ELIGIBILITY REQUIREMENTS DISPUTE
RESOLUTION POLICY
DECISION
C.R. Bard,
Inc. v. John Campbell d/b/a Bard's Products, Inc.
Claim Number: FA0412000386031
PARTIES
Complainant
is C.R. Bard, Inc. (“Complainant”), represented by Roberta S.Bren,
730 Central Ave., Murray Hill, NJ 07974.
Respondent is John Campbell d/b/a Bard’s Products, Inc.
(“Respondent”), 1427 Armour Blvd, Mundelein, IL 60060.
REGISTRAR AND
DISPUTED REGISTERED NAME
The
Registered Name at issue is <bards.name>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that she has acted independently and impartially that and
to the best of her knowledge, she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically December 21, 2004; the Forum received a hard copy of the
Complaint December 21, 2004.
On
December 21, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the Registered Name <bards.name> is registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the Registered
Name. Go Daddy Software, Inc. verified
that Respondent is bound by the Go Daddy Software, Inc. registration agreement
and thereby has agreed to resolve registered name disputes brought by third
parties in accordance with the Eligibility Requirements Dispute Resolution
Policy (“ERDRP”).
On
December 29, 2004 a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 18, 2005, by which Respondent could file a Response to the
Complaint, was transmitted to Respondent in compliance with 2(a) of the Rules
of Procedure for the Eligibility Requirements Dispute Resolution Policy (the
“ERDRP Rules”)
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
Having
reviewed the communications, the Administrative Panel (“the Panel”) finds that
the Forum discharged its responsibilities under Paragraph 2(a) of the ERDRP
Rules. Therefore, the Panel may issue
its decision based on the documents submitted and in accordance with the ERDRP,
ERDRP Rules, the Forum’s ERDRP Supplemental Rules and any rules and principles
of law that the panel deems applicable, without the benefit of any Response
from Respondent.
On
January 24, 2005, pursuant to ERDRP Rule 6(b), the Forum appointed Hon. Carolyn
Marks Johnson as the single Panelist.
Complainant
requests that the Registered Name be cancelled pursuant to Policy ¶ 5(f)(i)(A).
A. Complainant
Complainant
asserts that its legal name is C.R. Bard Inc.
Complainant
contends that Respondent registered <bards.name> in violation of
the Eligibility Requirements for the following reasons:
1.
Respondent’s
legal name is John Campbell and does not include the word “bards.”
2.
Respondent
does not own trademark or service mark rights to the name of a fictional
character, as provided for by Policy ¶ 4(b)(ii) of the Policy. Respondent owns trademark registration
rights for the BARD’S mark for goods including padlocks, bells and electric
light bases. However, none of the
products are related to a fictional character.
3.
Respondent,
as an individual, is not commonly known as “Bards.”
B. Respondent
No
Response was received.
Complainant
instituted this action as C.R. Bard, Inc. pursuant to Policy ¶ 4(b) of the
ERDRP.
Respondent
registered the disputed Registered name <bards.name> on November
25, 2004. Respondent has not presented
any evidence to show that its legal name includes Bards.
Complainant
has provided print outs of Respondent’s website and copies of Respondent’s
registered BARDS mark with the United States Patent and Trademarks Office. The mark was registered by Respondent in
1982, and expired in 2002. However, the
registration also reflects that the current status of the mark as “renewed.”
Paragraph
15(a) of the ERDRP Rules instructs this Panel to “decide a Complaint on the
basis of the statements and documents submitted in accordance with the Policy,
these Rules and any rules and principles of law that it deems applicable.”
In
view of Respondent’s failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant’s undisputed
representations pursuant to paragraphs 5(e), 14(a), and 15(a) of the ERDRP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the ERDRP Rules.
Paragraph
4(b) of the ERDRP requires Complainant to prove each of the following elements
in order to establish that the Registered Name was registered in violation of
the Eligibility Requirements and obtain an order that a Registered Name should
be cancelled:
(1) the name corresponding to the Registered
Name is not the legal name of Respondent; and
(2) the name corresponding to the Registered
Name is not the name of a fictional character in which the Respondent has
trademark or service mark rights; and
(3) the Respondent has not been commonly
known by the name corresponding with the Registered Name.
If
the above elements are shown, and the Complainant requests that the Registered
Name be cancelled, paragraph 5(f)(i)(B) of the ERDRP requires the Complainant
to establish that it meets the Eligibility Requirements correspondent to the
Registered Name. In order to meet the
Eligibility Requirements Complainant must provide evidence of one or more of
the following:
(1) the name corresponding to the Registered
Name is the legal name of Complainant; or
(2) the name corresponding to the Registered
Name is the name of a fictional character in which the Complainant has
trademark or service mark rights; or
(3) the Complainant has been commonly known
by the name corresponding to the Registered Name.
It
is assumed that Respondent’s legal name is John Campbell. No evidence indicates otherwise. Therefore, Respondent’s registration of <bards.name>
does not meet this Eligibiilty Requirement, and ERDRP Policy ¶ 4(b)(i) has
been satisfied.
Name of Fictional Character
There
is evidence indicating that Respondent owns trademark and service mark rights
for the BARDS mark. However,
Respondent’s rights in the BARDS mark does not represent or correspond to a
name of a fictitious character.
Therefore, Respondent does not meet this Eligibility Requirement, and
ERDRP Policy ¶ 4(b)(i) has been satisfied.
Commonly Known As
Respondent
is known to this Panel only as “John Campbell” doing business under the name
“Bard’s Products, Inc.” There is no evidence in the record, nor has Respondent
come forward to establish that as an “individual” he is commonly known as “Bards.” Therefore, Respondent does not meet this
Eligibility Requirement in relation to the <bards.name> domain
name and ERDRP Policy ¶ 4(b)(iii) has been satisfied.
The
Panel finds that Respondent has not met any of the above Eligibility
Requirements, and because Complainant asks only that the Registered Name be
cancelled pursuant to Policy ¶ 5(f)(i)(A), a determination of Complainant’s
eligibility is not required and the Registered Name may be cancelled.
In
accordance with the ERDRP Rules, the relief sought by the Complaint is hereby GRANTED.
The
Panel now orders that the registration for the Registered Name, <bards.name>,
be CANCELLED.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 7, 2005
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page.