DECISION

Creative Paradox LLC v. Talk America a/k/a Vital Basics, Inc.

Claim Number: FA0304000155175

PARTIES

Complainant is Creative Paradox LLC, Henderson, NV (“Complainant”) represented by Aaron D. Julien, of Perkins, Thompson, Hinckley & Keddy, P.A.  Respondent is Talk America a/k/a Vital Basics, Inc., Portland, ME (“Respondent”) represented by Peter E. Nussbaum, of Wolff & Samson PC.

REGISTRAR AND DISPUTED DOMAIN NAME 

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

PANEL

The undersigned, Daniel B. Banks, Jr., certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.  Co-panelists Linda M. Byrne and David H. Bernstein have similarly confirmed that they have acted independently and impartially and have no known conflict.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 21, 2003; the Forum received a hard copy of the Complaint on April 21, 2003.

On April 23, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <proteinpower.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 May 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 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@proteinpower.com by e-mail.

A timely Response was received and determined to be complete on May 22, 2003.

Complainant’s Additional Submission was received and determined to be timely on May 27, 2003.

Respondent’s Additional Submission was received and determined to be timely on May 31, 2003.

On June 9, 2003, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Linda M. Byrne, David H. Bernstein and Daniel B. Banks, Jr., as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant:

Complainants Dr. Michael R. Eades and Dr. Mary Dan Eades, individually and through their company, Creative Paradox, LLC, market health care advice and products in the area of weight loss, weight loss programs, food and food supplements for proper dietary control.  They are world-famous experts on diet and dietary supplements and, since 1996, have marketed numerous products and services under the "Protein Power" mark. 

Complainants have never attempted to formally register their rights in the "Protein Power" mark however they have continuously and exclusively used the mark in connection with their diet programs and dietary supplements for approximately seven years.  Such use of the mark in connection with their weight loss and diet products clearly establishes their trademark rights in the "Protein Power" mark.

Complainants licensed the "Protein Power" mark to Respondent from 1997 to 2002.  Complainants and Respondent sought to market existing and new products under the "Protein Power" mark and executed a certain Marketing Agreement, dated April 7, 1997.  In that Marketing Agreement, Complainants licensed the mark to Respondent, gave Respondent all rights under the copyright to the products that were created pursuant to the agreement but retained all rights in the "Protein Power" system, including all trademark rights. 

In 1999, Respondent filed for bankruptcy.  As a result, Complainants and Respondent agreed to certain revisions of the Marketing Agreement and executed a Settlement Agreement dated August 2, 2000.  Under the terms of the Settlement Agreement, in the event Complainants terminate the 1997 Marketing Agreement for any default by Respondent, all rights to the "Protein Power" mark, and the <proteinpower.com> domain name registration immediately revert to the Complainants.  On August 6, 2002, Complainants terminated the 1997 Marketing Agreement and the Settlement Agreement.  In addition, as of August 2002, Respondent ceased payment of all royalties under the 1997 Marketing Agreement and the Settlement Agreement.  Complainants currently market goods under the "Protein Power" mark in the world wide web at <eatprotein.com> and through public appearances, bookstores, supermarkets and pharmacies throughout the world. 

Respondent does not have any rights under either state or federal trademark law in the "Protein Power" mark and no longer has a legitimate interest in the <proteinpower.com> domain name.  Respondent's trademark license was terminated on August 2, 2002. 

Respondent does not currently use the mark in connection with any goods and has ceased use of the mark as an identifier of any particular goods or services.  As a result, Respondent would have no cognizable interest in the mark since any such rights would be considered abandoned.  The right of Respondent to use the mark did not survive termination of the license.

The domain name was registered and is being used in bad faith.  Respondent is using the domain name in an intentional attempt to attract, for commercial gain, Internet users seeking information of Complainants' products, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent's website.  Respondent presently sells cognitive enhancement products under the name "Focus Factor" and products to boost the immune system under the name "Immune Support".

Respondent's registration of the <proteinpower.us> domain name, which is not active, demonstrates a pattern of registration to prevent Complainants from reflecting its mark in a popular corresponding domain name.   Respondent, without Complainants' permission, previously attempted to register the "Protein Power" mark with the United States Patent and Trademark Office.  The application was filed as an "intent to use" application, and no affidavit of use has ever been filed, further indicating lack of any use of the "Protein Power" mark by Respondent.

B. Respondent:

In the Complaint, Complainants ignore three facts that are critical to the outcome of this arbitration: (1) it was expressly agreed upon between the parties that Respondent owns the <proteinpower.com> domain name, (2) Complainants do not own any trademark rights, common law or otherwise, in and to the PROTEIN POWER mark, and (3) Complainants did not, and could not "license" trademark rights to Respondent.

Complainants entered into a Marketing Agreement with Respondent, f'/k/a Talk America, Inc. ("TA) on April 7, 1997, for TA's exclusive, worldwide marketing of nutrition and weight loss products.  Pursuant to that agreement, it was acknowledged that Complainants had "written a book entitled Protein Power and in connection therewith…developed a proprietary system of nutrition and weight loss ([the] 'System')."  The Parties agreed to "develop a new product consisting of audio tapes, video tapes and work books utilizing the System (the Product)."   The Marketing Agreement states that Respondent owns the Product and has the right to exercise complete and exclusive control over the same.  Respondent's exclusive rights included, but were not limited to, the right to:

…manufacture[,] produce, develop, create, package, advertise, promote, market, sell and otherwise distribute the Product, which TA shall own, in such form and medium and through whatever means and media now existing or hereafter created, as TA in its sole judgment may choose, including, without limitation, television, radio, all print and on-line media, direct mail solicitation, direct sales, retail sales, credit card syndication and catalogue sales.

            (Marketing Agmt. Para. 1.1 (emphasis added).)

            Nowhere in the Marketing Agreement do Complainants claim any trademark right in and to the trademark PROTEIN POWER.  Nor does the Marketing Agreement contain any language, express or implied, that Complainants were licensing any trademarks or service marks to Respondent.  Rather, the Marketing Agreement specifies that TA is the owner of all intellectual property used in connection with the Product, with the limited exception of the proprietary elements of the System, which, as defined, did not include the trademark PROTEIN POWER.

            After entering into the Marketing Agreement, Respondent engaged in extensive advertising and promotion of the PROTEIN POWER mark as an indicator of source for the Product.  These efforts included Respondent's registration of the <proteinpower.com> domain name on October 2, 1997.  Respondent filed several United States trademark applications for the mark PROTEIN POWER or similar variations thereof, including application serial number 75/566,895 for the mark PROTEIN POWER filed on October 7, 1998, which was published for Opposition on April 13, 1999.  Complainants did not oppose registration, nor have they ever objected to Respondent's filing of the trademark applications.

            Following Respondent's bankruptcy filing, Complainants and Respondent became adversarial parties and, in settlement of their claims, entered into the Settlement Agreement of August 2, 2000, whereby the Marketing Agreement was amended in part.  The Settlement Agreement specifically states that Respondent owns all rights in and to the <proteinpower.com> domain name and those rights would only be transferred to the Eades if the Eades terminated the Marketing Agreement as a result of Respondent's failure to pay royalties.  The Marketing Agreement, which, except as modified by the Settlement Agreement, remained in full force and effect, states that termination would not negate TA's interest in the intellectual property rights set forth in the Agreement.

            The Settlement Agreement clearly states that the only trigger for the transfer of the domain name would be the specific failure of Respondent to pay royalties.  (Settlement Agmt. Para 3(h).)  Moreover, if the Marketing Agreement was not terminated as a result of Respondent's failure to pay royalties, but rather expired naturally, ownership of "any and all marks" was to have been "resolved by the parties following expiration of the Marketing Agreement."  (Settlement Agmt. Para. 3(i).)

            On August 6, 2002, Complainants terminated the Marketing Agreement based upon Respondent's alleged failure to market the Product to Complainant's satisfaction.  The Marketing Agreement was not terminated for failure to pay royalties.  Respondent continued to pay Complainants any and all royalties due up to and including the date of termination of the Marketing Agreement.

            Complainants have no trademark rights in the term PROTEIN POWER.  When the Marketing Agreement was executed in 1997, Complainants' only use of the term PROTEIN POWER was in connection with the title of the Eades book.  Complainants failed to assert any trademark rights either in the original Marketing Agreement or in the Settlement Agreement.  Pursuant to the Marketing Agreement and the Settlement Agreement, Respondent legitimately owns the domain name during the term thereof.

            Complainants have not demonstrated that the domain name was registered or used in bad faith since the Agreements between the parties specifically state that Respondent is the rightful owner of the domain name, which rights survived the termination of the Agreement.  Complainants knew of Respondent's registration of the domain name in 1997 and did not object.

The only allegation concerning bad faith registration raised by Complainants concerns the <proteinpower.us> domain name, which is not the subject of this proceeding.  This registration evidences that Respondent has not abandoned its rights, but rather, has continued to seek protection thereof. 

The dispute in this case is beyond the jurisdictional scope of the UDRP.  The disputed domain name ownership rights are based upon the prior business relationship from which both parties claim rights to the name. 

Complainants are guilty of attempting reverse domain name hijacking by the initiation of this arbitration because they are "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."  Complainants knew of Respondent's rights and legitimate interests in the domain name and they know that there is a clear lack of bad faith registration and use. 

C. Complainant’s Additional Submission:

Complainants' additional submission does not add anything to the record in this case.  It is a restatement and argument of the original submission.

D. Respondent’s Additional Submission:

Respondent's additional submission is also a restatement and argument of the original response. 

FINDINGS

The domain name was not registered in bad faith. 

DISCUSSION

The panel has been advised that Complainants in this case have filed a lawsuit against  Respondent in the U.S. District Court for the District of Colorado, Action No. 03-MK-1090b  The lawsuit seeks recognition of Complainant's exclusive right to use of the "Protein Power" mark and recognition of Complainant's exclusive right to use of the <proteinpower.com> domain name.  After consideration, the panel has decided to proceed with a decision in this case under the authority of Rule 18(a).  BPI Communications, Inc. and VNU Business Media, Inc. v. Boogie TV LLC, FA105755 (Nat. Arb. Forum April 30, 2002): Panel decided to proceed despite complainant filing suit in federal court for trademark and service mark infringement. 

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 the domain name has been registered and is being used in bad faith.

(3) The domain has been registered and is being used in bad faith.

In this case, the Panel has determined that the third factor is dispositive.  Complainant does not allege in the Complaint that Respondent registered the Domain Name in bad faith.  To the contrary, the only claim regarding bad faith registration covers the domain name <www.proteinpower.us>, which domain name is outside of the jurisdiction of this Panel.  Morever, Respondent asserts that it registered the Domain Name with the full knowledge and consent of the Complainant, and Complainant does not dispute that assertion in its supplemental submission.  The Panel thus finds that Respondent was authorized to register the disputed domain name and therefore it could not have registered <www.proteinpower.com> in bad faith. See Eddy's (Nottingham) Ltd v. Smith, D2000-0789 (WIPO Sept. 7, 2000) (finding no bad faith registration of the domain name where Respondent registered the domain name in good faith, without objection by Complainant, and in the interest of promoting Complainant's business); see also The Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (finding that Respondent did not register the disputed domain name in bad faith where it "registered the Domain Name with the full consent and knowledge of Complainant" and therefore "did not have the requisite bad faith when he registered the Domain Name, which is an express requirement of the Policy"); see also Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125 ("[b]ad faith intent shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful").

Having found no bad faith registration, it is not necessary for the panel to consider Complainant's claims of bad faith use or the factually complex issues of Complainant's claimed trademark rights or Respondent's claimed legitimate interest.

 

Given that the parties are now engaged in litigation over the domain name, the Panel       declines to consider Respondent's claim of attempted reverse domain name hijacking, and instead leaves any further finding regarding either parties good or bad faith to the courts.

DECISION

Because Complainant has failed to prove that Respondent registered the domain name in bad faith, the Panel concludes that relief shall be DENIED.

Daniel B. Banks, Jr., Panel Chair

David H. Bernstein

Linda M. Byrne

Dated: June 23, 2003

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