Generic Top Level Domain Name (gTLD) Decisions

The National Arbitration Forum

P.O. Box 50191

Minneapolis, Minnesota 55405 USA

____________________________________

BEFORE THE NATIONAL ARBITRATION FORUM

Complainant:

Marc S. Bragg, Esquire
5699 La Jolla Blvd.
La Jolla, CA 92037
email: Msb@einsteinmedical.com File Number: 92528
(610) 587-8524 (Telephone)
(858) 362-8567 (Facsimile) Filing Date: 1/24/00

Respondent:

Dennis Condon,
Better Image, Inc.,
104 West Anapamu Street, Suite G
Santa Barbara, CA 93101
email: Info@betterimageweb.com
(805) 963-0400 (Telephone)

DOMAIN NAME DISPUTE ADMINISTRATIVE PANEL DECISION

Domain Name(s): plasticdocshop.com, cosmeticdocshop.com

Domain Name Registrar: Network Solutions

Date of domain name registration: 4/1/99

Date Complaint was sent to Respondent in accordance with Rule 2(a): 1/24/2000

Response Due Date: 2/16/2000

PROCEDURAL FINDINGS

The Complainant filed its complaint with the National Arbitration Forum on Network Solutions. After reviewing the Complaint for administrative compliance, The Forum transferred the Complaint to the Respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d) The Forum immediately notified the above Registrar, ICANN and the Complainant that the administrative proceeding had commenced.

The Respondent registered the domain names with Network Solutions, Inc., the entity that is the Registrar of the domain names. By registering its domain names with Network Solutions, the Respondent agreed to resolve any dispute regarding its domain names through ICANN’s Uniform Domain Name Dispute Resolution Policy.

The complaint is based on the following trademark or service marks: docshop registered December 9, 1999.

The above-captioned matter came on for an administrative hearing on March 2, 2000 before the undersigned on the Complaint of Einstein Medical, Inc., hereafter "Complainant", against Dennis Condon, Better Image, Inc., hereafter "Respondents". Complainant is represented by Marc S. Bragg, Esquire of Bialecki & Bragg, P.C., 111 E. Cypress St., Kennett Square, PA 19348. The Respondent has not responded and is in default. This matter is submitted for decision in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy") and Rules (the "Rules"). Upon the written submitted record, and the following findings and conclusions, I find for the Complainant.

FINDINGS OF FACT

1. The Complainant, Einstein Medical, Inc., is an Internet and World Wide Web advertising and marketing firm that has been in the business of providing a unique Internet directory service named "DocShop" and associated web-site development services to twenty-two (22) specialties within the medical profession for the past three (3) years. Two (2) of the medical specialties that Complainant has offered since 1998, and continues to offer through its Internet directory service are to cosmetic and plastic surgeons.

The Complainant’s primary business encompasses the creation of "DocShop", a Medical Internet Directory Listing service utilizing proprietary software, and developing, employing and refining keyword, advertising and marketing strategies, and domain name assets to deploy that software and service across the Internet and World-Wide Web. Complainant provides a medical directory listing and finding service that services, the plastic and cosmetic surgery industry.

The Complainant also employs designers and graphic artists for creating the latest in web-site design, in both its use of graphics and creativity, and in terms of functionality.

Crucial assets for an Internet development, marketing and advertising company in this quickly emerging market are its ability to control the use of its trade names, trade marks, proprietary and confidential marketing, and advertising strategies, and to otherwise prevent blurring of its valuable marks or misappropriation of its property, especially, use of those marks as part of or within domain names.

The Respondents have appropriated Complainant’s marks for the purpose of trading off Complainant’s brand awareness and directing Internet users to a website that is directly competitive and in the identical industry as Complainant, both on and off the Internet.

Along with the domain names incorporating the mark "docshop", Complainant registered two (2) domain names at "plasticsdocshop.com" and "cosmeticsdocshop.com" in June, 1998. Complainant’s registration of the above two (2) domain names was nearly fifteen (15) months before Respondents registered the two (2) identical domain names in dispute, "plasticdocshop.com" and "cosmeticdoschop.com"

The only difference between Complainant’s original registrations in June of 1998, and Respondent’s registration in April, 1999, is Respondents’ deletion of the "s" from the words "plastics" and "cosmetics".

Complainant has applied for a federal trademark and/or service mark for "docshop" which application is currently pending. On December 9, 1999, the Complainant registered the service mark for "DocShop" with the State of California.

Complainant had advised Respondents about its confidential strategies just a short time before Respondents’ domain name registration of April, 1999.

Respondents filed their registrations knowing that the use of Complainant’s mark within the two (2) domain names would infringe on Complainant’s investment in building brand awareness in the mark "docshop".

Respondents’ conduct in registering these two (2) domain names was for the purpose of preventing Complainant, the owner of the "docshop" mark, from reflecting the mark in its own corresponding domain name, as it had already done with the words "plastics" and "cosmetics."

Being in a directly competitive business, Respondents registered these domain names for the purpose of disrupting Complainant’s business and getting users to believe that their website was associated, affiliated, supported, or operated in connection with Complainant’s DocShop.

By registering these two (2) domain names, Respondents have intentionally attempted to attract, for commercial gain and at Complainant’s expense and loss, Internet users to Respondents’ website and have created a likelihood of confusion with respect to Complainant’s mark as to its source, affiliation or sponsorship of Respondents’ website.

Respondents have no association, presence, brand awareness, right or legitimate interest in connection with their use of the mark "docshop."

CONCLUSIONS

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

1. that the domain names registered by the Respondents are identical or confusingly

similar to a trademark or service mark in which the Complainant has rights; and

2. that the Respondents have no legitimate interests in respect of the domain names; and,
3. the domains have been registered and used in bad faith.

The Complainant has shown each of the above.

1. The registered domain names "plasticdocshop.com" and "cosmeticdocshop.com" ARE identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The domain names "plasticdocshop.com" and "cosmeticdocshop.com" are identical to Complainant’s registered trademark "DocShop" and are confusingly similar to a service mark in which the Complainant has rights.

2. The Respondents DO NOT have rights or legitimate interests in respect of the domain-names "plasticdocshop.com" and "cosmeticdocshop.com"

The Respondents’ use of the domain names is not bona fide. The Respondents have not

been commonly known by the domain names. The Respondents are not making a legitimate non-commercial or fair use of the domain names. Therefore, the Respondents do not have rights or legitimate interests in respect to the domain names.

3. The domain names SHOULD be considered as having been registered and

being used in bad faith.

The Respondents’ actions with respect to the registration of the domain names evidence

bad faith. By using the domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ web site location.

Summary

In summary, the Complainant has shown that (1) the registered domain names "plasticdocshop.com" and "cosmeticdocshop.com" are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondents do not have rights or legitimate interests in respect to the domain names "plasticdocshop.com" and "cosmeticdocshop.com"; and (3) the domain names should be considered as having been registered in bad faith.

DECISION

I certify that I have acted independently and have no known conflict of interest to serve as the arbitrator in this proceeding. Having been duly selected and being impartial, I enter the following decision:

Based upon the above findings and conclusions, and pursuant to Rule 4(i), I find in favor of the Complainant and direct that the domain names "plasticdocshop.com" and "cosmeticdocshop.com" registered by Respondents be transferred to Complainant, Einstein Medical, Inc. This 2^nd day of March, 2000.

Charles K. McCotter, Jr.

Arbitrator