The Snack Factory, Inc. v Neologist, Inc.

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