Bosco Products, Inc., Towaco, NJ,
Bosco E-Mail Service, Vancouver,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is “BOSCO.COM,” registered with Network Solutions, Inc. (“NSI”).
Hon. Herman D Michels, Neil A. Smith, Esq., Hon. James A. Carmody, Chairman
Complainant filed its Complaint with the National Arbitration Forum ("The Forum") on May 15, 2000.
On May 17, 2000, Network Solutions, Inc. (“NSI”) confirmed by e-mail to The Forum that the domain name “BOSCO.COM” is registered with NSI and that the Respondent Bosco E-mail Service (a d/b/a of Respondent Mailbank.com [Inc.]) is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On May 15, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 5, 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. Respondents timely filed their Response on June 2, 2000.
Although Complainant sought only a single arbitrator, Respondents properly demanded a panel of three arbitrators. The Forum appointed this panel in accordance with its Rules.
Having reviewed the Complaint, the Response and the Additional Written Documentation, which the Forum permitted the Complainant to submit, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under the Rules and that the case is ready to be decided. Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant. The Respondent seeks that the Panel not transfer the domain name and that it make a finding that Complainant is guilty of bad faith reverse domain name hijacking.
The Complainant contends that the Respondent has registered a domain name that is identical to its trademark “BOSCO” registered with the United States Patent and Trademark Office in 1987 and 1988. Further, the Complainant contends that the Respondents have no rights or legitimate interests to the domain name, and that the Respondents have registered and are using the domain name in bad faith.
Respondents concede that the domain name is identical to or confusingly similar to Complainant’s trademark, but they contend that they are not making a “trademark use” of BOSCO, that it is a common surname and that they have rights and legitimate interests in the BOSCO.COM domain which do not conflict or cause confusion with Complainants trademarked goods.
The Complainant is the owner of the trademark BOSCO, used since 1928 in connection with chocolate syrups and chocolate flavored milk and duly first registered with the U.S. Patent and Trademark Office on June 23, 1987. Along with the Complaint, the Complainant provided various exhibits, reminding the Panel of the history of the now famous BOSCO mark and the chocolate syrup it identifies.
The Respondents are in the “vanity e-mail” business and registered the domain name “BOSCO.COM” in 1996, along with numerous other domain names containing common surnames. The commercial operation of Respondent MailBank entails the leasing of individual use in a “shared domain email service,” such that its customers include John@bosco.com and Marianne@bosco.com, for example. Respondents argue that they have rights and legitimate interests in the domain name at issue, that they sell no goods or services even remotely related to those of Complainant and that the public could not possibly be confused as to the sponsorship or origin of their domain name use. Most importantly, they argue that they are not making a “trademark use” of the word “BOSCO.”
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs that the complainant must prove each of the following three elements to support a claim that a domain name should be cancelled 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;
(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
It is not disputed that the Respondents’ domain name is identical to the Complainant’s registered, long used and famous trademark. However, the Panel agrees with the Respondents that the use made by their “vanity email service” is not a trademark use of the word BOSCO.
Rights or Legitimate Interests
The Respondents have established that they have rights and legitimate interests in the BOSCO.COM domain name and that they took the trouble to register that domain in 1996. Without determining if the passage of considerable time would alone bar Complainant from relief in this proceeding, the Panel notes that Complainant does not explain why it has waited nearly four years to try and resolve the problem which it now perceives as to the use of BOSCO.COM by someone else.
The Complainant does not offer proof that Respondents engaged in any actions in bad faith.
The facts in this proceeding are similar to a case involving Respondent Mailbank styled Avery Dennison v. Sumpton, 189 F.3d 868, 1999 U.S. App. LEXIS 199954 (9th Cir. 1999). The Panel does not find the distinctions suggested by Complainant persuasive, nor is the fact that BOSCO is a famous trademark as opposed to the marks at issue in Avery Dennison. The Ninth Circuit Court in the Avery case made it clear that: “Appellants [Respondents in this proceeding] do not use trademarks qua trademarks as required by the case law to establish commercial use. Rather, Appellants use words that happen to be trademarks for their non-trademark value.” This is equally clear here.
Finally, the Panel makes no finding of bad faith on the part of either party and declines to find that Complainant has engaged in reverse domain name hijacking. This request by Respondent is beyond the mandate of the Panel.
The Complainant having failed to prove all three elements required by the ICANN Policy Rule 4(a), it is the unanimous decision of the Panel that the requested relief be denied and registration of the domain name “BOSCO.COM” will not be disturbed.
Dated: June 29, 2000 Honorable James A. Carmody, Arbitrator