Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Philip R. Loria, Metairie, LA, USA ("Complainant"). The Respondent is Everett Mays, Austin, TX, USA ("Respondent").

The domain names at issue are "laserminipeel.com" and "laserminipeel.org", registered with Network Solutions.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Louis E. Condon, Ralph Yachin, James A. Carmody as Panelists.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 18, 2000; The Forum received a hard copy of the Complaint on October 18, 2000.

On October 23, 2000, Network Solutions confirmed by e-mail to The Forum that the domain names "laserminipeel.com" and "laserminipeel.org" are registered with Network Solutions and that the 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 ICANN’s UDRP.

On October 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 2000 by which Respondent could file a Response to the Complaint, was transmitted to postmaster@laserminipeel.com and postmaster@laserminipeel.org by e-mail.

On November 28, 2000, pursuant to Complainant’s request to have the dispute decided by a Three Member panel, the Forum appointed Louis E. Condon, Ralph Yachin and James A. Carmody as Panelists.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

The Complainant contends that the Respondent has no rights in the mark, and that the Respondent has registered and is using the domain names in bad faith.

The Complainant, a Board Certified Dermatologist and Fellow of the American College of Physicians, with forty-three years practice, invented a procedure and coined the name "Laser Mini Peel" in August, 1999. He obtained a trademark in the state of Louisiana for the name on October 7, 1999. That same month Complainant applied for a US trademark for the name and the procedure. It has now achieved the status of "Patent Pending." In October 1999 Complainant also listed the "Laser Mini Peel" procedure with the trademark insignia on his web page.

In September, October, and December 1999, Complainant ran newspaper ads showing he has the name "Laser Mini Peel" trademarked. In order to advance the use of the "Laser Mini Peel," Complainant had professional brochures published highlighting and explaining the procedure in some detail. In February 2000, the procedure was video taped and shown on local and statewide television.

When Complainant attempted to register the name "Laser Mini Peel" in October 2000, he learned that "LaserMiniPeel.com" and "LaserMiniPeel.org" had been registered by the Respondent in July 2000. A further search showed that Respondent has obtained sixty domain names concerning the name Laserminipeel in various configurations. All of those using the name Laserminipeel were registered in July 2000. The majority of the others were registered on October 2, 2000, the day Complainant first contacted Respondent. On that same date, Complainant spoke with his laser maintenance/service man who confirmed that he had spoken with the Respondent many months earlier about what the Complainant was doing and the success Complainant was having with the procedure.

On October 9, 2000, Complainant called Respondent’s office and spoke with Mark Diehl. Mr. Diehl told Complainant that everything Respondent had was for sale. Complainant advised Mr. Diehl that Complainant was "not interested in the exorbitant prices Mr. Diehl was mentioning" and that the name "Laser Mini Peel" was rightfully complainant’s by virtue of his prior usage and trademark Complainant had held for a year.

B. Respondent

J. Craig Diehl is the Respondent’s business manager. Mr. Diehl denies that he offered the names in question for sale. Rather, he says that the Complainant offered to compensate the Respondent for the names, and Diehl stated in response that a sale could be considered but that "he (Diehl) would not know how to put a value on such a thing." Diehl states that "no price was offered," but Mr. Diehl did communicate that a neighboring coffee shop had sold their domain name for $13,000.

The Respondent does a great deal of marketing in Austin, Texas, where he "runs one of the busiest and most successful laser clinics in the country." Respondent has for some time been evaluating various skin resurfacing (peel) technologies, and in this process was introduced to the Erbium laser. Feeling that its use looked promising, Respondent asked his business manager how it could be promoted. Mr. Diehl suggested the use of something along the lines of "Laser-epi-peel" or "Laser-derm-peel" as a means of differentiating Respondent’s product from others in the market place. Having had past experience with not being able to obtain a web address he desired, Respondent went home that evening and purchased as many domain names as he could conceive along the current line of thought, and presented them to Diehl as available for use in the marketing campaign. After considering the names for some time in light of his knowledge of trademark law, Mr. Diehl decided that they would not make a strong enough trademark as they were merely descriptive rather than "fanciful and ambiguous, as is commonly recommended." After much thought, the Respondent and his business manager settled on the name "Laser-Fresh-Peel" for the product to be offered by the Respondent , and purchased the corresponding domain names. The Respondent and his manager felt it wise to retain the rights to all previously purchased similar domain names in order to establish an area of protection from competitors who might enter into the Austin marketplace, and "piggy-back" on Respondent’s advertising by using a similar name or web address. Because the Complainant has national aspirations, Respondent believes Complainant falls in the category of potential competitors. All similar addresses owned by Respondent will be utilized as links to route traffic to Respondent’s current website, www.nevershaveagain.com. Respondent states that he has not and does not plan on infringing on Complainant’s trademark through its use in trade. Respondent is unaware of any procedure developed by Complainant and is not using the name Laserminipeel in conjunction with any procedure practiced in Respondent’s office.

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.

The domain names Respondent has registered, i.e., laserminipeel.com and laserrminipeel.org, are identical to the Complainant’s trademark name of LaserMiniPeel.

The Respondent contends that the Complainant has no rights in the mark as the Complainant’s trademark is registered in the State of Louisiana and federally registered. However, the ICANN Dispute Resolution Policy is "broad in scope" in that "the reference to a trademark or service mark ‘in which the Complainant has rights’ means that ownership of a registered mark is not required-unregistered or common law trademark or service mark rights will suffice" to support a domain name complaint under the policy. McCarthy on Trademarks and Unfair Competition, Section 25:74.2, Vol.4 (2000).

Common law rights in the mark can be shown by proving that the mark has sufficient secondary recognition with the Complainant. 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).

Registering a domain name for the purpose of reselling it for valuable consideration in excess of out-of-pocket costs is evidence of bad faith. Policy Paragraph 4.b(i). The offer to sell the domain name here does not have to be an express offer at a set price, but rather can be a general offer for sale. See VARTEC TELECOM, INC. v. Jim Olenbush, D2000-1092 (WIPO Sept. 28, 2000) (finding bad faith registration where the Respondent registered the domain name in order to sell it "for far more than he paid for it" by sending a general e-mail to the Complainant offering the domain name for sale); Educational Testing Services v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith); General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent registered and used the domain name in bad faith by using the domain name to direct users to a general site offering the domain name for sale).

Furthermore, registering a domain name to prevent the owner of a trademark or service mark from reflecting the mark in a domain is evidence of bad faith registration and use if there is a pattern of conduct. Policy Paragraph 4.b(ii). See the Pep Boys Manny, Moe and Jack v. E-Commerce Today, Ltd. AF-0145 (eResolution May 3, 2000) (finding that where the Respondent registered many domain names, held them hostage, and prevented the owners from using them constituted bad faith).

Registering a domain name primarily for the purpose of disrupting the business of a competitor is evidence of bad faith registration and use. Policy Paragraph 4.b(iii). See Southern Exposure v. Southern Exposure, Inc. FA94864 (Nat. Arb. Forum July 21, 2000) (finding that Respondent registered the domain name in question to disrupt the Complainant, a competitor of the Respondent).

The Panel finds that: the domain names are identical to Complainant’s trademark; the Respondent has no rights in the mark; and the Respondent registered and is using the domain name in bad faith. Accordingly, the Panel orders that the domain names be transferred to the Complainant.