Mule Lighting, Inc. v CPA

Forum File No.: FA0009000095558

The Complainant is Mule Lighting, Inc., Providence, RI, USA ("Complainant"). The Respondent is CPA aka Don Smith, Tumwater, WA, USA ("Respondent").

The domain name at issue is "batteryplanet.com" registered with Network Solutions.

The undersigned certifies that he has acted independent and impartially and, to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 6, 2000; The Forum received a hard copy of the Complaint on September 5, 2000.

On September 11, 2000, Network Solutions confirmed by e-mail to The Forum that domain names "batteryplanet.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On October 13, 2000, pursuant to the Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Howard C. Buschman III as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

Complainant’s Complaint and Respondent’s Response.

The facts are simple. Complainant sells batteries under the name Planet Battery. It registered that trade name with the United States Patent and Trademark Office on April 11, 2000, asserting a first use in commerce in November 1997. The registration states that the service mark is for retail store and on-line retailing services for batteries, products that use batteries and battery related products in class 35. Complainant has its own web site under the domain name planetbattery.com.

Respondent registered the domain name batteryplanet.com on February 5, 1999 and operates a web site under that name which lists various companies, including Complainant, that sell batteries. The directory is a pay per click directory providing passwords for access to each company named. The listed companies may bid to be placed higher in the directory.

Section 4(a) of the ICANN Uniform Domain Name Dispute Policy (the "Rules") requires the Complainant to prove each of the following three elements in order to sustain a claim that a domain name should be cancelled or transferred:

Section 4(b) provides:

The Complainant bears the burden of proof on these issues.

Under the rules, the dispute is resolved as follows:

Here, Complainant has not sustained its burden of proof that the domain name is confusingly similar with its service mark. First, the names are not identical. Thus, a customer typing in Complainant’s name on the web would not be diverted to Respondent’s web site. Second, Complainant’s argument that there is confusion since the two are in the same line of business does not accord with the facts that Complainant sells batteries and Respondent lists sellers of batteries, including Complainant. Retail sales differs from a directory and the appearance of Complainant’s name in the directory belies confusion. Complainant’s over two year delay in commencing this action argues against confusion.

I thus find that the first element of Section 4(a) is not satisfied.

As to the second element of Section 4(a), Respondent’s registration of the domain names could be said to afford it rights in the name. But it appears that the second element requires more than just registration. If the second element were to be deemed satisfied by mere registration, a complainant could never show that a respondent had no rights or legitimate interests in the domain name for all are registered. More, therefore, must be required. A "right" bespeaks of a legal entitlement such as a mark. An "interest" is something less. It could be found in good faith use of a name or generic term as a link to another web site truly offering goods and services, significant promotional expenses with respect to a name or generic term or an established use of the name term prior to registration.

Here, the Respondent has an active web site under the domain name which has been built up over two years. It has an interest in the domain name.

Thus, I turn to the third element of Section 4(a), bad faith registration and use.

Here, none of the indicia of bad faith is present. This is not a cybersquatter case, nor does it involve competitors. Complainant attempts to assert the elements of Section 4(b)(iv) by arguing that, by including Planet Battery in its directory, Respondent has created a strong likelihood of confusion with Complainant’s mark as to the source, sponsorship and endorsement of Respondent’s web site. This argument, however, is make-weight. Respondent’s listing of many battery suppliers squarely rebuts any such notion. .Further, there is no indication of intent required by Rule 4(b)(iv).

The Complaint be, and the same hereby is, dismissed.

Howard C. Buschman III

Dated: October 17, 2000