|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
DECISION
First Genetic Trust, Inc. v. DNA Sciences, Inc.
Claim Number: FA0009000095567
PARTIES
The Complainant is First Genetic Trust, Inc. , Chicago, IL, USA ("Complainant"). The Respondent is DNA Sciences, Inc., Mountain View, CA, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain names at issue are "firstgenetictrust.org", "firstgenetictrust.net", and "firstgenetictrust.com", registered with Bulkregister.
PANELIST(s)
The undersigned each certifies that each has acted independently and impartially and to the best of each’s knowledge, and each certifies that he has no known conflict in serving as a panelist in this proceeding.
R. Glen Ayers, James Carmody, and Irving Perluss have been selected as Panelists. R. Glen Ayers serves as Chairperson.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 8, 2000; The Forum received a hard copy of the Complaint on September 8, 2000.
On 9/18/00, Bulkregister confirmed by e-mail to The Forum that the domain names "firstgenetictrus.org", "firstgenetictrust.net", and "firstgenetictrust.com" are registered with Bulkregister and that the Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On September 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to
On October 19, 2000, pursuant to Complainant’s request to have the dispute decided by a Three Member panel, the Forum appointed R. Glen Ayers as Chairperson and James Carmody and Irving Perluss as the other two Panelists.
RELIEF SOUGHT
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant asserts that it holds a trademark, "First Genetic Trust" and that registration of that name as a domain name (actually, three domain names) by a competitor, Respondent, is prohibited under the ICANN Rules and Policies.
Complainant, in its original submission, says as follows:
After Respondent challenged Complainant's position, Complainant fielded a second submission stating that:
1. The United States Patent and Trademark Office would issue a registration subject a disclaimer as to the term "genetic".
2. It had used the name as Mark "First Genetic Trust" in connection with at least fifteen meetings and negotiations" with "potential partners." Apparently, all of these other uses were oral, according to Complainant's counsel's footnote 2 to "Complainant's Additional Written Statements...", dated October 13, 2000.
Complainant also alleges that the Respondent's registration and use is in "bad faith", designed to either block Complainant's use of the name or direct Complainant's customers to Respondent.
B. Respondent
Respondent denies that there is a mark and denies that the name "First Genetic Trust" is protected.
Respondent's counsel also denies that his client has acted in "bad faith." Respondent does admit that the domain names are used as "pointer" URL's which deliver Internet users to its own web page, the domain name of which is "dna.com."
FINDINGS
The panel is in complete agreement:
1. Complainant has failed to demonstrate that it has any interest to be protected.
2. Respondent acted in bad faith.
Complainant has failed to show the existance - - at the time of the Complaint - - of a trademark or service mark in which it has any protected rights. Complainant has not shown that it has engaged in any business related to genetics or that it has any business in which to engage. Complainant, and its name and alleged mark, are only a only a gleam in it's owner's eye. If it has engaged in any commerce at all, it has not been the business of genetics but the business of separating venture capitalists and others from start-up money.
While the Panel does not wish to promote the bad conduct, chicanery, bad business practices and so forth demonstrated by Respondent, Complainant has failed to even get to first base. Of course, if he could have made it to third base - - i.e., bad faith - - he would have won, for DNA Sciences, Inc.'s conduct in registration of a possible competitor's name for pointer URL's reflects, at best, a limited understanding of business ethics.
There is no evidence of the existance here of a trademark, by operation of common law, the name never having been used in commerce by Complainant and never having acquired a secondary meaning. See e.g., Mick Jagger v. Denny Hammerton ("mickjagger.com"), Case No. FA95261, (National Arbitation Forum September 11, 2000), decided by a Panel for which Panelist Ayers wrote the opinion. Complainant has requested that the United States Patent and Trademark Office register the alleged Mark on an "intent to use" basis. That registration alone is insufficient. See e.g., Grodberg v. Rugley Enterprises, LLC. ("phonespell.com"), Case No. FA92975, (National Arbitration Forum March 2, 2000), decided byPanelist Perluss. While the evidence is clear that Respondent behaved badly, rushing to preclude a rival's use of its own chosen name by registering the name as a domain name, such acts do not violate the ICANN Policies.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order 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.
Rights in the mark can sometimes be established by pending trademark applications. See SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, D2000 - 0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the Complainant's trade mark or service mark be registered by a government authority or agency for such rights to exist); Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-00400 (WIPO Mar. 23, 2000) (finding that the domain name was identical or confusingly similar to the complainant’s pending service mark application).
Common law rights also establish rights in the Mark. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name "Julia Roberts" has sufficient secondary association with the Complainant that common law trademark rights exist); Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000).
As Respondent has shown, Complainant does not have rights in the mark FIRST GENETIC TRUST. There is no "secondary meaning", and the Mark has never been used in commerce.. See Mpower Communications Corp. v. Park Lodge Hotel, D2000-0078 (WIPO Apr. 3, 2000) (finding that it is not clear what rights the Complainant has in its pending U.S. trade mark application, given the large number of other granted and pending applications).
Here, as noted above, the mere application on an "intent to use" basis, where the trademark has not otherwise been established at common law, is not sufficient.
Identical and/or Confusingly Similar
The Complainant has failed to show the existence of a trademark.
Given this finding, there is no reason to review the other two elements, "Rights or Legitimate Interests" and "Registration and Use in Bad Faith."
DECISION
The domain names shall not be transferred from Respondent to Complainant and the relief requested is denied.
R. Glen Ayers, Chairperson/Panelist
Irving Perluss
James Carmody
Dated: November 17, 2000
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2000/1446.html