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BABBITT INTERNATIONAL, INC. v. MARKETING SUPPORT SYSTEMS [2000] GENDND 181 (14 April 2000)


National Arbitration Forum

P. O. Box 50191
Minneapolis, Minnesota 55405 USA

BABBITT INTERNATIONAL, INC.

1330 Sherwood Forest, Suite 205

Houston, Texas 77043-4663

Mr. Stu Babbitt,

Complainant

vs.

MARKETING SUPPORT SYSTEMS

26 Center Avenue

Sulphur, Louisiana 70663

Mr. Greg Ricks,

Respondent.

DECISION
FILE NO. FA0003000094317

The above entitled matter came on for an administrative hearing on April 14, 2000 before the undersigned arbitrator on the Complaint of Babbitt International, Inc. ("Complainant"), represented by Gary L. Bush, Esquire, Mayor, Day, Caldwell & Keeton, LLP, 700 Louisiana, Suite 1900, Houston, Texas 77002, against Marketing Support Systems, represented by W. Joe Mize, Esquire, Robichaux, Mize & Wadsack, LLC, 901 Lakeshore Drive, Suite 900, Lake Charles, Louisiana 70601. Upon the written submitted record including the Complaint and the Response to Complaint, the following DECISION is rendered:

PROCEDURAL FINDINGS

Domain Name: babbitt.com

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: Marketing Support Systems; Administrative Contact: Greg Ricks

Date of Domain Name Registration: March 11, 1996

Date Complaint Filed: March 16, 2000

Date Response to Complaint Filed: April 5, 2000. Response was timely filed.

After reviewing the complaint, and determining it to be in administrative compliance, the National Arbitration Forum ("Forum") forwarded the Complaint to the Respondent in compliance with Rule 2(a) of ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), the Forum immediately notified Network Solutions that the administrative proceeding had commenced. The Complaint and Response were docketed and forwarded to the undersigned arbitrator for decision on April 7, 2000.

FINDINGS OF FACT

    1. On March 18, 2000, Network Solutions, Inc. confirmed that Respondent registered the domain name "babbitt.com" under the registrant name Marketing Support Systems, 26 Center Avenue, Sulphur, Louisiana 70663, with Greg Ricks designated administrative contact. Network Solutions acknowledged the commencement of this administrative proceeding and that the domain name registrant is bound by the Network Solutions Service Agreement Version 4.0. Accordingly, Respondent agreed to resolve any dispute regarding its domain name registration pursuant to ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy. Neither the complainant not the respondent contests the jurisdiction of the Forum or the undersigned arbitrator to resolve this controversy.
    2. Complaint alleges, and Respondent does not deny, that it is the owner of U.S. Trademark Registration 1,816,726 for "Babbitt" issued by the United States Patent and Trademark Office for a registration term of ten (10) years from January 18, 1994, and that said registration is in full force and effect.
    3. Complainant points out the identical nature of the domain name at issue and its trademark.
    4. An employee of Respondent contacted Complainant by e-mail on May 5, 1998 offering to rent the domain name "babbitt.com" and provide space on Respondent’s server. As pointed out by the Respondent, the surname "Babbitt", which Complainant seeks to defend, results in more than 31,000 hits on an Alta Vista search, few of which point to either Complainant or Respondent.
    5. Respondent asserts that at the time the domain name "babbitt.com" was registered, he had never heard of Babbitt International, Inc., nor did he have any knowledge that Babbitt International, Inc. had a registered trademark containing the word "Babbitt". I find this assertion to be credible.
    6. Accordingly, I find as matters of fact and pursuant to paragraph 4 of the Policy that:
    1. The domain name "babbitt.com" is identical or confusingly similar to the "Babbitt" trademark in which Complainant has legitimate rights; however,
    2. The Respondent has substantial rights and legitimate interests in respect of the domain name "babbitt.com;" and
    3. Respondent has not registered or used the domain name at issue in bad faith.

CONCLUSION

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 conclusion:

    1. Respondent may rightfully continue in the use of its domain, "babbitt.com" and has in no manner acted in bad faith.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy, it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "BABBITT.COM," REGISTERED BY RESPONDENT MARKETING SUPPORT SYSTEMS BE MAINTAINED WITH MARKETING SUPPORT SYSTEMS AND NOT BE TRANSFERRED TO BABBITT INTERNATIONAL, INC.

Signed this 14th day of April, 2000, by Judge John J. Upchurch (Retired), arbitrator.

Honorable John J. Upchurch

Circuit Judge (Ret.)

Arbitrator

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