Generic Top Level Domain Name (gTLD) Decisions

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

COMPLAINANT,

vs.

J.C. Candy Store

Owner - Night

Galaxy, LLC

RESPONDENT.

DECISION Domain Name Dispute
Forum File No. FA000300094379

______________________________________

The above-entitled matter came on regularly for an administrative hearing on May 2, 2000, before the undersigned, on the Complaint of Mars, Incorporated, hereinafter "Complainant," against J.C. Candy Store, Owner-Night Galaxy, LLC, hereinafter "Respondent."

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

PROCEDURAL FINDINGS

Domain Name: MILKYWAYMIDNIGHT.COM

Domain Name Registrar: Network Solutions

Domain Name Registrant: J.C. Candy Store, Owner-Night Galaxy, LLC

Date of Domain Name Registration: August 1, 1999

Date Complaint Filed: March 29, 2000

Date of Commencement of

Administrative Proceedings in

Accordance with Rule 2(a) and

Rule 4(c): April 6, 2000

Due Date for a Response: April 26, 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 name. 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 submit a timely Response to The Forum pursuant to Rule 5(a).

FINDINGS OF FACT

1. Since 1911, Complainant Mars, Incorporated and its predecessor-in interest has been and continues to be extensively engaged in the manufacture, distribution, advertising, promotion and sale of confectionary products, among other products, throughout the United States and internationally. One of Complainant’s many famous candy brands, MILKY WAY®, has been manufactured and sold by Complainant since 1922.

2. Over the years, Complainant has expended money and effort building and promoting its business, as well as goodwill in its trademarks, including its MILKY WAY® mark in the confectionary business. As a result, Mars’ MILKY WAY® trademark is famous in the United States and elsewhere. Mars is the owner of numerous U.S. trademark registrations for the trademark MILKY WAY®.

3. Complainant has expanded its MILKY WAY® line of candy bars by manufacturing and selling a dark chocolate product under the trademark MILKY WAY® DARK, and a low-fat product under the trademark MILKY WAY® LITE. In January 1999, Complainant added a new candy bar to its family of MILKY WAY® brand candy bars called MILKY WAY MIDNIGHT™ Bar. On June 15, 1999, Complainant filed an application with the United States Patent and Trademark Office for the registration of the trademark MILKY WAY MIDNIGHT™ Bar [Serial No. 75/729,497] which application is pending. The date of filing on Complainant’s receipt, however, was September 3, 1999. When Complainant sought to register the domain name for its new product, it was prevented from doing so because of Respondent’s registration of the domain name here in issue.

4. Respondent registered the domain name here in issue on August 1, 1999, after Complainant’s trademark application, but before a receipt was issued.

5. Respondent’s attorney, on November 19, 1999, filed articles of organization with the Maryland Corporate Charter Division, on behalf of Night Galaxy, LLC, for it to be a limited liability company for all purposes allowable under Maryland law.

6. Respondent’s assertion that it will utilize the domain name in issue for informational purposes only and not for profit is not believable in that it furnished no rational explanation or evidence with respect to the relationship that existed between the registrant "J.C. Candy Store" and the domain name in issue, and other confectionary domain names now or previously owned by Respondent.

7. Because it must be assumed, accordingly, that Respondent intends to utilize the domain name in issue in the confectionary business, it is identical and confusingly similar to Complainant’s marks. Moreover, it is evident that Respondent’s use of the domain name in issue in the confectionary business will divert and usurp Complainant’s customers.

8. Respondent’s bad faith is further evidenced by the fact that it registered the domain name in issue many years after Complainant’s adoption and first use of its numerous marks utilizing the name "Milky Way" relating to its confectionary business even though Respondent may not have known specifically of Complainant’s trademark application with respect to the manufacture and sale of the MILKY WAY MIDNIGHT™ Bar.

9. Complainant’s prayer for relief seeks that the domain name be transferred from Respondent to Complainant.

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 domain name registered with Network Solutions by Respondent on August 1, 1999, is substantially identical and confusingly similar to Complainant’s marks.

2. Respondent is not making a legitimate noncommercial or fair use of the domain name, for without satisfactory explanation it must be concluded that Respondent will seek commercial gain by misleadingly diverting Complainant’s customers.

3. Respondent has acted in violation of Complainant’s prior trademark rights of which it had or reasonably should have had knowledge.

4. In Interstellar Starship Services, Ltd. v. Epix, Inc. (CA 9^th, 1999) [1999] USCA9 357; 184 F.3d 1107, 1111, it was said:

However, ISS became aware of the ‘EPIX’ trademark when it applied for its own registration of ‘EPIX.’ Adopting a designation with knowledge of its trademark status permits a presumption of intent to deceive. See Brookfield, 174 F.3d at 1059 (citing Official Airline Guides, Inc. v. Goss, [1993] USCA9 3170; 6 F.3d 1385 (9^th Cir. 1993)). In turn, intent to deceive is strong evidence of a likelihood of confusion. Sleekcraft, 559 F.2d at 354. [Emphasis in original.]

Here, it is concluded that far beyond the presumptions, Respondent acted in bad faith and with the intent to deceive.

DECISION

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

IT IS DIRECTED THAT THE DOMAIN NAME "milkwaymidnight.com" REGISTERED BY RESPONDENT J.C. Candy Store, Owner-Night Galaxy, LLC, BE TRANSFERRED TO COMPLAINANT Mars, Incorporated.

Dated: May 3, 2000, by Judge Irving H. Perluss [Retired], Arbitrator.

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