Generic Top Level Domain Name (gTLD) Decisions

Harcourt, Inc.
COMPLAINANT,

vs.

R & D Glassblowing
RESPONDENT.

DECISION
Claim Number: FA0006000095010

PARTIES

The Complainant is Harcourt, Inc., Orlando, FL, USA ("Complainant"). The Respondent is R & D Glassblowing, Central Point, OR, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The Domain Name at issue is "SCIGLASS.COM", registered with Network Solutions, Inc. (“NSI”).

PANELIST(s) Herman D. Michels as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/13/2000; The Forum received a hard copy of the Complaint on 06/12/2000. 

On 06/15/2000, NSI confirmed by e-mail to The Forum that the Domain Name “SCIGLASS.COM” is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 06/16/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/06/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.  Respondent has timely filed its response to the Complaint, and Complainant has submitted timely an additional statement in response thereto.

On July 7, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Herman D. Michels as Panelist.

RELIEF SOUGHT

Complainant requests that the Domain Name SCIGLASS.COM be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

            Complainant contends that Respondent’s Domain Name SCIGLASS.COM is identical or confusing similar to its trademark SCIGLASS; that Respondent does not have any rights or legitimate interest in respect of the infringing Domain Name SCIGLASS.COM, and that the infringing Domain Name SCIGLASS.COM was registered by Respondent in bad faith and is being used in bad faith.

            Complainant’s mark SCIGLASS Complainant through its predecessor SciVision General Partnership, registered the trademark SCIGLASS in the United States Patent and Trademark Office on October 7, 1997 under Registration No. 2,103,949.  The mark SCIGLASS is registered for computer software for use in the pharmaceutical and chemical industries and in research institutions for pharmaceutical and chemical product development and for educational purposes, namely for teaching about the nature, structure and characteristics of glass and predicting the properties of glass in International Class 9.  The mark SCIGLASS was filed with the United States Patent and Trademark Office on August 18, 1995 and first used in commerce at least as early as August 9, 1996.

            The mark SCIGLASS and its registration were assigned to Harcourt Brace & Company on September 4, 1998, and that assignment was recorded in the United States Patent and Trademark Office on May 18, 1999.  Harcourt Brace & Company’s name change to Complainant was duly recorded against this registration on July 30, 1999 and, therefore, Complainant is now the registered owner of the mark SCIGLASS.

            Complainant has the exclusive right to use the mark SCIGLASS. 

B. Respondent

            Respondents deny the allegations of the Complaint, and contend that it never had any intention of diverting customers of Complainant to its website and that it has no intention of interfering with a company selling a product that serves good purpose or that it ever contacted anyone trying to buy software.  Respondent further contends that inquiries to it have always been related to manufacture of glass products and related items and it does not sell software.  Finally, Respondent contends that it has used its Domain Name SCIGLASS.COM since its creation in connection with a bona fide offering of goods; that its company has been commoningly known by the abbreviation SCIGLASS long before the development of computers, and that it did not register SCIGLASS.COM in bad faith. 

FINDINGS

            On September 25, 1997, Respondent registered the Domain Name SCIGLASS.COM with NSI.  The Domain Name SCIGLASS.COM is identical or confusingly similar to Complainant’s mark SCIGLASS to which Complainant has exclusive rights.  Respondent’s use of Complainant’s mark SCIGLASS creates a likelihood of confusion and Complainant’s trademark users and customers are likely to be confused into believing that there is some affiliation, connection, sponsorship, approval or association between Respondent and Complainant when, in fact, no such affiliation or association exists.

            Complainant’s SCIGLASS product contains an extensive database of glass properties, providing a wealth of information for anyone involved in glass research and development, as well as those who simply want to know more information on available commercial glasses such as those furnished by Respondent and its predecessors have invested considerable sums of money and effort in establishing good will associated with its SCIGLASS mark and Complainant’s SCIGLASS software is directed to the same market, through the same channels of trade as Respondent’s related products and services.

Respondent has no rights or legitimate interests in the Domain Name SCIGLASS.COM due to the Domain Name, consisting primarily of Complainant’s trademark in which Respondent has no legitimate rights or interests.  Moreover, consumers seeking information concerning Complainant may easily key on SCIGLASS.COM looking for Complainant and would be surprised not to find Complainant’s site.

            The Domain Name SCIGLASS.COM should be considered as having been registered by Respondent in bad faith due to the fact that Respondent has intentionally attempted to attract internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website.  The unauthorized and continued used by Respondent in interstate commerce of a Domain Name incorporating Complainant’s mark SCIGLASS constitutes a use of a false designation of origin as well as a false description or representation that is likely to cause confusion, mistake or deception as to (a) the affiliation, connection or association between Complainant and Respondent and (b) the sponsorship or endorsement of Respondent’s website by Complainant.

            Respondent’s activities constitute an infringement of Complainant’s rights in its SCIGLASS mark and has caused and will continue to cause substantial and irreparable harm to Complainant and its business reputation and good will.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs that the complainant must prove each of the following three elements in order to demonstrate claims that a Domain Name should be canceled or transferred:

(1) the Domain Name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) the respondent has no rights or legitimate interests in respect of the Domain Name; and

(3) the Domain Name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

            The Domain Name SCIGLASS.COM registered by Respondent is identical or confusingly similar to the trademark SCIGLASS in which Complainant has rights.

Rights or Legitimate Interests

            Respondent has no rights or legitimate interests in respect to the Domain Name SCIGLASS.COM.

Bad Faith

            Respondent has registered and used the Domain Name SCIGLASS.COM in bad faith. 

DECISION

            Based upon the above findings and discussion and pursuant to Rule 4(1) of the Rules of the Uniform Domain Name Dispute Resolution Policy and The National Arbitration Forum Supplemental Rules of ICANN’s Uniform Domain Name Dispute Resolution Policy, I Herman D. Michels, the Arbitrator, Order that 1) the Domain Name SCIGLASS.COM registered by Respondent R&D Glassblowing be transferred forthwith to Complainant Harcourt, Inc., and 2) Respondent R&D Glassblowing cease and desist from any and all use of the Domain Name SCIGLASS.COM.

Herman D. Michels

Arbitrator
Dated: July 13, 2000