DECISION

New Jersey State Medical Underwriters, Inc. v. ELCARO aka Robert Crivelli

Claim Number: FA0201000103868

PARTIES

The Complainant is New Jersey State Medical Underwriters, Inc., Arlington, VA (“Complainant”), represented by Roberta S. Bren, of Oblon, Spivak, McClelland, Maier & Neustadt P.C.  The Respondent is ELCARO, Lawrenceville, NJ (“Respondent”), also known as Robert Crivelli.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <miix.com>, registered with Network Solutions.

PANEL

The undersigned Panelist, David E. Sorkin, certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 14, 2002; the Forum received a hard copy of the Complaint on January 16, 2002.

On January 18, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <miix.com> is 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 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of February 12, 2002, 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 postmaster@miix.com by e-mail.

A timely Response was received and determined to be complete on January 24, 2002.

On February 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a wholly-owned subsidiary of The MIIX Group, Inc., one of the ten largest writers of medical professional liability insurance in the United States.  Complainant owns the word mark MIIX, registered on the Principal Register of the U.S. Patent and Trademark Office on January 17, 1995, and other marks that incorporate the word MIIX.  Complainant and its related companies have used the mark MIIX since at least 1992.

While serving as a contractor for Complainant in 1995 or 1996,[1] Respondent registered the domain name <miix.com> in the name of ELCARO, apparently an alias for himself.  Complainant claims that it did not authorize Respondent to register the domain name, and in July 1996 Complainant filed a lawsuit against him in federal court in an effort to obtain the domain name.  The parties reached a settlement in August 1996, under which Respondent executed an assignment of the domain name to Complainant and agreed to take other steps as necessary to transfer it to Complainant.

Complainant has actively used the domain name since about 1997.  In 2001, however, Complainant learned from the registrar, Network Solutions, that the whois record for the domain name still listed Respondent as the owner of the domain name, although all of the other information in the record pertained to Complainant.  (The street address listed for ELCARO in the domain registration record was that of Complainant rather than Respondent, and a representative of Complainant was listed as the administrative and billing contact, while Complainant’s Internet service provider was listed as the technical contact.)  Network Solutions told Complainant that it would not transfer the domain name into Complainant’s name without a Registrant Name Change Agreement bearing Respondent’s signature.  Complainant then requested that Respondent sign such an agreement; he refused to do so.

Complainant alleges that the domain name is identical or confusingly similar to marks in which Complainant has rights; that Respondent has no rights or legitimate interests in the domain name, having registered it without authorization while serving as a contractor for Complainant and having never made legitimate use of nor been known by it; and that Respondent registered the name in bad faith knowing of Complainant’s rights to the mark, and has used it in bad faith by failing to carry out his transfer obligations under the settlement agreement and by holding the domain name hostage and disrupting Complainant’s ability to manage its web site.

B. Respondent

Respondent claims that he purchased the domain name as a “gift” for Complainant, but that Complainant originally declined to accept it and shortly thereafter terminated the contractual relationship between the parties.  He acknowledges the 1996 settlement agreement under which he signed over ownership of the domain name to Complainant, but contends that Complainant breached the agreement in 2001 by contacting him to request that he sign the Registrant Name Change Agreement.

Respondent does not claim to have rights or legitimate interests in the domain name, but disputes Complainant’s allegation of bad faith on the basis that he registered the domain name in good faith as a “gift” for Complainant.  He further alleges that a former employee of Complainant was arrested for drug-related offenses and that Complainant’s allegations in this proceeding regarding bad faith are not supported by substantial evidence, and on these grounds requests the Panel to find that Complainant has engaged in reverse domain name hijacking.

FINDINGS

The Panel finds that the domain name <miix.com> is identical to Complainant’s registered mark MIIX; that Respondent lacks rights or legitimate interests in the domain name; and that Respondent registered and is using the domain name in bad faith.  The Panel further finds that the Complaint was not brought in bad faith.

DISCUSSION

To prevail in a proceeding under the Policy, a complainant must prove (1) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) that the respondent has no rights or legitimate interests in respect of the domain name; and (3) that the domain name has been registered and is being used in bad faith.  Paragraph 4(a).

The scope of a proceeding under the Policy is quite narrow; it is not an appropriate forum for the adjudication of business disputes.  See, e.g., The Thread.com, LLC v. Poploff, No. D2000-1470 (WIPO Jan. 5, 2001).  However, if the record before the Panel clearly demonstrates that the elements set forth in the Policy are (or are not) satisfied, then the existence of a dispute between the parties as to other matters ought not preclude the Panel from deciding the matter before it.

Identical and/or Confusingly Similar

For purposes of the Policy, the domain name <miix.com> is identical to the mark MIIX; there does not appear to be any dispute between the parties on this point.

Rights or Legitimate Interests

Respondent does not claim to have any rights or legitimate interests in the domain name; there is no dispute between the parties on this point either.

Registration and Use in Bad Faith

Complainant offers an account of the circumstances under which the domain name was registered that is indicative of bad faith:  While serving as a contractor for Complainant, Respondent registered for his own benefit and without Complainant’s authorization a domain name corresponding exactly to Complainant’s name and mark.  Respondent does not dispute this account directly, but states that he registered the domain name as a “gift” for Complainant.  The Panel finds that Respondent’s explanation strains credulity, particularly in light of the ensuing litigation, settlement, and other events.  The Panel therefore accepts Complainant’s account of the circumstances under which the domain name was registered, and concludes that the registration was in bad faith.

Respondent’s failure to effectuate a complete transfer of the domain name to Complainant in 1996, as he undertook to do in the settlement agreement, may evince bad faith use of the domain name; but it is quite possible that the failure was merely the result of an oversight (and not necessarily on Respondent’s part).  However, Respondent’s refusal to sign the proffered Registrant Name Change Agreement in 2001, long after he had disavowed any rights in the domain name and agreed to transfer it to Complainant, together with the other circumstances of this case, is more than sufficient evidence to support a finding of bad faith use.

Reverse Domain Name Hijacking

Finally, paragraph 15(e) of the Rules for Uniform Domain Name Dispute Resolution Policy provides that if the Panel finds that the complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking, the Panel should so declare in its decision.  Implicit in a ruling in Complainant’s favor on the merits is a finding that the complaint was not brought in bad faith, and the Panel so finds in this proceeding, notwithstanding Respondent’s unsubstantiated allegation concerning a former employee of Complainant.

DECISION

Having found that all of the elements required by Paragraph 4(a) of the Policy have been met, the Panel orders that the domain name <mixx.com> be transferred from Respondent to Complainant.

David E. Sorkin, Panelist

Dated: February 22, 2002

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