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Robert C. Evans v. Marinex Multimedia Corporation [2000] GENDND 242 (27 April 2000)


National Arbitration Forum

P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com


Robert C. Evans

COMPLAINANT,

Vs.

Marinex Multimedia Corporation

RESPONDENT.

DECISION
Forum File No.: FA0003000094347

The above entitled matter came on for an administrative hearing on April 27, 2000 before the undersigned on the Complaint of Robert C. Evans, hereafter "Complainant", against Marinex Multimedia Corporation, hereafter "Respondent". Complainant was represented by: Robert C. Evans, 247 Bayshore Dr., Henderson, TN, 37075. There was no representation on behalf of Respondent: Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name: donutman.com

Domain Name Registrar: Network Solutions Inc.

Domain Name Registrant: Marinex Multimedia Corporation (Donutman-Dom)

Date of Domain Name Registration: May 15, 1996; updated March 6, 1998; placed on "Hold" May 15, 1998

Date of Complaint Filed: March 21, 2000

Date of Commencement of the Administrative Proceeding in Accordance with Rule 2(a) and Rule 4(c): March 27, 2000

Due Date for a Response: April 17, 2000. Respondent did not submit a Response to the Complainant.

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 27, 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 Networks Solutions Inc., the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent did not submit a response to The Forum within twenty (20) days pursuant to Rule 5(a).

On May 15, 1996 (updated March 6, 1998), Respondent registered the domain name "donutman.com" with Network Solutions, the entity that is the Registrar of the domain name. On March 28, 2000, Network Solutions verified that Respondent is the Registrant for the domain name "donutman.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. Complainant has been conducting commerce using the name "The Donut Man" since 3-0-1982, acknowledged as the date First Use under trademark Registration No. 1,674,863, registered with the United States Patent and Trademark Office on February 11, 1992 to Complainant Robert C. Evans.
  2. Complainant as "The Donut Man" has produced thirty pieces of audio and video product, of which, 8 videos are RIAA registered Gold-status, and two are Platinum-status. Approximately 4 million tapes, videos, and CD's have been sold under the name "The Donut Man" since 1982 by Complainant.
  3. Respondent since registration of the domain name at issue has not established any business or commercial entity.
  4. The domain name is nearly identical to Complainant's registered trademark name. The only distinction is the exclusion of the first word in the domain name, "The", which in E-commerce is of no significance since the word "the" in a business name is usually discarded in the presentation of a business domain name.
  5. The use of such nearly identical names is confusing in the mind of customers and public, and disruptive to a viable business entity with an established identity in the marketplace.
  6. Complainant's prayer for relief requests that the domain name "donutman.com" be transferred from Respondent Marinex Multimedia Corporation to Complainant Robert C. Evans.
  7. No other legal proceedings have been commenced or terminated in connection with or relative to this domain name dispute.

CONCLUSIONS

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 conclusions:

  1. The domain name "donutman.com" registered by Respondent is nearly identical and is in fact confusingly similar to Complainant's registered trademark name "The Donut Man".
  2. Complainant has legitimately used the name "donut man" in business since 1982. Respondent has no legitimate right or interest in the domain name "donutman.com".
  3. The domain name has been registered and is being used in bad faith and to the detriment of Complainant.

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 donutman.com REGISTERED BY RESPONDENT Marinex Multimedia Corporation be TRANSFERRED TO COMPLAINANT Robert C. Evans.

Dated April 27, 2000 by _____________________________________

Judge Harold Kalina (Ret.)

Arbitrator

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