Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
MatchMaker International Development
Corporation v. Kaiser Development Corporation Inc.
Claim Number: FA0302000146933
PARTIES
Complainant
is MatchMaker International Development
Corporation, Rocky River, OH ("Complainant"), represented by Philip I. Frankel of Bond Schoeneck & King PLLC. Respondent is Kaiser Development Corporation Inc., Evansville, IN
("Respondent") represented by Ari
Goldberger, of ESQwire.com Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <matchmakerinternational.com>,
registered with Tucows.
PANEL
The
Panelists are the undersigned, Rodney C. Kyle, Chairperson; the Honorable
Charles K. McCotter, Jr. (Ret.); and David E. Sorkin.
Each
Panelist certifies that he has acted independently and impartially and to the
best of his knowledge has no known conflict in
serving as a Panelist in this
proceeding.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 26, 2003; the
Forum received a hard copy of the
Complaint on February 28, 2003.
On
February 27, 2003, Tucows confirmed by e-mail to the Forum that the domain name
<matchmakerinternational.com>
is registered with Tucows and that the Respondent is the current registrant of
the name. Tucows has verified that Respondent is bound
by the Tucows
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
February 28, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of March 20, 2003 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@matchmakerinternational.com
by e-mail.
A
timely Response was received and determined to be complete on April 9, 2003.
On April 25, 2003, pursuant to Respondent’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Rodney C.
Kyle, the Honorable Charles K. McCotter, Jr. (Ret.), and David E. Sorkin as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Basically,
Complainant makes three main contentions.
First,
Complainant basically contends by way of four points that (i) Respondent is a
corporation located in Evansville, Indiana and
that it carries on business
under the assumed name of "Matchmaker International", as evidenced by
the copy of the Indiana
Secretary of State corporations database printout that
is Complaint Exhibit #3; (ii) since January 24, 2002 <matchmakerinternational.com> is registered to Respondent by the
owner of Respondent, Mr. David Blair, as evidenced by the copy of the WHOIS
search results
printout that is Complaint Exhibit #2; (iii) Complainant owns
U.S. uncontestable service mark registration 1549618 dated July 25,
1989 and
Canadian trademark registration TMA457626 dated May 24, 1996 (each as to
MATCHMAKER INTERNATIONAL with a heart shape as
part of each "a" in
"MatchMaker," in association with personal dating services, namely,
arranging dates for others),
as respectively evidenced by the copies of the
TESS and CIPO printouts that are Complaint Exhibit #1; and (iv) said domain name
is
identical thereto.
Second,
Complainant basically contends by way of five points that Respondent has no
"rights or legitimate interests" in
respect of <matchmakerinternational.com> in that
(i) Complainant has operated since 1983 (including, it seems, to have used the
mark from January 17, 1983 according to
the copy of U.S. uncontestable service
mark registration 1549618 in Complaint Exhibit #1); (ii) Respondent is a
franchisee of Complainant,
by a 1988 franchise agreement evidenced by the copy
of the agreement documents that are Complaint Exhibit #4; (iii) Respondent has
registered and is using said domain name; (iv) since becoming aware of
Respondent's registration and use of said domain name, Complainant
has
steadfastly objected thereto (such as by letter, a copy of one of which dated
August 12, 2002 is from Complainant's lawyer to
Respondent owner Mr. David
Blair and is Complaint Exhibit #5); and (v) neither by said franchise
agreement, nor otherwise, does Respondent
have a privilege to have registered, or have a privilege to use, said domain name.
Third,
Complainant basically contends by way of five points that Respondent's
registration and use of <matchmakerinternational.com>
are in bad faith in that (i) Complainant has franchisees located in various
states across and throughout the United States and
has a web site comprising
<matchmaker-international>; (ii) Respondent has registered, and is using,
the domain name at issue;
(iii) said use of the domain name at issue
establishes a link to Respondent's home page which, by outlining Respondent's
three franchise
locations, is intentionally used by Respondent; (iv) said
registration and use of the domain name at issue is done only for the benefit
of Respondent and not for any of the other franchisees or for the franchise
system as a whole, prevents Complainant from directing
inquiries to
Complainant's local franchisees, and attempts to attract customers to
Respondent's own location; and (v) said registration
and use is primarily for
the purpose of disrupting Complainant's business (both directly and in the
sense of disrupting the other
franchisees) and to intentionally and
misleadingly attract consumers, since Respondent owner Mr. David Blair knew of
and ignored
Respondent's duties
(corresponding to the absences of
privilege referred to in the immediately preceding paragraph) to not
register and to not use the domain name, and since he repeatedly refused
demands and communications to him that Respondent transfer the domain name to
Complainant (which include a copy of a letter dated
August 12, 2002 from
Complainant's lawyer to Respondent owner Mr. David Blair, and which is
Complaint Exhibit #5).
B.
Respondent
Respondent
makes three main contentions.
First,
in response to Complainant's first main set of contentions, Respondent
basically contends that the domain name at issue is
not identical to the marks
that are the subjects of Complainant's two mark registrations, in that each of
the mark registrations
evidenced by Complaint Exhibit #1 includes a disclaimer
of the word MATCHMAKER apart from the mark as shown, as highlighted in Response
Exhibit #2.
Second,
in response to Complainant's second main set of contentions, Respondent
basically contends that (in view of the franchise
agreement document copy that
is Complaint Exhibit #4, and a copy of a declaration from Mr. David Blair which
is Response Exhibit
#1) Respondent has rights or legitimate interests in
respect of the domain name at issue in that, by or under said franchise
agreement,
Respondent has a privilege
to have registered, and has a privilege
to use, said domain name.
Third,
Respondent basically contends that Respondent has registered said domain name,
and is using said domain name, but that (in
view of the exhibits, and contended
privileges, referred to in the
immediately preceding paragraph hereof) such registration and use is not in
bath faith.
FINDINGS
The
Panel finds
(i) the
domain name at issue <matchmakerinternational.com>
is registered to Respondent; there are U.S. uncontestable service mark
registration 1549618 and Canadian trademark registration
TMA457626 each as to
MATCHMAKER INTERNATIONAL with a design, and in which Complainant has rights;
and the domain name at issue is
identical thereto;
(ii) Respondent
has no rights or legitimate interests in respect of the domain name at issue;
and
(iii) the
domain name at issue has been registered and is being used in bad faith.
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
and 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:
(i)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(ii)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(iii)
the domain
name has been registered and is being used in bad faith.
In
view especially of Rule 15(a), the Panel notes four rules and principles of law that it especially deems applicable to
ascertaining whether each of those three elements has been proven. First, that
Both
[dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By
judicial admission (what is not disputed); 2. By judicial notice, or knowledge
(what is known or easily knowable); 3. By judicial perception (what is
ascertained directly through the senses; cf. "real evidence");
4. By
judicial inference (what is ascertained by reasoning from facts already
ascertained by one or more of the four methods here
outlined).[1]
Second,
especially as to mode "3", that Rule 10(d) provides that "The
Panel shall determine the admissibility, relevance,
materiality and weight of
the evidence." Third, as to construing and applying Rule 10(d), especially
as to whether mode "1"
rather than mode "3" applies: a
complainant’s pleading of fact that is not disputed (or, phrased differently,
not "put
in issue") by a respondent against whom it is contended, is
an admission by that respondent,[2]
so evidence tendered as being rationally probative of (i.e. as being
"relevant to") establishing that fact becomes immaterial,
and hence
inadmissible, as to establishing that fact.[3]
Fourth, as to whether mode "2" rather than either of mode
"1" or mode"3" applies, a canvassing of law
and commentary
shows that
It
was not desirable, nor indeed possible, to foreclose the trier's use of
background information but should the matter noticed be
in the forefront of the
controversy, should the fact be determinative, the law protected the adversary
by insisting that the matter
be so commonly known, and hence indisputable, that
its notice could not prejudice the opponent.[4]
and
that "The party who has the burden of proof on the issue may have to call
on the trier to judicially notice the fact when
it comes time to analyze the
question."[5]
As for Policy paragraph 4(a)(i), Respondent's
contention basically does not take issue with the first three of Complainant's
four
contentions. Those three contentions are therefore admitted by Respondent,
and on this topic Complaint Exhibits #2 and #3 are immaterial
and therefore
inadmissible, but Complaint Exhibit #1 and Response Exhibit #2 are material
evidence. As well, Complaint Exhibit #1
and Response Exhibit #2 appear to be
relevant and admissible, and to be entirely consistent with one another and to
evidence what
they purport to evidence: Complainant owns U.S. uncontestable
service mark registration 1549618 dated July 25, 1989 and Canadian
trademark
registration TMA457626 dated May 24, 1996 (each as to MATCHMAKER INTERNATIONAL
with a heart shape as part of each "a"
in "MatchMaker," in association
with personal dating services, namely, arranging dates for others) and each of
the mark
registrations evidenced by Complaint Exhibit #1 includes a disclaimer
of the word MATCHMAKER apart from the mark as shown, as highlighted
in Response
Exhibit #2. As a result, the only real issue under Policy paragraph 4(a)(i) is
the meaning of the word "identical"
in that paragraph.
To resolve that issue, the Panel notes
that even if a service mark or trademark is words with a design, a domain name
can still be
identical thereto. See, e.g., Sweeps
Vacuum & Repair Center, Inc. v. Nett
Corp., WIPO Case No. D2001-0031, 13 April 2001, which includes that
graphic
elements, such as the
Sweeps design, not being reproducible in a domain name, need not be considered when assessing identity or confusing
similarity. See EFG Bank European
Financial Group SA v. Jacob
Foundation, WIPO Case No. D2000-0036, section 6(b)(i) (finding that the
domain name was identical to the trademark where the text of the name was
identical and only the graphic elements which cannot be reproduced in the
domain name were left out)
(underlining
added) and Park Place Entertainment
Corporation v. Mike Gorman,
WIPO Case No. D2000-0699, 5 September
2000. Moreover, in Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan.
7, 2002) it was found that <hannoverre.com> was identical to HANNOVER RE;
so too in this case:
the domain name at issue is identical to the two
registered marks "as spaces are impermissible in domain names and a generic
top-level domain such as '.com' or '.net' is required in domain names."
In view of the two immediately preceding
paragraphs, the Panel finds that Policy paragraph 4(a)(i) is proven: the domain
name at issue
<matchmakerinternational.com>
is registered to Respondent, there are U.S. uncontestable service mark
registration 1549618 and Canadian trademark registration
TMA457626 each as to
MATCHMAKER INTERNATIONAL with a design, and in which Complainant has rights,
and said domain name is identical
thereto.
INTRODUCTORY AND EVIDENTIARY MATTERS
As for Policy paragraph 4(a)(ii),
Respondent's contention basically does not take issue with the first four of Complainant's
five
contentions. Those four contentions are therefore admitted by Respondent,
and on this topic the basic facts of the copy of the franchise
agreement
document are not in issue though the legal relations (i.e. whether as a result
of those basic facts there are Policy paragraph
4(a)(ii) "rights and
legitimate interests in respect of the domain name") most certainly are in
issue. The Parties' contentions
therefore result in the copy of the franchise
agreement document, as well as the April 9, 2003 declaration of Respondent
owner Mr.
David Blair and Complainant's lawyer's August 12, 2002 letter to him,
all being material evidence.
Even conflicting evidence is no bar to
resolution of disputes that are submitted to a mandatory administrative proceeding
under the
Policy; see,e.g., Magnum
Piering, Inc. v. The Mudjackers and
Garwood S. Wilson, Sr., D2000-1525 (WIPO Jan. 29, 2001) citing both Electronic Commerce Media, Inc. v. Taos Mountain, FA 95344 (Nat.
Arb. Forum Oct. 11, 2000) and Do the
Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000). The Panel therefore has the task of
determining the relevance and admissibility of each of Complaint
Exhibits #4
and #5, and Response Exhibit #1, and, if they are admissible, the weight of
each of them.
The copy of the franchise agreement
document is clearly relevant on this topic: it especially appears to
potentially provide facts
which, when construed in view of applicable law,
result in Complainant's contended absence of Respondent privileges or Respondent's
contended presence of Respondent privileges, and in any event each Party's
submission basically points to it. On the other hand,
on this topic Mr. Blair's
declaration appears to merely state, in paragraphs 1 through 3, various
contentions that Respondent has
such privileges and has behaved within the
scope of those privileges. His declaration therefore does not appear to be
relevant on
this topic, for how can such declarations by him be rationally
probative of the presence of such privileges and of such behavior,
rather than
merely being rationally probative of, for example, his view that such
privileges exist and his view that Respondent's
behavior was within the scope
of those privileges? He apparently is not a party to the franchise agreement; nor
is there any indication
that he was involved in creating all or any aspect of
the franchise agreement; even in either of those events, his evidence would
at
best be subjective evidence of what the parties to that agreement agreed. The
Panel is willing, however, to consider his declaration
as relevant on this
topic. Similar considerations apply to the letter as to the declaration, and
the Panel is, likewise, willing
to consider the letter as relevant on this
topic.
The copy of the franchise agreement document
clearly is admissible. Aside from the relevancy concerns expressed in the
immediately
preceding paragraph hereof, Mr. Blair's declaration and the letter
also appear to be admissible.
As for weight, the October 1, 1988
franchise agreement document was made well before the dispute arose, and it is
clearly to be accorded
substantial weight on this topic, as needs be set out in
subsequent paragraphs hereof due to the rather extensive nature of that
document and the Parties submissions thereon. In contrast, Mr. Blair's
approximately one-page, four-paragraph, April 9, 2002 declaration,
though
expressly stated to be "based on [his] own personal knowledge" as
vice-president of Respondent, is also expressly
stated as being submitted (and,
it would seem, was made) in response to the Complaint. Moreover, though it is
expressly stated as
being an "affidavit" and though, in its closing
line, immediately before what appears to be his signature, he apparently
"certif[ies]" that the statements in the declaration are true, there
is no indication that it is an affidavit or statutory
declaration. Similar
considerations apply to the approximately one-page letter as to the
declaration. Therefore, it appears that
for the Panel to ascertain whether
Respondent has Policy paragraph 4(a)(ii) "rights or legitimate
interests," the Panel
should look to the franchise agreement document and
to what are contended to be or are actually applicable decisions, and should
give lesser weight to the declaration and the letter.
THE FRANCHISE AGREEMENT
Complainant
Complainant cautions that the franchise
agreement document "is mute as to the use of the internet and domain name
rights because
the web was in its infancy at the time of the original
agreement". However, Complainant then basically points to provisions
of
the document that Complainant contends created some actual duties and some
potential privileges (as part of what are sometimes
referred to as conditional
or restricted or limited licenses) regarding mark use, within both the then existing
state of technology
as well as the present state of technology: sections 1.04,
1.05, 1.07, 1.08, 7.06, and 7.12.
Section 1.04 includes that the mark
licensed by that agreement (which mark appears to have become the subject of
Complainant's U.S.
uncontestable service mark registration 1549618) is
"the exclusive property of [Complainant], and all use by [Respondent]
shall
inure to the benefit of [Complainant]" as well as that "No
right, title nor interest in or to [that mark] is granted, nor
shall any such
right, title, or interest at any time inure to [Respondent] other than the
right to use [the mark] pursuant to the
provisions of this Agreement." A
question then arises: what legal
interests of Respondent are there to use the mark pursuant to the provisions of
the franchise agreement?
Section 1.05 provides some of the answer
to that question, first, by expressly excluding from those interests,
Respondent privileges
to "directly [or] indirectly contest or aid in
contesting the validity or ownership of [the mark]." Instead, in that
section
the agreement document includes the expression "shall not"
and thereby expressly replaces such privileges by duties to
not behave in that
way. (A question then arises: does Respondent's registration and use of the mark
as a domain name indirectly aid
in contesting the validity or ownership of the
mark? It appears to provide an opportunity for a third party to do so and
although
there is potentially such a third party there is no evidence in this
proceeding that there is actually such a third party at present.)
Section 1.05
continues to answer the section 1.04 question by providing that
"[Respondent] agrees not to interfere with, in any manner, nor attempt to prohibit the use of [the mark] by any
other existing or future owner/franchisee or other licensee of [Complainant]
in
any territory except [Respondent's] exclusive territory" (emphasis added),
which territory is defined, by schedule to that
agreement, as being some listed
counties of each of Indiana, Illinois, Kentucky, Tennessee, and Missouri.
Section 1.05 is clear:
whatever privileges Respondent might have had (in
relation to Complainant) to interfere with or prohibit the use of the mark by
such
persons in such places, those privileges were replaced by actual duties
(to Complainant) that Respondent not behave that way. In
that regard, the Panel
notes that domain name registrations have global effect and are exclusionary or
interfering or prohibitory
in that if a person has a domain name registration
all other persons are excluded from it or interfered with or prohibited as to
the use of it, such that if the domain name includes a mark then those other
persons are excluded from or interfered with as to or
prohibited as to at least
that use of that mark. Respondent has a duty to Complainant, by the franchise
agreement, to not behave
that way, but by registering the domain name <matchmakerinternational.com>
Respondent has behaved contrary to that duty. Such a duty is not a "right
or legitimate interest" within the meaning
of that expression as it occurs
in Policy paragraph 4(a)(ii); nor are Respondent’s legal interests regarding
the domain name registration,
per se,
such interests.
Section 1.07 also provides some of the
answer to the question of what legal interests Respondent has to use the mark
pursuant to the
provisions of the franchise agreement, by including four
points. First, that "[Respondent] shall prominently display and maintain
in first class condition, signs, bearing [the mark] of such nature, form, color,
number, location, illumination and size as may reasonably
be required by
[Complainant]". Second, that "[Respondent] shall use [the mark]
licensed by this Agreement only in association
with the letters 'SM', or other
such symbol as [Complainant] may designate wherever [the mark] may be used,
such as in signs, advertising
or promotional materials, price lists and the
like." Third, that "[Respondent] shall not use his own name or any
other
name, word or symbol not previously approved in writing by [Complainant]
in association with [the mark]." Fourth, that "Respondent]
shall use
[the mark] only in association with the preparation, sale, or distribution of
goods and/or services specifically approved
in advance by [Complainant] and for
no other purpose." In view of those four points, section 1.07 is clear
that it is not intended
to confer a privilege to use of the mark as part of a
domain name (rather than on a sign, and the like, whereon the letters
"SM"
would also be required to appear--in any event, domain names are
not analogous to signs[6]).
Moreover, even if section 1.07 were intended to do so, the privilege would be
potential rather than actual in that for such use
to be permitted by section
1.07 there would have to have been prior approval, to Respondent, in writing by
Complainant. In this proceeding
there is no indication of such prior approval.
Instead, contrary to section 1.07, Respondent has registered as a domain name,
and
is using as a domain name, Complainant's mark in association with the name
or word or symbol ".com" in the domain name
<matchmakerinternational.com>. Respondent's section 1.07 legal
interests to use the mark pursuant to the provisions of the franchise agreement
are clearly
expressed as potential privileges, bounded by actual duties; and it
is equally clear that Respondent has behaved contrary to those
duties and that
by doing so Respondent has not thereby obtained "rights or legitimate
interests in respect of the domain name"
within the meaning of that
expression as it occurs in Policy paragraph 4(a)(ii).
Section 1.08, also, provides some of the
answer to the question of what legal interests Respondent has to use the mark
pursuant to
the provisions of the franchise agreement, by including that
goodwill associated with use of the mark shall inure to Complainant's
benefit
as well as that "[Respondent] acknowledges that valuable goodwill is
attached to [the mark] … and that [Respondent]
will use the same only in the
manner prescribed by [Complainant]". By section 1.08, if Respondent's
potential privilege to use
the mark is to become actual there must be manner of
use conditions prescribed by Complainant, yet there is basically no evidence
in
this proceeding that such prescription includes that Respondent may incorporate
the mark into a domain name <matchmakerinternational.com>
or that Respondent may use that domain name. Contrary to the franchise
agreement, Respondent has done the former and is doing
the latter, but, in view
of the part of section 1.08 as to the benefit of such use inuring to Complainant,
by that registration and
use Respondent does not thereby acquire Policy
paragraph 4(a)(ii) "rights or legitimate interests" in respect of the
domain
name.
Section 7.06 provides some of the answer
to the question of what legal interests Respondent has to use the mark pursuant
to the provisions
of the franchise agreement, by including that "If
[Respondent] desires to use any advertising or promotional material that was
not obtained by or through [Complainant], [Respondent] must submit any such proposed
material to [Complainant] prior to their use
and shall not use same until
[Complainant] has approved the same in writing." From the above discussion
of section 1.07 (especially
as to the franchise agreement requirement for using
the letters "SM") the franchise agreement's occurrences of the
expression
"advertising or promotional material" clearly does not
include domain names. Even if it did include domain names then,
to comply with
section 1.07, the domain name would have had to include the service mark
designation "SM," which the domain
name at issue does not include.
Furthermore, section 7.06 makes clear that, even if the domain name <matchmakerinternational.com> is
advertising or promotional material, Respondent's adding ".com" to
Complainant's mark and then registering the result
as a domain name makes both
the character string and the registration something that, as stated in section
7.06 "was not obtained
by or through [Complainant]," and therefore
resulted in Respondent having a duty to not use the character string (e.g. to
obtain
a domain name registration) and to not use the domain name registration
(i) unless, as stated in section 7.06, Respondent had submitted
"any such
proposed material to [Complainant] prior to their use"; and (ii) until, as
stated in section 7.06, "Complainant]
has approved the same in
writing." There is no evidence in this proceeding that Respondent had
submitted an actual (or, more
appropriately, a prospective) domain name to
Complainant prior to any Respondent use of the character string or of the
registration,
let alone any evidence that in writing Complainant has approved
either the character string or the domain name registration. The
franchise
agreement is therefore basically persuasive evidence that Respondent had, and
has, an actual duty to not obtain domain
name registration of <matchmakerinternational.com>, and to
not use that expression as a domain name, and that Respondent did not, and does
not, have a privilege to behave to the
contrary. That duty is not within the
meaning of the Policy paragraph 4(a)(ii) expression "rights or legitimate
interests in
respect of the domain name."
Section 7.12(b) also provides some of the
answer to the question of what legal interests Respondent has to use the mark
pursuant to
the provisions of the franchise agreement, by being as follows,
with emphasis added:
[Respondent] is prohibited from
purchasing or otherwise acquiring and utilizing telephone numbers issued beyond
the geographic limitations
of the purchased operating territory of
[Respondent], to include but not be limited [to] such telephone access features
as are commonly
known as "800" system numbers and "call
forwarding"; moreover, [Respondent] is prohibited from advertising in
any
and all commercial telephone listings, to include those listings as are
commonly known as "Yellow Pages" and "White
Pages", where
such listings service geographic areas other than the purchased operating
territory of [Respondent]; it is the
intention of the parties hereto that the business operations of [Respondent]
and all public business advertising will be
limited to servicing the purchased
operating territory as is herein defined in order that the operations of
[Respondent] not encroach
upon the operating territory of any other MatchMaker Owner
or facility. [Complainant] may, from time-to-time determine that a waiver
of this provision in specific instances would be in the best interests
of the
MatchMaker System; such waiver must be in
writing and the granting of a waiver shall apply but to a specific instance
and can[not] be relied upon as any assurance to [Respondent]
that any
subsequent waiver will be similarly granted; moreover, a specific waiver shall
not be deemed to be a waiver of this prohibition
generally.
Given that domain name registrations have
global effect, and that the franchise agreement document defines Respondent's
territory
as some listed counties of each of Indiana, Illinois, Kentucky,
Tennessee, and Missouri, Respondent had, and still has, a duty to
not obtain
and to not use the domain name registration <matchmakerinternational.com>, unless at the time of doing so
there is a section 7.12(b) waiver; in this proceeding, there is basically no
evidence of there
being, or of there ever having been, such a waiver.
Respondent's section 7.12(b) duty is not within the meaning of the Policy
paragraph
4(a)(ii) expression "rights or legitimate interests in respect
of the domain name."
Respondent
In contrast to the immediately preceding
discussion of sections 1.04, 1.05, 1.07, 1.08, 7.06, and 7.12, Respondent
starts off basically
by pointing to sections 1.03 and 1.07. Respondent then
says that since the wording of section 1.03 includes that "Respondent
'shall have the right to use and display' [the mark]" and since the
wording of section 1.07 includes that "[the mark is]
'licensed by this
Agreement,'" that Respondent therefore has Policy paragraph 4(a)(ii)
"rights or legitimate interests
in respect of the domain name."
Respondent's submission as to sections 1.03
and 1.07 is wrong, for two reasons. First, section 1.03 also includes that the
license
exists only "So long as [Respondent] is not in breach of any of
the provisions of this Agreement"; the above discussion
of sections 1.04,
1.05, 1.07, 1.08, 7.06, and 7.12 indicates Respondent is clearly in breach of
provisions of the franchise agreement,
so Respondent's behavior is not
protected by any Respondent privilege conferred by license but is instead
contrary to Respondent's
duties. Second, Respondent's reference to the section
1.07 occurrence of "licensed by this Agreement" ignores or
oversimplifies
an aspect of franchises and other licenses generally and of this
franchise agreement and franchise particularly: a license can have,
and this
license does have, scope. Trademark and service mark owners have
a number of rights and powers, including rights to exclude, powers to sue, and
powers as to creating licenses. A license is
permission to do what would
otherwise be unlawful to do, and the power to create a license can be unused,
such as in the case where
no license is granted; or used to the maximum, such
as in the case where the license is "unrestricted" or
"unlimited";
or used in an intermediate way, such as in the case
where the license is "restricted" or "limited" and that the
license is what is commonly called a "conditional license". The
franchise agreement document evidences a conditional license
of the service
mark that is now the subject of Complainant's U.S. service mark registration,
and the above discussion of
sections 1.04, 1.05, 1.07, 1.08, 7.06, and 7.12 indicates that because
Respondent's behavior of registering and using the domain
name <matchmakerinternational.com> is
clearly outside the scope of the license, Respondent clearly does not have
Policy paragraph 4(a)(ii) "rights or legitimate
interests in respect of
the domain name."
DECISIONS CONTENDED TO BE, OR THAT
ACTUALLY ARE, APPLICABLE
Respondent nonetheless refers to other
administrative panel decisions under the Policy, ten in all, basically as if
they are categorical
instances of franchisees or like-situated persons always having a privilege to have registered, and a privilege to use, disputed domain names. However, it appears to the
Panel that each of those decisions depended on further facts not mentioned
by
Respondent and especially upon the facts regarding agreements such as license
agreements that were involved.
Not
surprisingly then, there are administrative panel decisions under the Policy
that are opposite in effect to the apparently over-generalized
propositions
contended for by Respondent. For example, Allen-Edmonds
Shoe Corporation v. Takin’ Care of
Business, WIPO Case No. D2002-0799, 10 October 2002, includes, with
underlining added herein, that
even
where a reseller is an authorized reseller, without a specific agreement
between the parties, the reseller does not have the right to use the licensor’s
trademark as a domain name. Nikon, Inc. and Nikon
Corporation v. Technilab,
Inc., WIPO Case No. D2000-1774 (February 26, 2001); 2 T.J. McCarthy, McCarthy
on Trademarks and Unfair
Competition, § 18:52 (4th Ed. 2000) ("licensee’s
use [of a mark] inures to the benefit of the licensor-owner of the mark and
the
licensee acquires no ownership rights in the mark itself."). Thus, even if
Respondent is acting on behalf of an "authorized"
dealer (indeed,
even if Respondent were itself an authorized dealer), its use of Complainant’s
mark would not be legitimate absent a specific agreement between
Complainant and Respondent to the contrary. There is no evidence of such an
agreement here. The Panel finds that Complainant
has shown that Respondent has
no legitimate interest in the domain name.
Similarly,
see Heel Quik! Inc. v. Goldman, FA
92527 (Nat. Arb. Forum March 1, 2000) holding that use of a domain name was
subject to the terms of a license agreement and that
any use in violation of
the agreement would not be bona fide use within the meaning of the Policy.
The Panel also notes decisions such as Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) which includes that when, as in this case, "the complainant has made
a prima facie showing, the burden of
production shifts to the respondent to show by providing concrete evidence that
it has rights to or legitimate
interests in the domain name at issue"
(emphasis in original). To similar effect see, e.g., Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002)
and Twentieth Century Fox Film Corp. v.
Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002). Benstein is especially of note for it includes, as in this case,
that a respondent’s "unsupported, self-serving allegations alone are
insufficient to establish that Respondent has rights or legitimate interests in
respect to the domain name at issue."
SUMMARY
In view of all of the above, the Panel
finds that the burden of production shifted to Respondent but that on this
topic Respondent
has not met it. Accordingly, the Panel finds Respondent has
"no rights or legitimate interests in respect of the domain name"
within the meaning of that expression as it occurs in Policy paragraph
4(a)(ii).
In view of the immediately preceding
paragraph hereof, the Panel finds that Policy paragraph 4(a)(ii) is proven.
As for Policy paragraph 4(a)(iii),
Respondent's contention basically does not take issue with the first four of
Complainant's five
contentions. Those first four contentions are therefore
admitted by Respondent, and on this topic the basic facts of Respondent's
having registered the domain name <matchmakerinternational.com>,
and of using said domain name, are not in issue. However, whether as a result
of those basic facts there is Policy paragraph
4(a)(iii) domain name bad-faith
registration, and bad-faith use, most certainly is in issue. The Parties' contentions
therefore result
in the copy of the franchise agreement document, as well as
the April 9, 2003 declaration of Respondent owner Mr. David Blair and
Complainant's August 12, 2002 letter to him, all being material evidence.
The second through fifth paragraphs of
the above discussion of evidentiary matters relating to Policy paragraph
4(a)(ii) basically
apply once again, not only to the franchise agreement
document but also to paragraphs 3 and 4 of Mr. David Blair's declaration and
to
the August 12, 2003 letter to Respondent from Complainant's lawyer. Once again,
the letter has much the same status as the declaration.
The relevance,
admissibility, and weight of each of those three documents as to Policy
paragraph 4(a)(iii) is basically as they were
as to Policy paragraph 4(a)(ii).
The context in which resolution of the
issue occurs also includes Policy paragraph 4(b).
Policy paragraph 4(b) is basically
directed from a domain name registrar to a domain name registrant and prospective
mandatory administrative
proceeding respondent, and includes that
For the purposes of [Policy paragraph]
4(a)(iii), the following circumstances, in particular but without limitation,
if found by the
Panel to be present, shall be evidence of the registration and
use of a domain name in bad faith:
(i) circumstances indicating that you
have registered or you have acquired the domain name primarily for the purpose
of selling, renting,
or otherwise transferring the domain name registration to
the complainant who is the owner of the trademark or service mark or to
a
competitor of that complainant, for valuable consideration in excess of your
documented out-of-pocket costs directly related to
the domain name; or
(ii) you have registered the domain name
in order to prevent the owner of the trademark or service mark from reflecting
the mark in
a corresponding domain name, provided that you have engaged in a
pattern of such conduct; or
(iii) you have registered the domain name
primarily for the purpose of disrupting the business of a competitor; or
(iv)
by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or
other on-line location, by
creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation,
or endorsement of your web site or location
or of a product or service on your web site or location.
As for each of Policy paragraphs 4(b)(i),
4(b)(ii), and 4(b)(iii), they basically define respective types of bad-faith
registration
and provide that if any one of such types of registration has been
ascertained by a panel, then bad-faith use is in turn evidenced
via application
of the respective one of those three provisions.
As for Policy paragraph 4(b)(iv), it
basically defines a type of bad-faith use and provides that if such type of use
is ascertained
by a panel, then bad-faith registration is in turn evidenced via
application of that provision.
In this proceeding, Policy paragraphs
4(b)(i) and 4(b)(ii) appear to not be contended for (since there appear to not
be contentions
amounting to being as to "valuable consideration in excess
of [Respondent's] documented out-of-pocket costs" or as to
"[Respondent
having] engaged in a pattern of such conduct") but
Policy paragraphs 4(b)(iii) and 4(b)(iv) do appear to be contended for by
Complainant.
In response,
Respondent basically repeats various of Respondent's Policy paragraph 4(a)(ii)
contentions, but they are as inapplicable
on this topic as they were to Policy
paragraph 4(a)(ii).
As for each of Policy paragraph 4(b)(iii)
and 4(b)(iv), the above discussion of franchise agreement sections 1.03, 1.04,
1.05, 1.07,
1.08, 7.06, and 7.12 indicates the circumstances cannot be other
than within each of those Policy paragraph 4(b) provisions.
Furthermore,
there is the matter of initial interest confusion. Entry of Complainant's mark
will result in visits not only to Complainant's
web site (referred to in
uncontested Complaint contention "(i)" of Complainant's third main
set of contentions) but also
to Respondent's website which resolves through the
domain name at issue. See, e.g., Madonna
Ciccone p/k/a Madonna v. Dan Parisi
and 'Madonna.com,'WIPO Case No. D2000-0847, 12 October 2000, which is
extensively cited and applied for the proposition that even
Respondent's
use of a disclaimer on its web site is insufficient to avoid a finding of bad
faith. First, the disclaimer may be
ignored or misunderstood by Internet Users.
Second, a disclaimer does nothing to dispel initial interest confusion
that is inevitable from Respondent's actions.
Such confusion is a basis for finding a violation of Complainant's
rights.
Similarly
see, e.g., The Prudential Insurance
Company of America v. Prudential
Mortgage Loans, FA0201000103880, 20 March 2002, which includes that the
"fact that the Internet user ultimately discovers that a site is not
that
of Complainant, or that Respondent disclaims any association with Complainant,
does not cure the fault."
In view of
the immediately preceding ten paragraphs hereof, the Panel finds that Policy
paragraph 4(a)(iii) is proven.
DECISION
All
three elements required under the ICANN Policy having been established, the
Panel concludes that the requested relief shall be
GRANTED.
Accordingly, it is Ordered that the <matchmakerinternational.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Rodney C. Kyle, Panel Chairperson
Dated: May 9, 2003
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/472.html