Generic Top Level Domain Name (gTLD) Decisions

THE NATIONAL ARBITRATION FORUM
P. O. BOX 50191
MINNEAPOLIS, MINNESOTA 55405 USA

Marconi Commerce Systems, Inc. ("Marconi")
7300 W. Friendly Avenue
Greensboro, NC 27410-6232,

COMPLAINANT,

vs.

Mr. B. Evans ("Evans")
8635 W. Sahara
Las Vegas, NV 89117,

RESPONDENT.

DECISION

Forum File No.: FA0002000093560

The above entitled matter came on for an administrative hearing on February 4, 2000 before the undersigned on the Complaint of Marconi, hereafter "Complainant", against Mr. B. Evans, hereafter "Respondent". Complainant was represented by Steven Terranova, Esq., Coats & Bennet, 1106 Crescent Green, Suite 206, Gary, NC 27511. There was no attorney appearing on behalf of Respondent. Respondent appeared Pro Se by e-mail. Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name: Gilbarcoeclipse.com

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: Mr. B. Evans

Date of Domain Name Registration: November 17, 1999

Date Complaint Filed: January 31, 2000

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)[1] and Rule 4(c): February 4, 2000

Due date for a Response: February 28, 2000. Respondent did not submit a Response to the Complaint.

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 February 4, 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 Network Solutions, Inc. (Network Solutions), the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent submitted a response to The Forum within twenty (20) days pursuant to Rule 5(a).

On November 17, 1999, Respondent registered the domain name "Gilbarcoeclipse.com" with Network Solutions, the entity that is the Registrar of the domain name. On November 30, 2000, Network Solutions verified that Respondent is the Registrant for the domain name "Gilbarcoeclipse.com", and that further by registering its domain name with Network Solutions, 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.

FINDINGS OF FACT

1. That Complainant is the owner of trademarks, service marks, and trade names that include the terms "Gilbarco" and "Eclipse". Complainant also uses the mark "Gilbarco.com" as the domain name for its portal Web site. The word "Gilbarco" is used extensively at this portal Web site, which is a significant method of promoting Marconi.

2. That Complainant is the owner of at least 2 trademark registrations worldwide for Gilbarco and Eclipse.

3. That as early as October 1999, Complainant and its predecessor-in-interest adopted and began using Eclipse as a product name from the time it was rolled out in October 1999. Gilbarco and Eclipse have been used continuously and extensively in interstate and international commerce in connection with the advertising and sale in substantial part over the internet.

4. That Complainant has invested substantial sums of money in developing and marketing its products and service.

5. That Respondent registered the domain name "Gilbarcoeclipse.com" in bad faith and has no rights or legitimate interests in respect to said domain name. The following is evidence of Respondent's bad faith:

a. That Respondent registered the domain name on November 17, 1999, shortly after Complainant's adoption and rollout of Eclipse in November at Comdex in Respondents home town of Las Vegas, Nevada.

b. That Respondent has made no legitimate use of the domain name "Gilbarcoeclipse.com" and it seeks to profit from its registration of said domain name by trading upon the goodwill associated with the Respondent and its Eclipse product. Respondent's profit motive is evidenced by its offer to sell said domain name to Complainant.

6. Respondent made an offer of proof that Complainant's evidence was tainted and that Respondent's son's birth certificate would show a non-commercial use, but did not provide such proof required under forum rules.

7. Complainant's prayer for relief requests that the domain name "Gilbarcoeclipse.com" 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 makes the following findings and conclusions:

1. The domain name "Gilbarcoeclipse.com", registered by Respondent on November 17, 1999 with Network Solutions, is nearly identical and confusingly similar to trademarks in which Complainant has rights and to which Respondent has no right or legitimate interests.

2. Respondent registered and acquired the domain name "Gilbarcoeclipse.com" primarily for the purpose of selling or otherwise transferring the said domain name registration to the Complainant who is the owner of the trade mark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the domain name. Respondent registered the domain name in bad faith.

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 "Gilbarcoeclipse.com" REGISTERED BY RESPONDENT MR. B. EVANS BE TRANSFERRED TO COMPLAINANT MARCONI COMMERCE SYSTEMS, INC.

Dated: March 15, 2000, by John A. Bender, Arbitrator.

John Bender

Arbitrator