THE SNACK FACTORY INC.
COMPLAINANT,
VS.
Neologist, Inc.
RESPONDENT.
DOMAIN NAME DISPUTE DECISION
Forum File No.: FA 94660
___________________________________________
The above entitled matter came on for an administrative hearing on
May 25, 2000 before the undersigned on the Complaint
of the above named
Complainant, against Neologist, Inc. hereafter "Respondent". Complainant
is represented
by Allan M. Lowe, of Lowe, Hauptman, Gopstein Gilman
& Berner, 1700 Diagonal Road, Suite 310, Alexandra, VA 22314.
The
Respondent was represented by Barry Heslop, Law Offices of Barry C.
Heslop, 1111 Heights Boulevard, Houston,
Texas 77008. Upon the written
submitted record, the following DECISION is made:
PROCEDURAL FINDINGS Domain Name: snackfactory.com
Domain Name Registrar: Register.com, Inc.
Domain Name Registrant: Neologist, Inc.
Date of Domain Name Registration: December 6, 1999
Date Complaint Filed: April 25, 2000
Date of Commencement of Administrative Proceeding in Accordance with
Rule 2(a)l and Rule 4(c): April 26, 2000
Due Date for a Response: May 16, 2000
Relief Requested by Complainant: Transfer of the Domain Name to Complainant.
Hearing Held on: May 25, 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 April 26, 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
above Registrar, Register.com, the Internet Corporation for Assigned
Names and Numbers (ICANN), and the Complainant
that the administrative
proceeding had commenced. Complainant submitted additional written statements
and documents
by mail and e-mail dated May 20, 2000. On December 6,
1999, Respondent registered the domain name "snackfactory.com" with
Register.com, the entity that is the Registrar of the domain name. By
registering its domain name with Register.com,
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.
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 conclusions:
FINDINGS OF FACT
- The Complainant, The Snack Factory, Inc., owns United States Trademark
Registration No. 2,081,866 for the mark THE SNACK
FACTORY covering
snack foods, and currently uses its SNACK FACTORY trademark in connection
with its food-related
business. Many of the Complainant's customers
and suppliers refer to the complainant as "SNACK FACTORY." SNACK FACTORY's
federal trademark registration issued on July 22, 1997 and is currently
valid.
- On April 14, 1997 SNACK FACTORY's agent "EVS Istore: notified SNACK
FACTORY that it had registered "snackfactory.com"
as a domain name
for the benefit of SNACK FACTORY. The "snackfactory.com" domain name
lapsed. When Warren
Wilson, the president of SNACK FACTORY, realized
the "snackfactory.com" domain name had lapsed, he attempted to again
register it. He was advised that the "snackfactory.com" domain name
was unavailable because Respondent,
Neologist, Inc. had a registration
for it.
- The snackfactory.com web site was not being used; Neologist, Inc.
was attempting to sell the snackfactory.com domain
name.
- On February 17, 2000, Warren Wilson, President of SNACK FACTORY
contacted Neologist, Inc. to request a quote for the
domain name "snackfactory.com."
Robyn Corley of Neologist, Inc. returned an e-mail communication and
quoted
$10,000 USD for the sale of the domain name snackfactory.com.
- SNACK FACTORY's federal trademark registration is for the mark THE
SNACK FACTORY. The domain name in dispute is "snackfactory.com".
The
addition of the generic domain name identifier ".com" and the deletion
of the term "THE" does not avoid
a likelihood of confusion.
- Respondent has refused to relinquish the domain name to Complainant
with the stated reason that it is different from
the trademark of
the Complainant and also because it is not a registered trademark
of any other company.
- Respondent is in the business of providing a service to individuals
or corporation in helping them create a web presence
by developing,
creating and registering domain names that are reflective of products
or services that individuals
or corporations desire to sell on the
internet.
- Respondent performs a search of the United States Patent and Trademark
database each time it creates and develops a domain
name and will
forego the registering of a name that is registered with the United
States Patent and Trademark
office.
- Respondent does not intend to use the domain name other than by
selling it to others or developing it for use by others
and the name
is available for purchase.
- The Respondent has no rights or legitimate interests in the domain
name, does not conduct business using the name, whereas
the Complainant
is commonly known essentially by the same name as the domain name
and routinely conducts
its business operations under that name.
- No evidence has been presented that Respondent has any right or
legitimate interest to the domain name as provided in
Rule 4(c).
- Complainants' prayer for relief requests that the domain name be
transferred to Complainant.
CONCLUSIONS
To obtain relief under paragraph 4(a)of the Policy, the Complainant must
prove each of the following:
- The domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in
which the Complainants
have rights; and
- The Respondent has no right or legitimate interest in the domain
name; and
- The domain name has been registered and used in bad faith.
Similarity Between Registrant's Domain Name and Complainants' Trade
or Service Mark. The domain name registered by Respondent is confusingly
similar to or identical to the trademark owned by Complainants.
The addition
of the generic domain name identifier ".com" and the deletion of the term
"THE" does not avoid a likelihood
of confusion.
Respondent's Rights
or Legitimate Interest in the Domain Name. Under paragraph 4(c) of
the Policy, evidence of a registrant's rights or legitimate interest in
the domain name
includes:
- Demonstrable preparations to use the domain name in connection
with a bona fide offering of goods or services prior
to the dispute;
- An indication that the registrant has been commonly known by the
domain name even if it has acquired no trademark rights;
or
- Legitimate noncommercial or fair use of the domain name without
intent to divert consumers or to tarnish the trademark.
Respondent has made no showing with respect to any of the above factors.
The Respondent has no rights or legitimate
interest in the domain name.
Holding a name for sale which is confusingly similar to or identical to
another's
trade or service mark is not a legitimate interest.
Respondent's
Bad Faith Registration and Use of the Domain Name. Under paragraph
4(b) of the Policy, evidence of Respondent's bad faith registration and
use includes:
- Circumstances indicating the domain names were registered for
the purpose of resale to the trade or service mark owner
or a competitor
for profit;
- A pattern of conduct showing an attempt to prevent others from
obtaining a domain names corresponding to their trademarks;
- Registration of the domain name for the purpose of disrupting
the business of a competitor; or
- Using the domain name to attract, for commercial gain, Internet
users to Respondent's web site or other on-line location
by creating
a likelihood of confusion with the trademark owner's mark.
The Respondent registered and used the domain name in bad faith as
evidenced by circumstances indicating that Respondent
registered and
acquired the domain name for the purpose of resale to the mark owner
or a competitor for valuable
consideration in excess of costs. Under
ICANN's Uniform Domain Name Dispute Resolution Policy Complainants have
proven that the domain name should be transferred to Complainants.
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 "snackfactory.com" REGISTERED BY RESPONDENT BE TRANSFERRED TO COMPLAINANT,
THE
SNACK FACTORY INC. Dated: May 25, 2000 Judge Karl
V. Fink, Retired Judge, Arbitrator
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