Generic Top Level Domain Name (gTLD) Decisions

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

Multimedia Educational Televison, Inc.

Domain Name Dispute

COMPLAINANT,

vs.

Hall Pass Apparel, Inc.

RESPONDENT.

DECISION
Forum File No. FA000300094334
______________________________________

The above-entitled matter came on regularly for an administrative hearing on April 20, 2000, before the undersigned, on the Complaint of Multimedia Educational Television, Inc., hereinafter Complainant, against Hall Pass Apparel, Inc., hereinafter Respondent.

Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name:HALLPASS.COM

Domain Name Registrar:Network Solutions

Domain Name Registrant:Hall Pass Apparel, Inc.

Date of Domain Name Registration:October 11, 1996

Date Complaint Filed:March 20, 2000

Date of Commencement of

Administrative Proceedings in

Accordance with Rule 2(a) and

Rule 4(c):March 22, 2000

Due Date for a Response:April 12, 2000

After reviewing the Complaint for administrative compliance, The National Arbitration Forum, hereinafter The Forum, transferred 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 the above Registrar, ICANN and the Complainant that the administrative proceeding had commenced.

Respondent had registered the domain name in issue with Network Solutions, the entity that is the Registrar of the domain names. By registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Uniform Domain Name Dispute Resolution Policy.

Respondent did not submit a timely response. On April 14, 2000, however, he did submit a Response which has been considered by the Arbitrator.

FINDINGS OF FACT

1.Complainant is the owner of the service mark HALL PASS, which was registered with the United States Patent and Trademarks Office on July 25, 1995, having been first issued in commerce in July 1994. It bears the registration number 1,907,936.

2.Complainant also is the owner of the trademark HALL PASS, which was registered with the United States Patent and Trademarks Office on January 16, 1996, having been first used in commerce in February 1995. It bears the registration number 1,949,268.

3.Complaint also is the owner of the trademark HALL PASS, which was registered with the United States Patent and Trademarks Office on June 23, 1996, having been first used in commerce in July 1994. It bears the registration number 1,951,607.

4.The service mark and the trademarks were assigned by the original registrant to Respondent on August 15, 1997.

5.Respondent has used the business name HALL PASS APPAREL since May 18, 1995, and he filed a fictitious business name statement, pursuant to California Business and Professions Code §§14400-14416, on June 28, 1995, prior to Complainant’s assignor’s registrations. He thus has a common law right to the name.

6.Although the service mark and trademark registrations by Complainant’s assignor were subsequent to the utilization by Respondent of the name in issue, the name, in fact, was used by Complainant’s assignor prior to Respondent’s utilization of the name, thus creating common law rights for Complainant.

7.Complainant, however, has presented no evidence which, by presumption or otherwise, establishes that Respondent has acted in bad faith. Respondent, in fact, asserts, and the Arbitrator finds, that Respondent had no knowledge of Complainant and its activities in Florida or elsewhere. The Complaint is not factual, but is conclusionary in nature.

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 has concluded based on the law, the rules and the findings of fact above set forth, as follows:

1.The Arbitrator cannot apply the presumption of bad faith on the part of Respondent set forth in Interstellar Starship Services, Ltd. v. Epix, Inc. (CA 9^th 1999) [1999] USCA9 357; 184 F.3d 1107, 1111, because of Respondent’s lack of awareness of Complainant’s registrations, which, in fact, were subsequent to Respondent’s use of the name here in issue.

2.The Arbitrator cannot conclude that Respondent acted in bad faith under the criteria set forth in 15 U.S.C. 1125(d)(1)(B), the federal law relating to Cyberpiracy prevention.

3.The Arbitrator cannot conclude that there is any evidence of Respondent’s bad faith under §4(b) of the Rules.

DECISION

Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE CLAIM OF COMPLAINANT Multimedia Educational Television, Inc. AGAINST RESPONDENT Hall Pass Apparel, Inc. BE, AND THE SAME IS HEREBY DENIED.

Dated: April 26, 2000, by Judge Irving H. Perluss [Retired], Arbitrator.

IRVING H. PERLUSS