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Steven E. Way d/b/a Cyberdyne Technologies [2000] GENDND 946 (22 August 2000)

National Arbitration Forum

DECISION

FORUM FILE NO: FA0007000095264

Mathis Bros. Furniture Co., Inc.

COMPLAINANT

vs.

Steven E. Way d/b/a Cyberdyne Technologies

RESPONDENT

The above-entitled matter came on for an administrative hearing on August 18, 2000 before the undersigned on the Complaint of Mathis Bros. Furniture Co., Inc., "Complainant", against Steven E. Way d/b/a Cyberdyne Technologies, "Respondent". There was representation on behalf of Complainant. There was no representation on behalf of Respondent. Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Names: "mathisbrothersfurniture.com" and "mathisbrothers-furniture.com"

Domain Name Registrar: Register.com, Inc.

Domain Name Registrant: Steven E. Way d/b/a Cyberdyne Technologies.

Date Complaint Filed: July 20, 2000.

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a) and Rule 4(c): July 26, 2000.

Due date for a Response: August 15, 2000. Respondent did submit a response to the Complaint.

Remedy Requested: Transfer of the domain names to 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 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 Register.com, Inc., the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced.

From the information submitted, it appears that the Respondent originally registered the domain names "mathisbrothersfurniture.com " and "mathisbrothers-furniture.com" with Register.com, Inc., on or about May 4, 2000. By such registration, the Respondent agreed to resolve any dispute regarding his domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

1. Complainant, Mathis Bros. Furniture Co., Inc., is the owner of the service marks MATHIS BROTHERS and MATHIS BROTHERS FURNITURE.
2. Complainant has been using this name for retail furniture stores throughout Oklahoma and the United States for over forty years.
3. Complainant spends substantial sums of money each year on newspaper and television advertising promoting its name and business.
4. On May 17, 1996, Complainant registered and has been operating a website at "mathisbrothers.com".
5. On October 22, 1999, Complainant applied for federal registration of its name MATHIS BROTHERS.
6. Respondent Steven Way does business as "Cyberdyne Technologies" and lives in Broken Bow, Oklahoma, which is a suburb of Tulsa.
7. Respondent registered the names "mathisbrothersfurniture.com" and "mathisbrothers-furniture.com" on May 4, 2000.
8. On May 11, 2000, Respondent sent an e-mail to Complainant advising that the Domain names "mathisbrothersfurniture.com" and "mathisbrothers-furniture.com" were "now on sale".
9. Following receipt of the e-mail, Complainant responded with "How much?"
10. Respondent replied by e-mail offering to sell the names according to one of two options. Under the first option, the "as is" plan, the price was $16,200. Under the second option, which would include cancellation of Respondent's "pending trademark application", the price would be negotiated.
11. When Complainant did not respond, Respondent then sent an e-mail to Complainant that he would put the names up for auction if not purchased by Complainant.
12. Subsequent to the auction notification, Respondent forwarded to Complainant an inquiry received from a customer who had mistakenly gone to the "mathisbrothersfurniture.com" website looking for a "blue and burgundy stripe or plaid chair and ottoman". In this forwarded e-mail, Respondent urged Mathis Brothers to buy the domain names explaining that they had "been getting e-mails from people searching on the Internet for you" and again stating that he would put the names up for auction.
13. On June 2, 2000, Complainant's attorney sent Respondent a letter demanded that the Domain Names be transferred. Respondent replied, declining to transfer the names and stating that the names would be auctioned if not purchased by Complainant.
14. The domain names in question are identical and/or confusingly similar to the Mathis Brothers service marks. The evidence indicates that potential customers of Complainant are already confusing the domain names with Complainant's business.
15. The Respondent has no legitimate interest in the Domain Names in question. He is not identified or known by said names; he owns no state or federal registrations or applications that include the name "Mathis"; nor, has Respondent made any legitimate commercial use of either name to sell goods or services.
16. Respondent registered the domain names in bad faith as evidenced by his solicitation to Complainant, one week after registration, to sell the names for an exorbitant price in excess of actual costs.
17. Respondent is apparently intent on offering the disputed domain names for sale at auction to the highest bidder if not purchased by Complainant.

DISCUSSION

On October 24, 1999, the Internet Corporation for Assigned Names and Numbers ("ICANN") adopted the Uniform Domain Name Dispute Resolution Policy which sets forth the elements that a complainant must prove to show that a respondent has registered and used a domain name in bad faith. Specifically, the complainant must prove each of the following:

1. Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain name;
3. Respondent has registered and is using the domain name in bad faith.

It is the opinion of the undersigned, that Complainant has met the burden of proof with respect to each of the above elements for the following reasons:

1 - The disputed domain names are identical or confusingly similar to Complainant's service mark in which the Complainant has rights.

2 - The Respondent has no right or legitimate interest in the disputed domain names. Specifically, the domain names have not used by the Respondent for a bone fide offering of goods or services nor has the Respondent been commonly known by such names.

3 - The Respondent has registered the names in bad faith. Section 4(b) of the ICANN Uniform Domain Name Dispute Policy provides that evidence of bad faith registration and use can consist of the following circumstances:

1. circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
2. the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
3. the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4. by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's web site or location or of a product of service on the respondents web site or location.

The circumstances of this case indicate that the Respondent registered the disputed domain names primarily for the purpose of selling, renting or otherwise transferring the registrations to Mathis Bros. Furniture for valuable consideration in excess of the costs directly related toe the disputed domain names.

CONCLUSION

The undersigned certifies that he has acted independently and has no know 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:

1. The domain names "mathisbrothersfurniture.com" and "mathisbrothers-furniture.com" are identical and/or confusingly similar to Complainant's service mark.
2. Respondent has no right or legitimate interests in said names.
3. Respondent registered, acquired and uses the disputed domain names in bad faith primarily for the purpose of selling, renting or otherwise transferring the registrations to Mathis Bros. Furniture Co., Inc., for valuable consideration in excess of costs directly related to the disputed domain names.

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 names "mathisbrothersfurniture.com" and "mathisbrothers-furniture.com" registered by Respondent Steven E. Way d/b/a Cyberdyne Technologies be transferred to the Complainant Mathis Bros. Furniture Co., Inc.

Dated: August 22, 2000, by Judge Daniel B. Banks, Jr., Arbitrator.