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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
American Dermatological Corporation v Here Miami Inc.,
Claim Number: FA0010000095763
PARTIES
Complainant is American Dermatological Corporation, Miami, FL, USA ("Complainant") represented by Clement Cheng. Respondent is Here Miami Inc., d/b/a/ Point Blank Interactive, Key Biscayne, FL, USA ("Respondent") represented by Michael Silva, Holland & Knight.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is dermatique.com, registered with Network Solutions.
PANELISTS
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Honorable Jason M. Berkman, Honorable John Upchurch and Honorable Carolyn Marks Johnson sit as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 4, 2000; The Forum also received a hard copy of the Complaint on October 4, 2000.
On October 9, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name dermatique.com is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.
On October 13, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") setting a deadline of November 2, 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 Respondentís registration as technical, administrative and billing contacts, and to postmaster@dermatique.com by e-mail.
On November 9, 2000, pursuant to Complainantís request to have the dispute decided by a Three Member panel, the Forum appointed Honorable Jason Berkman, Honorable John Upchurch and Honorable Carolyn Marks Johnson as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIESí CONTENTIONS
FINDINGS and DISCUSSION
To prevail under Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") a 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 to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) 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 to Trade or Service Mark in Which Complainant has Rights
It is undisputed that Complainant owns the mark Dermatique and holds federal Registration Number 1,612,534, dated September 11, 1990, which shows a first use in commerce by Complainant on December 12, 1984. Respondent concedes that the domain name at issue, dermatique.com is identical to Complainantís federally registered DERMATIQUE trademark. This Panel finds that Respondent has admitted that the domain name in question is identical to or confusingly similar to a mark owned by Complainant. ICANN Policy 4(a)(i).
Rights or Legitimate Interests
Documents show that William OíMalley of American Dermatological Corporation, a Florida Corporation, and Ed Dziura on behalf of Point Blank Incorporated, A Florida Corporation, and Danny Yau of Prime International (H.K.) Co. Limited, signed a document bearing the printed date of October 2, 1997, which purported to contain the entire agreement of those individuals and for their respective companies, relative to domestic and international sales of the skin care product Dermatique that is manufactured by Complainant. The Panel makes no findings on the legitimacy of this document, its validity as a contract or its effect on the parties relative to the terms of that agreement as that issue is not before us, is not within our jurisdiction and, although relied on by Respondent as proof of a joint enterprise, does not include any terms related to creation of a website bearing Complainantís trademark, Dermatique. The expiration date in the alleged agreement was October 3, 1999, with a one-year renewal permitted.
Network Solutionsí report shows that on December 11, 1999, Kathy Dziura caused to be filed the domain name, dermatique.com with Network Solutions, inc., listing Here Miami, Inc. d/b/a Point Blank Interactive as the Registrant and with Kathy Dziura as the Administrative and Billing Contact. Respondentís documents suggest that Kathy Dziura was a stranger to the writings between these parties and no documents show any right in Kathy Dziura to register this domain name using Complainantís mark.
The evidence suggests that OíMalley and the Dziuras exchanged personal notes and that OíMalley promised remembrance of the Dziuras in prayer, but the record does not contain any evidence that OíMalley authorized Kathy Dziura to file the domain name using American Dermatologicalís mark and it contains no written papers showing any agreement to do so.
Apparently, the era of good feelings between OíMalley and the Dziuras eroded no later than October 1999 when the two disputed ownership of the website and domain name. Complainant insists that the only permission given to Ed Dziura was to create a "corporate website" and Complainant asserted that this was done as early as May 23, 1997 but the Network Solutionsí document shows that the dermatique.com file was created in December of 1999.
Complainant further concedes that Respondent had the right to sell the Dermatique product over the internet; but Complainant contends that Complainantís ownership in the Dermatique mark was not compromised by this right to sell the product; that Complainant always claimed exclusive right to the mark, and that Complainant did not enter into any agreement giving Respondent an interest in the mark. Complainant argues that Respondent cannot have acquired rights or a legitimate interest in the domain name dermatique.com because Respondent was fully aware that Complainant had always claimed exclusive rights in the DERMATIQUE trademark.
This Panel finds that Complainant did not give up its exclusive rights to the Dermatique trademark and that Respondent did not acquire rights or legitimate interest in the mark by permission to sell the Dermatique product over the Internet. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent does not have any rights or legitimate interests in the domain name "TWILIGHT-ZONE.NET" in light of the fact that Complainant had been exclusively using the mark TWILIGHT ZONE since 1959).
Complainant further denies either a contract between the two or the existence of a joint venture agreement; and, in the alternative, Complainant argues that if an agreement did exist, Respondent owed Complainant a fiduciary duty to disclose Respondentís purported ownership of the domain name rather than registering that domain name under Respondentís name. Respondent counters that its use of the domain name was in connection with a bona fide offering of goods or services and that Complainant and Respondent entered into a joint venture agreement whereby Respondent would promote and sell Complainantís products on the internet, thus giving Respondent a license to use the domain name dermatique.com. Respondent argues that this license, combined with Respondentís use of the domain name under the license agreement, conferred to Respondent rights and a legitimate interest with respect to the domain name dermatique.com. One case found rights and legitimate interests in a Respondent with a license agreement. See SFX Entertainment, Inc. v. Phillip Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the Respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services). But the facts in SFX Entertainment are distinguished by existence of two different entities in that case offering two different services under an SFX prefix (live entertainment and poster art) and each were determined to have a legitimate interest in the SFX prefix. That is not the case here. If Respondent had any rights at all to Dermatique, it was permission to sell the product over the internet for a temporary period of time. This is not a different use of a mark owned by both parties; this is a taking without apparent right of Complainantís mark and an attempt to obtain permanent hold over it as a domain name. Respondent has not established that any licensing agreement conferred rights to Complainantís registered mark to Respondent. This Panel finds that Respondent is not a licensee such as would transfer trademark rights. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where Respondent is not a licensee of Complainant).
We further find unpersuasive Respondentís argument that a joint venture gave Respondent rights or legitimate interest in Complainantís mark. Whether or not Complainant and Respondent had a joint venture is beyond the specific issue before this Panel and is outside the jurisdiction of this Panel. This Panel is charged with determining whether Respondent obtained a right or legitimate interest in the Complainantís registered mark such as would permit Respondent to retain a duly registered trademark in an identical domain name.
We are not permitted to assume that Respondent obtained permission to register a domain name for itself using Complainantís mark under the evidence offered in this case. Respondent produced no evidence to support such a finding. It is undisputed that Complainant manufactured the Dermatique skin care product long before Complainant had contact with Respondent. Respondentís claim of right and legitimate interest is not established. SPX Entertainment, Inc. v. Phillip Cushway. Showing a right to or a legitimate interest in a mark must require that one asserting such a right come forward with acceptable proof to counter a Complainantís allegations that no such transfer ever occurred. Otherwise, the federal system of registration of trademarks would be reduced to one unilaterally alterable by alleging mere suggestion of equitable interests.
Respondent concedes that Complainant owns the mark and therefore, this Panel finds that whatever use Respondent was permitted to make in filing the domain name, Respondent has not established a right or legitimate interest in the domain name such as would let Respondent keep the domain name once the business relationship between the parties has ended.
Even if we were to take as true all of Respondentís allegations relative to Complainantís having sought him out to create a website and file the domain name, such permission would have been on behalf of the owner of the mark, Complainantís Corporation, or on behalf of the joint venture, if any and would not have transferred any legitimate right or interest in Complainantís mark to Respondent and certainly not to Respondentís wife.
This Panel finds that Respondent had no right or legitimate interest in retaining a domain name based on Complainantís mark. ICANN Policy 4(a)(ii).
Registration and Use in Bad Faith
The third prong of Complainantís proof requirements is evidence to support Complainantís allegations that respondent filed and used the domain name in bad faith. Complainant alleges that Respondent offered to sell the domain name to Complainant for $750,000, an amount that exceeds any reasonable out of pocket expenses Respondent could have incurred filing the domain name and developing the dermatique.com web site. Complainant urges that the offer to sell the domain name for this amount indicates bad faith. Cases recognize that offering to sell a domain name for $125,000 is an amount in excess of the reasonable expenses of obtaining the domain name and constitutes bad faith. See Cream Pie Club v. Britany Halford, FA95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that bad faith existed where the Respondent offered the domain name for sale to the Complainant for $125,000).
Respondent does not deny the demand for $750,000 but urges that it did not register the domain name "primarily for the purpose of selling, renting or otherwise transferring the domain name to Complainant"; Respondent contends that it registered the domain name to promote Complainantís products. The $750,000 figure, Respondent maintains is an estimate of damages and not a price for which it was willing to sell the domain name. Cases have held that the offer to sell, standing along, does not constitute bad faith. See LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (finding that the offering (of the domain name for sale), without more, does not indicate circumstances suggesting that Respondent ëregistered the domain name primarily for the purpose of selling,Öí the domain name to the Complainant).
But even if this Panel takes as true Respondentís assertion that $750,000 is a damages demand for total losses under their agreement and for loss of use of the domain name, that still does not provide the panel with sufficient proof of the amount of the demand for transfer of the domain name. This Panel has no proof before it that will enable the Panel to determine what portion of the $750,000 was for purposes other than transfer of the domain name and on its face, $750,000 for this domain name is egregiously large. This Panel finds Respondentís demand to be some evidence of bad faith.Other indicia of bad faith are presented. Evidence shows that Respondent used Complainantís mark at the web site to promote products of Complainantís competitor and that when it appeared that Complainant and Respondentís relationship was ending, Respondent attempted to enter into a business relationship with the holder of the "Dermatique" mark in Scotland for sales in the United States. Respondent asserts that this conduct did not violate ICANN Policy 4(b)(iv). Respondent urges that it could not have attempted to attract customers from Complainantís site because Complainant had no web site of its own. Respondent cannot avoid the effect of ICANN Policy 4(b)(iii) that provides that use of a domain name to promote the products of a Complainantís competitor confuses Complainantís customers and constitutes bad faith. See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands). The ICANN Policy paragraph cited by Respondent does not require that Complainant have a web site from which Internet users are diverted. It requires that Respondent "attract internet users to its [Respondentís] web site or other on-line location by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation or endorsement of Respondentís web site or location or of a product or service on Respondentís web site or location." There is no requirement that the Internet users be diverted from Complainantís web site. Therefore, by using the domain name, Respondent did attempt to attract Internet users to its web site by utilizing Complainantís DERMATIQUE trademark. See Eddyís (Nottingham) Ltd., v. Smith, D2000-0789 (WIPO Sept. 7, 2000) (finding bad faith where the Respondent initially used the web site to promote Complainantís goods, but later changed the content of the web site, causing confusion with Complainantís mark).
For the above reasons, this Panel finds that Respondent registered and used the domain name in bad faith. ICANN Policy 4(a)(iii)
DECISION
Complainant having satisfied the burden required by ICANNís Rules and procedures, the Panel holds that Complainant is entitled to the requested relief. It is therefore ORDERED that the domain name dermatique.com be transferred from Respondent to Complainant.
Honorable Carolyn Marks Johnson, For the Panel
Honorable John Upchurch
Honorable Jason Berkman
Dated: November 22, 2000
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