOUL.COM
Domain Name
Registrar: Network Solutions, Inc.
Domain Name
Registrant: Adam Corelli
3294 Queen
Frederica Drive
Mississauga,
Ontario L4Y 3B2
Date of Domain
Name Registration: June 17, 1996.
Date Complaint
filed: March 2, 2000
Date of Commencement
of Administrative Proceeding in Accordance with Rule
2(a) and Rule
4(c): March 3, 2000.
Due date for
a Response: March 27, 2000.
Respondents
Response was filed (dated) March 27, 2000.
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 March 3, 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., the INTERNET CORPORATION
FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative
proceeding had commenced. Respondent submitted a response to the Forum
within twenty (20) days pursuant to Rule 5(a).
On June 17,
1996, Respondent registered the domain name BODYANDSOUL.COM with Domain
Name Registrar NETWORK SOLUTIONS, INC., the entity that is the Registrar
of the domain name. On March 6, 2000, the Domain Name Registrar NETWORK
SOLUTIONS, INC., verified that Respondent is the Registrant for the domain
name BODYANDSOUL.COM and that further by registering its domain name with
NETWORK SOLUTIONS, INC., Respondent agreed to resolve any dispute regarding
its domain name through ICANNs Rules for Uniform Domain Name Dispute Resolution
Policy, and the Uniform Domain Name Dispute Resolution Policy.
FINDINGS
OF FACT
The evidence
permits the following findings:
1. Body and
Soul is a Trademark registered March 3, 1970 to run twenty years and extended
March 3, 1992 to run another ten years. The stated purpose of registration
No. 887,252 was for bath oil and bath beads.
2. Complainant
acquired the trademark Body and Soul from Aramis, Inc., by assignment dated
June 25, 1997.
3. Respondent
Adam Corelli (BODYANDSOUL-DOM) registered BODYANDSOUL.COM on June 17, 1996
4. BODYANDSOUL.COM
is identical to and confusingly similar to Complainants trademark BODY
AND SOUL.
5. Although
other web sites contain the two words body and soul in various configurations
for products and services, the record does not reflect any intent by Complainant
to abandon its interest in the trademark.
6. Complainant
and the predecessor holder of the trademark used the name Body and Soul
from the initial date of registration in 1970 continuously to the present.
7. Complainant
established that it individually made use of the trademark prior to the
date Respondent registered the name.
8. Respondent
offered to sell the name to Complainant for $30,000.
9. On February
12, 1999, Complainants counsel sent Respondent notice to cease using the
mark and rejected in writing Respondents offer.
10. The record
shows that Respondent has at least forty-three registered names and that
Respondents proof showed a pattern of making numerous name registrations
while at the same time failing to show any actual development of the material
beyond a listing on a web page.
11. Respondent
failed to present evidence that showed a substantive development of the
name in issue and the information that he did produce does not show a use
and development of the domain name by inspiration, money or labor that
would be worth the $30,000. Respondents documents show he demanded from
Complainant for the domain name.
12. That the
following is evidence of Respondents bad faith in registering the domain
name BODYANDSOUL.COM:
a. That contrary
to ICANNs Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(i)
Respondent wrongfully registered or acquired the domain name BODYANDSOUL.COM,
a name identical to or confusingly similar to the exclusive trademark of
another. The Respondent did not develop it but offered it for sale to the
Complainant, who is the owner of the trademark as well as to possible competitors
of Complainant for valuable consideration in excess of any out of pocket
costs directly related to the domain name. Despite Respondents offer of
proof that showed BODYANDSOUL.COM listed among Respondents many other
domain name listings. Respondents proof did not show any substantive development
of the name. Respondents proof did not show any out-of-pocket costs directly
related to the domain name. This allows the inference that Respondent never
intended to develop the name but intended to offer it for sale to the owner
of the trademark for a consideration greater than his out-of-pocket expenses
associated with the name.
b. That contrary
to ICANNs Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(ii)
Respondent wrongfully registered the domain name to which another had the
legal right of exclusive use. The record allows the inference that Respondent
did this in order to prevent the owner of the trademark from reflecting
the mark in a corresponding domain name. Respondents documents evidence
a course of registering numerous names and his documents evidence a course
of being willing to sell them. Respondent offered no proof he has the resources
or ability to carry through on the promises of these numerous listings.
c. That contrary
to ICANNs Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(iii)
and (iv), Respondent registered the domain name BODYANDSOUL.COM while he
knew or should have known that it would create confusion with the Complainants
trademark and that it would disrupt the business of Complainants trademark
owner by keeping Complainant from developing the name to its fullest potentiality.
Further, Respondent misrepresented a right to give others the right to
use Complainants trademark, purporting to authorize other similar variations
of the Complainants trademark for internet use.
Complainants
prayer for relief requests that the domain name BODYANDSOUL.COM be transferred
from Respondent to Complainant.
CONCLUSIONS
The undersigned
certifies that she 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 BODYANDSOUL.COM registered by Respondent on June 17, 1996, is so close
as to be identical or confusingly similar to Complainants Trademark BODY
AND SOUL, to which Complainant has the exclusive legal right to use and
to which Respondent has failed to show any legitimate legal right or interest.
2. Respondent
acted in bad faith by registering or acquiring the domain name BODYANDSOUL.COM,
by failing to develop it and then by offering it to Complainant for a consideration
of $30,000, a sum that is in excess of any amounts shown by Respondent
to have been incurred by him as costs or out-of-pocket expenses directly
related to the domain name.
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 BODYANDSOUL.COM REGISTERED BY RESPONDENT ADAM
CORELLI BE TRANSFERRED TO COMPLAINANT T. M. PACIFIC CO., INC., dba BODY
AND SOUL, A HAWAII CORPORATION, THE OWNER OF THE TRADEMARK BODY AND SOUL.
Domain Name Transferred