THE NATIONAL ARBITRATION FORUM
MINNEAPOLIS, MINNESOTA
(see amendment attached)
_______________________________________________
INDIANA MULCH AND STONE, L.L.C.
COMPLAINANT
VS
KEITH'S FARM MARKET
RESPONDENT
DECISION
Forum File FA0002000093676
_______________________________________________
This is a DOMAIN NAME dispute between the parties (hereafter Indiana
Mulch and Keith's Farm) and will be decided on the record
provided by
Complainant, Indiana Mulch, represented by Spiro Bereveskos and Charles
J. Meyer, Woodard Emhardt Naughton
Moriarity & McNett, Indianapolis,
IN; Keith's Farm filed a response which was not filed timely and will
not
be considered here. Keith's Farm Market is not represented by counsel.
ISSUE
The Domain Names at issue, registered with Network Solutions, Inc., which
are the subject of this Complaint, are as follows:
Indianamulch.com and
Indymulch.com. These names were registered June 3, 1999 by Keith's Farm
Market. Complainant
desires to have these domain names transferred to
it.
SUMMARY OF EVIDENCE
Indiana Mulch manufactures and sells mulch and related products in Indiana
and throughout the Midwest. They have been using
the names Indiana Mulch
and Stone and Indiana Mulch; it is sometimes referred to as Indy Mulch.
They believe they
have developed a common law trademark and trade name
recognition for these names as they have been using them for thirteen
or more years.
Keith's Farm is a competitor of Indiana Mulch and manufactures and sells
related products. At one time Keith's Farm contacted
Indiana Mulch with
an offer to supply materials to Indiana Mulch, but Indiana Mulch declined
the offer.
According to Complainant's Ex. C, Keith's Farm has registered various
domain names, including those listed at Complainant's
Ex. C. Complainant
reports that these names are those of Respondent's competitors. Keith's
Farm Market offered
to sell both domain names at issue to Indiana Mulch
& Stone for $50,000.
Complainant believes that when visitors to the Indianamulch.com and/or
Indymulch.com web sites get information on mulch products,
they believe
there is a relationship between the company Indiana Mulch & Stone
and Keith's Farm Market when
there is none.
Complainant states that Keith's Farm, prior to registering these domain
names, had never referred to itself as either; moreover,
Keith's Farm
had actual knowledge of the existence of Complainant and its trade name.
Complainant believes that
Keith's Farm has registered the domain names
in order to prevent Indiana Mulch and Stone from using them and is engaging
in a pattern of registering names of its various competitors for the purpose
of disrupting the business of these
competitors. Complainant also alleges
that Keith's Farm has intentionally attempted to attract Internet users
to
these two web sites and believes that much confusion has been created.
Respondent's filing date was March 4, 2000; the only documentation submitted
was a statement from a Tim LeGrand dated March
6, 2000, which makes it
untimely.
DISCUSSION
No one would deny that "mulch" is a generic or common dictionary word,
but mulch is not at issue here; Indiana and Indy are
also not at issue.
What is at issue are the domain names Indianamulch.com and Indymulch.com.
Complainant, Indiana Mulch, states they have established a reputation
for quality and service over a thirteen year period
and that this website
of Indianamulch.com directs business to the Respondent which is confusing
to potential customers
relying on the established reputation of the Indiana
Mulch Company.
Certainly the registered domain names are confusingly similar to Indiana
Mulch's trademarks and trade names. There is no
question that this disrupts
its business and/or suggests a relationship to Indiana Mulch.
The question here centers on "bad faith". That Keith's Farm offered
to sell the domain names to Indiana Mulch may not in
itself constitute
bad faith, but when the record shows that Keith's Farm Market also registered
the trade names
of his other local competitors it indicates a pattern
of bad faith..
FINDINGS OF FACT
1. Complainant does business under the name of Indiana Mulch
and Stone and/or
Indiana Mulch and is sometimes referred to as Indy Mulch. One of their
several products is to provide mulch.
2. They have been in business in the Indianapolis, Indiana area
for over thirteen years and have established a reputation
for quality
and service.
3. Keith's Farm Market is also located in the Indianapolis, Indiana
area and likewise
supplies mulch to customers. Complainant and Respondent
are competitors.
4. Keith's Farm Market has registered many domain names including
Indianamulch.com and Indymulch.com as well as the trade
names of his other
competitors in the Indianapolis area.
5. Keith's Farm Market has registered these many names and specifically
Indianamulch.com and Indymulch.com in order to divert
business to itself,
to attract Internet users to its web site by creating the likelihood of
confusion which constitutes
bad faith.
DECISION
(see amendment attached) It is the decision of the undersigned that the disputed Domain Names,
to wit: Indianamulch.com and Indy.com, shall be transferred
to the Complainant,
Indiana Mulch & Stone.
This is the 15th day of March, 2000.
Marilyn W. Carney, Arbitrator
I certify that I have no known conflict of interest to serve as Arbitrator
in this case.
Marilyn W. Carney
Senior U. S. Judge, Retired
THE NATIONAL ARBITRATION FORUM
MINNEAPOLIS, MINNESOTA
AMENDMENT TO DECISION
Forum File FA0002000093676
INDIANA MULCH AND STONE L.L.C.
COMPLAINANT
VS
KEITH'S FARM MARKET
RESPONDENT
This is an Amendment to the Domain Name Decision between the parties.
The Decisional paragraph on the last page of the decision
inadvertently
omitted part of one of the disputed Domain Names. It should read as follows:
DECISION
It is the decision of the undersigned that the disputed Domain Names,
to wit: Indianamulch.com and Indymulch.com shall be
transferred to the
Complainant, Indiana Mulch & Stone.
Marilyn W. Carney
Arbitrator
March 25, 2000
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