Generic Top Level Domain Name (gTLD) Decisions

THE NATIONAL ARBITRATION FORUM

P. O. BOX 50191

MINNEAPOLIS, MINNESOTA 55405 USA

DOMAIN NAME DISPUTE ADMINISTRATIVE DECISION

________________________________________________________________

BONIDE PRODUCTS, INC.
2 Wurz Avenue
Yorkville, NY 13495
USA
Telephone: (315) 736-8231
Fax: (315) 736-7582
E-mail Address: Not provided

COMPLAINANT,

vs.

PRESTUNES
65 Waterfield Road
Osterville, MA 02655-1514
USA
Telephone: (508) 428-6937
Fax: (508) 428-6937
E-mail Address: PRESTUNE@AOL.COM

RESPONDENT.

DECISION

Forum File No.: FA000200094205

________________________________________________________________

The above entitled matter came on for an administrative hearing on

March 31, 2000 before the undersigned on the Complaint of BONIDE PRODUCTS, INC., hereafter “Complainant”, against PRESTUNES, hereafter “Respondent”. Leo M. Loughlin, Esq. represents Complainant. Respondent had no representation. Michael Preston sent an e-mail message to Michaelene Frederickson of THE FORUM on March 16, 2000. Upon the written submitted record, the following decision is made:

PROCEDURAL FINDINGS

Domain Name: BONIDE.COM

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: Prestunes (BONIDE – DOM)

65 Waterfield Rd.

Osterville, MA 02655-1514 USA

Date of Domain Name Registration: September 9, 1997

Date Complaint filed: February 25, 2000.

Date of Commencement of Administrative Proceeding in Accordance with Rule

2(a)[1] and Rule 4(c): February 28, 2000.

Due date for a Response: March 20, 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 February 28, 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 Domain Name Registrar 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 September 9, 1997, Respondent registered the domain name “BONIDE.COM“ with NETWORK SOLUTIONS, INC., the entity that is the Registrar of the domain name. On February 28, 2000, the Domain Name Registrar NETWORK SOLUTIONS, INC., verified that Respondent is the Registrant for the domain name “BONIDE.COM“, and that further 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.

FINDINGS OF FACT

1. That Complainant is the owner of the mark “BONIDE” and Complainant holds the U.S. Trademark Registration for the mark “BONIDE,” claiming a date of first use for December 18, 1927, although the Trademark Principal Register is dated March 2, 1999.

2. That Respondent registered “BONIDE.COM“ as its domain name September 9, 1997.

3. That Bonide is a Trademark for fertilizers for commercial, agricultural and domestic use as a pesticide, herbicide, fungicide and insecticide.

4. That Respondent does not enjoy a relationship with Complainant as a licensee or otherwise.

5. That the record suggests that Respondent’s assertion that he has not offered to sell the domain name BONIDE.COM is false; that the record shows that Respondent offered to sell the domain name and that greater weight should be given to Complainant’s contention that Respondent offered to sell the domain name to Complainant for an amount well in excess of Respondent’s out-of-pocket expenses.

6. That Respondent had registered thirty-five (35) domain names at the time of this complaint, most of which are not up and running.

7. That Respondent has not developed and has not made good faith use of the domain name “BONIDE.COM.”

8. That Respondent has registered, as a domain name, a mark which is identical to the trademark registered and used by Complainant without having right or legitimate interest in respect to the domain name and that Respondent did so primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of Complainant for valuable consideration in excess of documented out-of-pocket cost directly related to the domain name.

9. That Respondent revealed prior knowledge of the similarity of Complainant’s trademark when he contended that Complainant could use another domain name “BonideProducts.com.”

10. That Respondent failed to establish a need for, right to, interest in, or business relationship giving rise to an anticipated right in the name BONIDE.COM.

11. That Complainant has a legitimate interest in protecting the good will of its trademark, having engaged in the production of agricultural fertilizer for seventy-three (73) years using the name Bonide.

12. That Respondent has not shown any interest in any business operation related to fertilizer production.

13. That Respondent registered the domain name “BONIDE.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 and offered it for sale at

a profit.

b. That Respondent made no legitimate use of the domain name and

seeks to profit from its registration by trading upon the goodwill associated with the “BONIDE“ mark.

c. That Respondent provided incomplete and/or false contact information

in the offer of sale..

d. That Respondent, or persons affiliated with Respondent, have engaged

in a pattern of registering domain names that infringe upon other entities’ marks.

Complainant’s prayer for relief requests that the domain name “BONIDE.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. That contrary to ICANN’s UDNDP, Paragraph 4(b)(I), Respondent registered and acquired the domain name “BONIDE.COM” in bad faith 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.

2. That contrary to ICANN’S Uniform Domain Name Dispute Policy Paragraph 4(b)(ii), Respondent registered the domain name “BONIDE.COM“ on September 9, 1997 with NETWORK SOLUTIONS, INC., although the domain name was identical to or confusingly similar to Complainant’s Registered Trademark “BONIDE,” a mark in which Complainant has rights and to which Respondent has no right or legitimate interest.

3. That contrary to ICANN UDNDP, Paragraph 4(b)(ii), Respondent registered and acquired the domain name “BONIDE.COM“ to prevent Complainant from reflecting its trademark in a corresponding domain name, as evidenced by Respondent’s pattern of conduct in obtaining numerous domain names.

4. That Respondent failed to develop or make good faith use of 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 “BONIDE.COM” REGISTERED BY RESPONDENT PRESTUNES (BONIDE-DOM) BE TRANSFERRED TO COMPLAINANT BONIDE PRODUCTS, INC.

DATED: March 31, 2000 by Judge Carolyn Marks Johnson (Ret.), Arbitrator.

Honorable Carolyn Marks Johnson