DECISION

Dr. Paul Guerrino v. Yin Chew

Claim Number: FA0204000110873

PARTIES

Complainant is Dr. Paul Guerrino, Scarsdale, NY (“Complainant”) represented by Mark Gross.  Respondent is Yin Chew, Glendale, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <guerrinodentistry.com>, registered with Go Daddy Software.

PANEL

The undersigned, Hugues G. Richard, 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 April 26, 2002; the Forum received a hard copy of the Complaint on April 29, 2002.

On April 26, 2002, Go Daddy Software confirmed by e-mail to the Forum that the domain name <guerrinodentistry.com> is registered with Go Daddy Software and that the Respondent is the current registrant of the name.  Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 April 29, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 20, 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@guerrinodentistry.com by e-mail.

A timely Response was received and determined to be complete on May 20, 2002.

On June 3, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hugues G. Richard as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A.  Complainant

Identical or Confusingly Similar

The Complainant contends that <guerrinodentistry.com> was registered to become the domain name associated with the website for the dental practice of Complainant.  He states that the disputed domain name is descriptive of the dental practice of the Complainant in that it incorporates the last name of Dr. Guerrino and sets out his expertise: dentistry.  The Complainant practices his profession in many locations within Westchester County, New York.  The Complainant contends that his name alone, absent of other basis for this Complaint, justifies granting the Complaint as it acts as a basis for confusion.  He adds that the domain name until several weeks ago (the shutdown of the site followed Complainant's requests to Respondent that she immediately reassign the domain name) directly related to Dr. Guerrino's dental practice, with his address, phone number, pictures of himself and his staff and his office, etc…  The Complainant contends that as a consequence, members of the general public presently believe that the <guerrinodentistry.com> domain name relates to Dr. Guerrino's dental practice.  The fact  that the domain name <guerrinodentistry.com> now produces an error message and no meaningful webpage comes up, constitutes and exacerbates damage to Dr. Guerrino's goodwill and his ability to market his practice.

Rights or Legitimate Interests

The Complainant alleges that Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of this Complaint because, to Complainant's information and belief, Respondent is neither a dentist nor has any connection to the name Guerrino.  It is alleged by the Complainant that before the filing of this Complaint, Respondent's use of the domain name demonstrated her awareness that it related to the Complainant.  The Respondent's preparations to use the domain name was in connection with the Complainant's dental practice which provides a bona fide offering of goods and services.  Respondent never made any use of the domain name for any purpose other than to promote the Complainant's dental practice.

According to the Complainant, Respondent (as an individual and together with her business interests) has never been commonly known by the disputed domain name.  According to the Complainant's knowledge, the Respondent is not making a legitimate, commercial, non commercial or other fair use of the domain name at issue.

Registration and Use in Bad Faith

The Complainant contends that the domain name should be considered as having been registered and as being used in bad faith because the Respondent was employed and paid by Complainant to, as a technical consultant working for him, register the domain name and work on the related website. Registration should have been made in the Complainant's name. Contrary to this direction, Respondent registered the domain name identifying herself as the Registrant.

Based upon the fact that the Respondent improperly registered the domain name to herself and repeatedly failed to honor requests to remedy this improper registration, it is Complainant's belief that circumstances indicate that Respondent has registered the domain name primarily for the purpose of attempting to gain improper leverage and/or profit in her dealings with the Complainant (by failing to respect direction and transfer the domain name to the Complainant who is the owner of the dental practice Guerrino Dentistry, etc…).  The Complainant contends that since significant fees and moneys have already been paid to the Respondent, well beyond the value of services rendered to the Complainant and well in excess of Respondent's documented out-of-pocket costs directly related to the domain name, no conclusion can be drawn other than that Respondent is acting improperly.

The Complainant alleges that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a party paying for services – Guerrino Dentistry.  The Complainant alleges that Guerrino Dentistry has expended significant monies in marketing materials which contain reference to the practice's website, listed as <guerrinodentistry.com>.

B.  Respondent

Identical or Confusingly Similar

The Respondent made no allegations concerning the fact that the domain name she registered may be identical or confusingly similar to a trade-mark or service mark in which the Complainant has rights.

Rights or Legitimate Interests

Registration and Use in Bad Faith

The Respondent alleges that Dr. Paul Guerrino was a financial partner at Flasch Business Consulting, that he had entered into a partnership with Flasch since 1998 with financial interests.

The Respondent alleges that Flasch Business Consulting has been providing web services to clients since 1999.  As a partner of the company, Dr. Guerrino was fully aware of each web development step the company was taking and even promoted to other health professionals on behalf of Flasch.  He was constantly briefed on all web development matters and participated in discussion with the CEO.

The Respondent contends that <guerrinodentistry.com> was registered with Dr. Guerrino's full understanding as a business partner to have it under the name of Flasch Business Consulting.  He had entrusted all web matters to Flasch Business Consulting and he was fully aware that this was the action taken by Flasch Business Consulting for all domain registration matters.

The Respondent contends that when the Complainant broke the partnership agreements in early 2002, he left Flasch Business Consulting and later threatened with legal actions.  <guerrinodentistry.com> was registered during the partnership formed between Dr. Paul Guerrino and Flasch.  According to the Respondent, Flasch Business Consulting is the legal registrant of the domain name as given agreement by an ex-partner of the business, Dr. Paul Guerrino.

FINDINGS

Having reviewed the evidence submitted by the parties, the Panel makes the following findings :

The evidence submitted by the Complainant (exhibits 1, 2, 3 and 4) supports the finding that the Complainant has rights in the service mark "GUERRINO DENTISTRY" since this expression has been used by him in association with the advertisement of his practice as a dentist – implantologist.  This advertisement was made through leaflets and the Internet (exhibits 3 and 4).

The Panel also finds that the Complainant's evidence supports his allegation that the website, formally located at <guerrinodentistry.com>, when it was up and running, related to his dental practice, with the name and address of this dental practice, prominently displayed.

The Panel finds that the Respondent never made any use of the domain name in dispute for any purpose other than to promote Complainant's dental practice.  The Respondent's allegations concerning a partnership formed between the Complainant and Flasch Business Consulting are not supported by any evidence whatsoever and therefore, these allegations cannot be accepted by the Panel. Furthermore, even if taken as proven, these allegations do not justify the fact that the disputed domain name is registered in the Respondent's personal name.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the 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.

Identical and/or Confusingly Similar

It has been established in previous UDRP decisions that the addition of a generic top-level domain name (here, ".com") to the distinctive part of a domain name does not negate a finding that the disputed domain name is identical or confusingly similar to a trademark.

For instance, in Pomellato S.p.A. v. Tonetti[1] the Panel found that the domain name pomellato.com was identical to Complainant's mark because the generic top-level domain name ".com" after the name POMELLATO was not relevant. See also Entrepreneur Media, Inc. v. Smith[2] (finding that "Internet users searching for a company' [w]ebsite ... assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ".com"); see also Rollerblade, Inc. v. McCrady[3] (finding that the top level of the domain name such as ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

In the case at hand, as stated before, it clearly appears from the evidence that Complainant has rights in the trademark "GUERRINO DENTISTRY" which is distinctive of his services.

Taking into account the type of services offered by the Complainant and the above mentioned decisions, the Panel concludes that, the disputed domain name is identical or confusingly similar to Complainant’s trademark or service mark.

Rights or Legitimate Interests

The Panel can rely on any of the following circumstances, without limitation, to find that Respondent has rights or legitimate interests in the domain name :

i) the use or demonstrable preparations to use, the domain name or name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

ii) the fact that Respondent has been commonly known by the domain name; or

iii) a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue [Policy ¶ 4(c)]

The Panel refers to the decision in Ritz-Carlton Hotel v. Club Car Executive,[4] where it was decided that prior to any notice of the dispute the Respondent had not used the domain names in connection with any type of bona fide offering of goods and services. Also, Melbourne IT Ltd. v. Stafford[5] finds no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name[6]. In Vinidex Pty. Ltd. v. Auinger[7], it was found that as a former employee, Respondent knew or should have known Complainant's mark was in use as an integral part of the corporate name and as a trademark. The Respondent understood the legitimate interests and rights of Complainant and, by contrast its own lack of interest or right. This was sufficient for Complainant to establish that Respondent had no rights or interest in the domain name.

Based on these precedents and on the above findings, the Panel is of the view that the Complainant has discharged his burden of proving that the Respondent has no right or legitimate interest in the disputed domain name and the Respondent has failed to establish any right or legitimate interest in the disputed domain name.

Registration and Use in Bad Faith

It is hard to conceive that the disputed domain name could have been registered in good faith in the Respondent's personal name.  Even if the Respondent's contentions were accepted as true (which is not the case), it would still not justify the Respondent having registered the disputed domain name in her personal name.  There would seem to be no legitimate business reason for having done so.  The disputed domain name clearly incorporates the last name of the Complainant, it incorporates the trademark and the trade name of the Complainant.  It has been used as an Internet address for a website promoting the professional practice of the Complainant. The Respondent removed Complainant's website when Complainant requested that Respondent transfer the disputed domain name.

Considering the evidence on the record, the Panel finds that the domain name in dispute has been registered and is being used in bad faith.  In support of this finding, the Panel make reference to the following decisions Arab Bank for Inv. & Foreign Trade v. Akkou[8] and Canada, Inc. v. Ursino[9].

DECISION

For the foregoing reasons, the Panel concludes that :

- The domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the domain name; and

- The domain name has been registered and is being used by the Respondent in bad faith.

Pursuant to Paragraph 4(i) of the ICANN Policy, the Panel orders that the domain name guerrinodentistry.com registered by Respondent Yin Chew be transferred by the Registrar, Go Daddy Software, to the Complainant, Dr. Paul Guerrino.

Mr. Hugues Richard, Panelist
Dated: June 17, 2002

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