Generic Top Level Domain Name (gTLD) Decisions

P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com

GARDENS ALIVE, INC.

COMPLAINANT

vs.

HOME HARVEST GARDEN SUPPLY, INC.

RESPONDENT

DOMAIN NAME DISPUTE DECISION
File No: FA0003000094296

___________________________________________

The above entitled matter came on for an administrative hearing on April 25, 2000 before the undersigned on the Complaint of Gardens Alive, Inc., hereinafter "Complainant" against Home Harvest Garden Supply, Inc., hereinafter "Respondent". Complainant was represented by Candace Lynn Bell, Esquire, of Kavinoky & Cook, LLP, 120 Delaware Avenue, Buffalo, New York 14202. There was no representation on behalf of Respondent. Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

1. Complainant has been using the Mark "Gardens Alive!" (hereinafter "GARDENS ALIVE!" Mark) as a service mark since at least as early as December 19, 1998 in connection with the following services (hereinafter, Complainant's services):

mail order services in the field of agricultural, botanical, pet and animal care products, in International Class 42 (from the United States registration);

providing the above listed services on and in connection with an Internet Web site.

2. Complainant has common law rights in the "GARDENS ALIVE!" Mark as well as the additional rights acquired based on the service mark registration in the United States.

3. Complainant submittted a catalog and Web site pages as examples and as evidence of Complainant's use of the "GARDENS ALIVE!" Mark.

4. Complainant has used the "GARDENS ALIVE!" Mark continuously and extensively since at least as early as December 19, 1998 in the United States in connection with the advertising and offering for sale of Complainant's services.

5. Complainant has invested substantial sums of money in developing and marketing Complainant's services using the "GARDENS ALIVE!" Mark.

6. Complainant is the owner of a United States federal service mark registration (Registration No. 1,560,261) registered with the United States Patent and Trademark Office on the Principal Register and issued on October 10, 1989 for the Mark "GARDENS ALIVE!" for the services set forth above.

7. Complainant's United States Registration for the Mark "GARDENS ALIVE!" was filed on January 23, 1989.

8. Complainant's United States Registration for the Mark "GARDENS ALIVE!" states a date of first use of at least as early as December 19, 1988.

9. Complainant has also used the Mark "GARDENS ALIVE.COM" as the domain name for Complainant's Web site promoting, advertising and offering for sale Complainant's services.

10. Complainant registered the domain name "GARDENS-ALIVE.COM" on July 11, 1996 with Network Solutions, Inc.

11. Respondent registered the domain name "GARDENSALIVE.COM".

12. Respondent's domain name registration for "GARDENSALIVE.COM" is nearly identical to Complainant's "GARDENS ALIVE!" Mark except for the addition of the top-level domain name level designation, namely, ".com" and the subtraction of the "!".

13. Respondent's domain name registration for "GARDENSALIVE.COM" is confusingly similar to Complainant's United States registration for the Mark "GARDENS ALIVE!" because Respondent's domain name registration for "GARDENSALIVE.COM" is identical to the word portion of the Complainant's United States registration. The only difference is the lack of the punctuation mark "!".

14. For these reasons, Respondent's domain name registration for "GARDENSALIVE.COM" is both identical to and confusingly similar to Complainant's "GARDENS ALIVE!" Mark.

CONCLUSION

15. Respondent's registration of the domain name "GARDENSALIVE.COM", a domain name nearly identical to Complainant's "GARDENS ALIVE!" Mark, has caused confusion and continues to cause a likelihood of confusion with Complainant's "GARDENSALIVE!" Mark.

16. Respondent has therefore registered the domain name "GARDENSALIVE.COM" in bad faith because the registration, the use and the current inactivity created and are still creating a likelihood of confusion with Complainant's "GARDENS ALIVE!" Mark.

17. Complainant believes the "GARDENSALIVE.COM" domain name is identical and confusing with Complainant's "GARDENS ALIVE!" Mark, that Respondent has no rights or legitimate interest in the "GARDENSALIVE.COM" domain name and that the registration of the domain name "GARDENSALIVE.COM" was registered and used in bad faith. I agree.

IT IS HEREBY ORDERED that the domain name registration at issue, namely, "GARDENSALIVE.COM" is hereby transferred to the Complainant, "GARDENS ALIVE, INC."

BY: ____________________________________

Judge Richard B. Wickersham (Ret.)

DATED: April 25, 2000