Generic Top Level Domain Name (gTLD) Decisions

The Stanley Works

COMPLAINANT,

vs

Phil O’Neil

RESPONDENT

________________________________________

DECISION
Forum File No: FA0003000094233

The above entitled matter came on for an administrative hearing on April 17, 2000 before a a panel of three arbitators on the complaint of The Sanley Works, hereafter "Complainant" against Phil O’Neil hereafter called "Respondent". Complainant was

represented by William E. Marames;Therese K. Francese, Arent Fox, et al 1050 Connecticut Avenue Washington D. C. 20036. The Respondent was represented by James E. Starnes,The First Union Bank 2 East Bryan Street Suit 1500 Savanah, Georgia 31401. Upon the written submitted record including the Complainants’s Complaint and Respondent’s Response to the Complaint, the following DECISION is rendered:

PROCEDURAL FINDING

Domain Names: THE STANLEY WORKS.NET; STANLEY WORKS.NET

Domain Name Registrar: Internet Domain Registrars

Domain Name Registrant: Mc Neil and Associates/Phil Neil

Date of Domain Name: Registration: January 24, 2000

Date Complaint Filed: February 28, 2000

Date Response to Complaint filed: 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 Respondent in compliance with Rule 2(a) and the administrative proceeding was commenced pursuant to Rule 4(d). The Forum immediately notified Network Solutions, Inc., the Internet Corporation for assigned names and numbers (ICANN), that the administrative proceedings had commenced. Respondent submitted a response dated March 27, 2000. The Respondent elected to have a three member panel and paid the appropriate fee. This panel was duly selected and the filed documents were forwarded to the undersigned for decision.

FINDING OF FACT

1. Neither party contests the jurisdiction of the Forum or the undersigned arbitrators to resolve this controversy.
2. The Complainant is a corporation incorporated under the laws of the State of Connecticut and established under the trade name "The Stanley Works" in 1843. It owns a number of registrations worldwide for the Mark Stanley and Stanley
   Designs used in connection with various products sold world wide namely, tools, hardware, doors and home decoration products. These trademarks have been used by complainant for many years in interstate and international commerce. Complainant operates a web site through the domain name "stanleyworks.com" for the promotion of its products and in providing information about the company.
3. Respondent, Phil McNeil has adopted the name McNeil and Associates for certain purposes. He is a former distributor for the Complainant in Canada and has filed suit against the Complainant for fraud. Complainant has filed suit against the Respondent

for defamation and breach of contract.. Respondent does not use the web sites to offer

goods or services for sale but uses them to publicly state his grievances against

the Complainant.

4. Respondent registered another domain name, not in issue here,(mactools.ab ca).

Complainant is the owner of the trade name "MACTOOLS" registered in design form with the U.S Patent and Trademark Office. Respondent sent an e-mail to the

Complainant, attached as Annex "E" to the Complaint. In this e-mail he stated "that

the only way of making me go away is to purchase this site from me." He further

stated that the next logical step for him was to expand internet names specific to

Stanley.

5. Based on the record the Panel finds as matters of fact: (a) that the domain names at

issue are comprised solely of trademarks in which Complainant has rights; (b) that

Respondent has no rights or legitimate interests in respect of the domain names;

© that the Respondent registered the domain names "STANLEYWORKS.NET" and

"THE STANLEYWORKS.NET" primarily for the purpose of disrupting the business

of the Complainant,(d) that the domain names in question are confusingly similar to

the trademarks of the Complainant.

CONCLUSIONS

The undersigned arbitrators certify that they have acted independently and have no known conflict of interest to serve on this arbitration panel. Thus, having been duly selected and being impartial make the following conclusions:

Based on the foregoing, we find that the Respondent has registered the domain names: "Stanleyworks.net" and "The Stanleyworks.net" in bad faith within the meaning of paragraph 4 of the policy and that Complaint is hereby granted the following relief:

DECISION

Based upon the above finding and conclusions and pursuant to Rule 4 (I) of the ICANN’S Rules to the ICANN’S Uniform Domain Resolution Policy it is decided as follows:

THE UNDERSIGNED DIRECT THE DOMAIN NAMES "STANLEYWORKS.NET’ AND "THE STANLEYWORKS.NET" REGISTERED TO PHIL MCNEIL UNDER MCNEIL AND ASSOCIATES BE TRANSFERRED TO THE COMPLAINANT THE STANLEY WORKS.

SIGNED: APRIL 17, 2000

________________________ ________________________ _____________________

Henry W. Blizzard, Chairman Hon. Paul Dorf Hon. Richard Rosenbloom

202 Wellington Road Two Hopkins Plaza 2400 Chase Square

Athens, AL 35613 Suite 600 Rochester, NY 14604

Baltimore, MD 21201