 |
THE NATIONAL ARBITRATION FORUM
P.O. BOX 50191
MINNEAPOLIS, MINNESOTA 55405 USA
FANUC LTD
Oshino-Mura
Yamanashi Prefecture
401-0597 Japan
c/o Bernard T. Lourim, Esq.
3900 W. Hamlin Road
Rochester Hills, Michigan 48309
COMPLAINANT
vs.
MACHINE CONTROL SERVICES
Attn: Thomas Jaeger
1999 Theresa Lane
Moody, Texas 76557
RESPONDENT
DECISION
Forum File No.: FA#000200000093667
The above-entitled matter came on for an administrative hearing on March 13, 2000, before Paul A. Dorf, Arbitrator, on the Complaint of FANUC LTD, by Bernard T. Lourim, their attorney, hereafter "Complainant" against Machine Control Services, hereafter "Respondent." There was no representation on behalf of Respondent. Upon the written submitted record, the following DECISION is made:
PROCEDURAL FINDINGS
Domain Name: FANUC.COM
Domain Name Registrar: Network Solutions
Response Due Date: March 3, 2000
The Complainant filed its complaint with the National Arbitration Forum on February 7, 2000. In compliance with Rule 4(d) The Forum immediately notified the above Registrar, and and the Complainant on February 9, 2000, and the Complaint had commenced and the Respondent did not submit a response to The Forum within twenty (20) days pursuant to Rule 5(a), which would have been March 3, 2000.
The Respondent registered the domain name with Network Solutions, the entity that is the Registrar of the domain name. By registering its domain name Network Solutions, the Respondent agreed to resolve any dispute regarding its domain name through ICANN'S Uniform Domain Name Dispute Resolution Policy.
FINDINGS OF FACTS
The manner in which the domain name(s) are identical or confusing are set out herein below:
The domain name "FANUC.COM" is exactly identical to FANUC LTD's trademark "FANUC" with the addition of the obligatory .com.
1. Until the domain name was placed on hold by Network Solutions, Respondent has historically used the domain name to publish a site in which Respondent claims to sell used FANUC parts and robots. Even though Respondent has no affiliation with FANUC LTD or any related entity, Respondent's use of the domain name creates a likelihood of confusion for visitors to the site. Customers and potential customers visiting the site FANUC.COM expect to discover information about FANUC or a FANUC-related entity. When they see Respondent's site, they are confused as to the relationship between Respondent and FANUC, the source of the information and products obtained through Respondent's site, and the nature of FANUC LTD's trademark. Respondent has admitted that it receives contacts through this site that are clearly intended for FANUC LTD or a FANUC-related entity.
2. The respondent should be considered as having no rights or legitimate interest in the domain name as FANUC LTD owns the registered trademark in the name "FANUC". See Schedule of Evidence, Item 2. The Respondent does not own the registered trademark "FANUC" and has no permission from the registered trademark owner FANUC LTD to use the mark, to use the name, to sell its products, or in any way represent that it is affiliated with FANUC LTD. BY using this mark in the domain name, Respondent, among other things, violates FANUC LTD's trademark rights, deceives visitors to its site, and engages in unlawful trade practices.
3. The domain name should be considered as having been registered in bad faith as:
a. Circumstances Indicating Intent to Sell for Disproportionate Consideration (Policy 4(b)(i))
The Respondent has offered to sell the domain name for some unidentified amount in excess of $500,000, which far exceeds any documented out-of-pocket costs directly related to the domain name.
b. Intent to Attract Users by Creating a Likelihood of Confusion with the Complainant's Mark ( Policy 4(b)(iv))
The Respondent intentionally uses the domain name to attempt to attract Internet users to its web site for commercial gain through selling parts and service with the FANUC name. See Schedule of Evidence, Item 3. Through this activity, Respondent creates a likelihood of confusion with the Complainant's mark, including the source, sponsorship, affiliation, and endorsement of its web site and the location of the products and services offered on its web site.
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 findings and conclusions:
The undersigned has reviewed all the evidence presented in this case by both parties and has concluded to believe the facts and circumstances as set forth by the Complanant. For that reason, the undersigned decides that:
a. The domain name as registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
b. the Respondent has no rights or legitimate interests in respect of the domain name; and
c. the Respondent domain name has been registered and is being used in bad faith.
It is therefore just, right and proper that the domain name "FANUC.COM" be transferred to the 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 "FANUC.COM REGISTERED BY RESPONDENT, MACHINE CONTROL SERVICES, BE TRANSFERRED TO COMPLAINANT, FANUC LTD.
Dated: March 13, 2000, by Judge Paul A. Dorf, (ret.), Arbitrator
PAUL A. DORF, Arbitrator
Adelberg, Rudow, Dorf, Hendler & Sameth
600 Mercantile Bank & Trust Building
2 Hopkins Plaza
Baltimore, Maryland 21201
410-539-5195
800-966-5195
020/arbform/natarbfanuc.dec