Generic Top Level Domain Name (gTLD) Decisions

HUDSON OPTICAL CORPORATION
COMPLAINANT,

vs.

PURCHASEPRO.COM
RESPONDENT.

DECISION
Forum File No.: FA0004000094418

The above-entitled matter came on for an administrative hearing on

May 31, 2000 before the undersigned three-judge panel on the Complaint of HUDSON OPTICAL CORPORATION, hereafter “Complainant”, against PURCHASEPRO.COM, hereafter “Respondent”.  Paul E. Fahrenkopf, Esq. Barnes & Thornburg, 1401 Eye Street, N.W., Suite 500, Washington, D.C. 20005, USA represents Complainant. Michael B. Stewart, Esq., Rader, Fishman & Grauer PLLC, 1533 N. Woodward Ave., Suite 140, Bloomfield Hills, MI 48304, USA represents Respondent. Upon the written submitted record, the following decision is made:

PROCEDURAL FINDINGS

Domain Name: EYEVANTAGEMARKETPLACE.COM

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: PURCHASEPRO.COM

Date of Domain Name Registration: January 24, 2000.

Date Complaint filed: April 7, 2000.

Date of Commencement of Administrative Proceeding in Accordance with Rule

2(a)^{[1] and Rule 4(c): April 12, 2000.}

Due date for a Response: Respondent has appeared pursuant to Rule 5(a).

            After reviewing the Complaint and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORUM (THE FORUM) forwarded the Complaint to the Respondent and it was received on April 12, 2000 in compliance with Rule 2(a), and the administrative proceeding commenced pursuant to Rule 4(c).  In compliance with Rule 4(d), The Forum immediately notified Network Solutions, Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceeding had commenced.  Respondent appeared as required by Rule 5(a).

            On January 24, 2000, Respondent registered the domain name EYEVANTAGEMARKETPLACE.COM with Domain Name Registrar Network Solutions, Inc.  On April 7, 2000 the Domain Name Registrar Network Solutions, Inc., verified that Respondent is the Registrant for the domain name EYEVANTAGEMARKETPLACE.COM and that further by registering its domain name with Network Solutions, Inc., Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

                The evidence is disputed. Based on the record the following findings are made:

1. Complainant manufactures and sells  “prescription eyeglasses, sunglasses and frames” in fifty states in the United States and in six other countries. Respondent has been in this business since 1936.

2. Complainant registered the mark EYEVANTAGE for “prescription eyeglasses, sunglasses and frames” August 26, 1999 in the United States (Serial No. 75-785,834) and in Canada (Application No. 1,043,901) on January 25, 2000, asserting that under existing international treaty between the two countries, the dates of filing are viewed to be the same.

3. Complainant first used the mark EYEVANTAGE in commerce August 25, 1999.

4. Complainant first used the mark EYEVANTAGE in interstate commerce March 17, 2000 and filed an Allegation of Use with the U.S. Patent and Trademark Office April 4, 2000.

5. Complainant and Respondent’s admitted intended transferee are competitors in the “sale of eyeglasses and eyeglass frames.”

6. Although it contacted Complainant beforehand to purchase Complainant’s interest in the mark EYEVANTAGE, Respondent nevertheless registered EYEVANTAGEMARKETPLACE.COM as a domain site January 24, 2000. The status is active.

7. The evidence allows an inference that Respondent registered the domain name of Complainant although Respondent knew that Complainant had registered the mark EYEVANTAGE at a point five months earlier in time than Respondent’s domain name filing.

8. The domain name EYEVANTAGEMARKETPLACE.COM is confusingly  similar to Complainant’s mark.

9. Respondent PurchasePro.Com advertises that it has “built a simple yet robust business tool that allows companies to conduct electronic sales” and lists “eyeVantage.com” (sic) as “the leader in e-commerce solutions for the eye care industry.”

10.  Respondent PurchasePro.Com identified “Eyevantage” (sic) as “[o]ne of our customers”… “for whom we created a private marketplace and registered the domain name.”  Respondent’s exhibits show that corporate papers for eyeVantage, Inc. (Sic) were signed January 11, 2000, a date in time that was after Respondent knew of Complainant’s interest in the mark EYEVANTAGE.

11. Respondent PurchasePro.Com concedes that it “intends to transfer the EYEVANTAGEMARKETPLACE.COM domain name to Eyevantage.com (sic) upon completion of this proceeding in Respondent’s favor.”

12. Respondent’s papers show that EYEVANTAGE.COM opened for business January 10, 2000.

13. Before registering the domain name, EYEVANTAGEMARKETPLACE.COM, Respondent offered to purchase Complainant’s Intent-To-Use trademark application, an offer that Complainant rejected January 7, 2000.

14. In March 2000, Respondent offered $50,000 for “assignment of [Complainant’s] … alleged rights.” 

15. Respondent alleges Complainant demanded $600,000. and that Respondent “refused to be blackmailed by Complainant” but offered no documentary proof of the denial or alleged counteroffer.

16. Respondent further asserts by affidavit of Investigator Alexander Rabinovich that Complainant’s proof of sales in its complaint was false based on information obtained from “Steve” at Boren Safety but this assertion was challenged by both the affidavit of Steven Hoover of Boren Safety and a showing of a significant amount of commerce between Complainant and the consumer in issue.

PRAYER FOR RELIEF

Complainant’s prayer for relief requests that the domain name EYEVANTAGEMARKETPLACE.COM be transferred from Respondent to Complainant, pursuant to Paragraph 4(i) of ICANN’s Uniform Domain Name Dispute Resolution Policy.

CONCLUSIONS

            The undersigned certify that they have acted independently as a three—judge panel and that they have no known conflicts of interest to serve as the Arbitrators in this proceeding.  Having been duly selected, and being impartial, the undersigned make the following findings and conclusions:

            To prevail, the Complainant has the burden of establishing the three factors set out in ICANN’s Uniform Domain Name Dispute Resolution Policy at Paragraph 4(a)(i),(ii) and (iii). Complainant has the burden of showing that (i) Respondent’s domain name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) Respondent’s domain name was registered and used in bad faith. (Emphasis added.)

1. Complainant met its burden of establishing that Respondent’s domain name is identical to or confusingly similar to Complainant’s mark, pursuant to Paragraph 4(a)(i).

2. Complainant met its burden of establishing that Complainant had prior legitimate interests in and right to use EYEVANTAGE in its commercial dealings.  Respondent did not show a right or legitimate interest in respect to the word EYEVANTAGE but instead showed its knowledge that Complainant had such rights prior in time to Respondent’s registration of the domain name.

3. Complainant met its burden of establishing that Respondent acted in bad faith.  The evidence allows an inference that Respondent,

(a) contrary to ICANN’s Domain Name Dispute Resolution Policy Paragraph 4(b)(i) knowingly registered a domain name that Respondent knew another had a prior interest in or right to and that Respondent did so primarily in order to transfer it to a competitor of Complainant. Respondent admits that if Respondent is successful in this arbitration, Respondent will transfer its right in the domain name and that Respondent offered to purchase Complainant’s “alleged” interest in the mark EYEVANTAGE for a valuable consideration of $50,000. This establishes Respondent’s prior knowledge of Complainant’s interests. Although neither party produced evidence about their out-of-pocket costs related to the domain name, Respondent’s admissions establish to a legal certainty that Respondent filed a domain name using a mark it knew belonged to Complainant and that Respondent intended at the time of registration to transfer the domain name to a competitor of Complainant, and 

(b) the evidence permits the inference that Respondent, contrary to ICANN’s Domain Name Dispute Resolution Policy, Paragraph 4(b)(ii), filed the domain name EYEVANTAGEMARKETPLACE.COM to prevent Complainant, the owner of the mark EYEVANTAGE, from reflecting the mark in a corresponding domain name.  Respondent’s literature about its services permits the inference that Respondent is in the business of acquiring such domain names for transfer to businesses that contract with Respondent.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECT THAT THE DOMAIN NAME  EYEVANTAGEMARKETPLACE.COM REGISTERED BY RESPONDENT PURCHASEPRO.COM BE TRANSFERRED TO COMPLAINANT HUDSON OPTICAL CORPORATION.

DATED:  May 31, 2000 by Hon. Carolyn Marks Johnson (Ret.), Hon. Robert R. Merhige, and Hon. Jeffery M. Samuels.

Concurring: Hon. Carolyn Marks Johnson

Concurring: Hon. Robert R. Merhige

Dissenting:  Hon. Jeffery M. Samuels

DISSENTING OPINION

I respectfully dissent because, in my view, Complainant has not established that Respondent registered and used the domain name in bad faith.

First, the evidence does not support the finding by the majority that Complainant registered the EYEVANTAGE mark on August 26, 1999.  Rather, the evidence (see Exhibit 2 of Claimant's Complaint) merely indicates that Complainant, on that date, filed an intent-to-use trademark registration to register the EYEVANTAGE mark.  That application appears still to be pending; in any case, it had not matured into a registration before Respondent's registration and use of the domain name in dispute. 

This, to me, is important because while registration of a mark constitutes constructive notice of the registrant's claim of ownership thereof  (see 15 U.S.C.§ 1072), the mere filing of an application has no such effect.  And, while it is true, as Complainant's able counsel notes, that the records of the U.S. Patent and Trademark Office (PTO) are open for public inspection, and thus Respondent, PurchasePro.com, could have known of the existence of Complainant's EYEVANTAGE application, there is no legal obligation for one to check the records of the PTO before commencing use of a mark or registering or using a domain name.

The evidence further establishes that the domain names EYEVANTAGE.COM, EYEVANTAGE.NET, and EYEVANTAGE.ORG were registered by Vision Corp. on January 3, 2000.  Vision Corp., apparently, is a sister company of Eyevantage.com.  According to Respondent’s response, PurchasePro.com is a partner of Eyevantage.com and Respondent intends to transfer the domain name in dispute to Eyevantage.com upon successful completion of the instant proceeding.

It appears that at the time of selection and registration of the EYEVANTAGE domain names, Respondent had no knowledge of Complainant's intent-to-use trademark application pending before the PTO.  However, on or about January 6, 2000, Eyevantage.com learned of Complainant’s intent-to-use trademark application.  At that time, however, it appears that Complainant had not yet begun use of the EYEVANTAGE mark.  The Allegation of Use submitted in connection with Complainant's application indicates a date of first use of March 17, 2000.  Thus, as of January 6, 2000, Complainant's trademark rights were not perfected.

The evidence further suggests that Complainant Eyevantage.com opened for business on January 10, 2000, and that  PurchasePro.com registered the domain name EYEVANTAGEMARKETPLACE.COM on January 24, 2000.  This proceeding was commenced on April 12, 2000.

In my opinion, based on the rather unique facts of this case, I conclude that Respondent did not register and use the domain name in bad faith.  Based on the available evidence, it appears reasonable to assume that, at the time Vision Corp. registered its EYEVANTAGE domain names, neither it nor Respondent knew of Complainant’s pending trademark application.  Further, in my opinion, Respondent's knowledge of Complainant's application prior to registration of the domain name in dispute should not give rise to a finding of bad faith, since at the time of domain name registration, Complainant's mark had not been used, let alone registered.

Finally, in view of the registrations of the EYEVANTAGE.COM, EYEVANTAGE.NET, and EYEVANTAGE.ORG domain names by Vision Corp., all of which took place before actual notice of Complainant’s trademark application or use by Complainant of the EYEVANTAGE mark, as well as the obviously close working relationship between Respondent, Vision Corp. and Eyevantage.com, in my opinion, Respondent’s registration of another EYEVANTAGE derivative domain name can not be said to be in bad faith.

Dissenting:  Hon. Jeffery M. Samuels