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Sales Wanted, Inc. v. Michael Tate, Matthew Perlman, E-Magine Networks, Incorporated [2005] GENDND 26 (26 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sales Wanted, Inc. v. Michael Tate, Matthew Perlman, E-Magine Networks, Incorporated

Case No. D2004-1033

1. The Parties

The Complainant is Sales Wanted, Inc., of Fort Lauderdale, Florida, United States of America, represented by Anthony McDermott of the United States of America.

The Respondents are Michael Tate, Matthew Perlman and E-Magine Networks, Incorporated, all of Fort Lauderdale, Florida, United States of America, represented by Edwards & Angell, LLP, United States of America.

2. The Domain Names and Registrar

The disputed domain names <medicalmalpracticelawoffices.com> and <personalinjurylawoffices.com> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2004. On that same date, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On December 9, 2004, Go Daddy Software transmitted by email to the Center its verification response, confirming that E-Magine Networks is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on December 14, 2004. The Center subsequently verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 4, 2005. The Respondent filed a Response with the Center on that date.

The Center appointed D. Brian King as the Sole Panelist in this matter on January 12, 2005. The Panel finds that it was properly constituted. The Sole Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The facts relevant to the current dispute are set out in the Complaint and the Response. Considering the evidence submitted, the Panel finds the following facts to have been established.

The Complainant is a corporation located in Fort Lauderdale, Florida. The Complainant’s business consists of providing online Internet advertising services to attorneys and law firms throughout the country (see Complaint at § 5a).

The business activities of the Respondent E-Magine Networks consist of the provision of advertising services similar to those of the Complainant (see id.). The Respondent Michael Tate is the President of E-Magine Networks, and the Respondent Matthew Perlman is the registered agent for E-Magine as well as one of E-Magine’s officers/directors (see id., Annex A).

The Respondent E-Magine Networks registered the disputed domain names on July 21, 2004 (<medicalmalpracticeoffices.com>) and July 9, 2004, (<personalinjurylawoffices.com>). It subsequently established a website at these same URLs offering advertising services (see Response at § B).

The Complainant is the registered owner of the domain names <personalinjurylawyer.com> (registered on September 16, 1995) and <medicalmalpractice.com> (registered on October 21, 2001). The Complainant does not claim to have any registered trademarks or service marks – in respect of its own domain names, the disputed domain names, or otherwise – but contends that it “began initial common law use of” the disputed domain names and intends to use them as service marks should it prevail in the present proceeding. From this, the Panel infers that the Complainant is asserting common-law rights in the disputed domain names, and/or in its own previously-registered domain names.

5. Parties’ Contentions

A. The Complainant

The Complainant makes the following allegations, which are not supported by exhibits or other evidence unless otherwise noted.

The Complainant is one of the fastest growing exclusive online full service multimedia and advertising companies.

The Respondent Michael Tate is the former Vice-President of Marketing for the Complainant and resigned from the Complainant’s employ on July 23, 2004. Mr. Tate is currently the President of E-Magine Networks (see Amended Complaint, Annex A), which competes with the Complainant. The Complainant claims that Mr. Tate caused E-Magine to be created and incorporated at a time when he was still employed by the Complainant and was still serving as Vice-President of Marketing for the Complainant.

The Complainant says that on or about June 30, 2004, the Complainant’s President discovered that <medicalmalpracticelawoffices.com> and <personalinjurylawoffices.com> were available for purchase. On or about July 1, 2004, the Complainant’s President supposedly asked Mr. Tate to “facilitate” the purchase of those domain names on the Complainant’s behalf. The Complainant later found out that both <medicalmalpracticelawoffices.com> and <personalinjurylawoffices.com> were in fact registered by Mr. Tate himself for the benefit and use of the Respondent E-Magine and not the Complainant.

The Complainant relies on the above-mentioned factual assertions and contends that the three elements of paragraph 4(a) of the Policy have been met.

First, the Complainant says that it intended to use the names “medicalmalpracticelawoffices” and “personalinjurylawoffices” as service marks in the future in providing online advertising services to attorneys and law firms. The Complainant argues that those names – wholly incorporated into the disputed domain names – are confusingly similar to the other domain names under which the Complainant currently does business.

Second, the Complainant argues that the Respondents have no legitimate interests with respect to the disputed domain names. In this regard, the Complainant asserts that:

- the Respondents are using the disputed domain names in connection with a bona fide offering of services that are confusingly similar to the Complainant’s business;

- the Respondents have not acquired trademark or service mark rights in the disputed names; and

- the Respondents are not making a legitimate noncommercial or fair use of the disputed domain names, without the intent for commercial gain; rather, the Respondents are misleadingly diverting consumers to their own sites and tarnishing the goodwill of the Complainant.

Finally, the Complainant submits that the Respondents have registered and used the disputed domain names in bad faith, for the following reasons:

- the Respondents have registered the disputed domain names in order to prevent the Complainant from registering them;

- the Respondents have registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; and

- by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ web sites by creating a likelihood of confusion with the Complainant’s web sites as to the source, sponsorship, affiliation, or endorsement of the Respondents’ web sites, or a product or service offered thereon.

B. The Respondents

The Respondents contend in their Response that the three elements of paragraph 4(a) of the Policy have not been met. Furthermore, they request the Panel to make a finding of reverse domain name hijacking.

First, the Respondents assert that the Complainant does not have trademark, service mark or other protected rights in the disputed domain names or, indeed, in its own domain names. The Respondents further argue that even if the Complainant had protected rights in its own domain names – <personalinjurylawyer.com> and <medicalmalpractice.com> – the disputed domain names <personalinjurylawoffices.com> and <medicalmalpracticelawoffices.com> are not confusingly similar to the Complainant’s domain names.

Second, the Respondents argue that they have rights or legitimate interests in respect of the disputed domain names. The Respondents assert that, before receiving any notice of the dispute, they began using the disputed domain names as active web sites offering their services and that, in fact, the Complainant acknowledges that the Respondent’s use of the domain names is in connection with a bona fide offering of services. Furthermore, the Complainant acknowledges that the Respondents are commonly known by the disputed domain names (citing Amended Complaint at § 5(b)(ii)).

Third, the Respondents argue that the domain names have not been registered and are not being used in bad faith. The Respondent Michael Tate admits that he was formerly employed by the Complainant, but denies in a sworn affidavit that the Complainant asked him to acquire any domain names on behalf of the company, including the domain names at issue (see Affidavit of Michael Tate, Annex B to the Response, at § 5). The Respondents assert that they have registered and have used the disputed domain names in connection with a bona fide offering of goods and services, and not to disrupt the business of a competitor or create a likelihood of confusion with the Complainant’s web sites (see id. at § 7).

Finally, the Respondents assert that the Complainant brought this proceeding in bad faith. They claim that the Complainant has initiated various other court proceedings against them – apparently based on Michael Tate’s former employment by Sales Wanted, Inc. and his participation in starting up a competing business – and that the present Complaint was filed shortly after the Complainant received an unfavorable decision in one of these actions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:

(i) The domain name is identical or confusingly similar to a trademark or a service mark in which the complainant has rights; and

(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.

The Complainant bears the burden of proof on each of these elements. They will be examined in turn below.

A. Identical or Confusingly Similar

The first issue to be addressed is whether the Complainant has rights protected under the Policy. All that has been demonstrated in the Complaint is that the Complainant has registered and is using the domain names <personalinjurylawyer.com> and <medicalmalpractice.com>. The Complainant says it had the intention to use the disputed domain names as service marks, but submits no evidence in this regard. Indeed, the Complainant has not submitted evidence to support a claim to protected rights in any mark. The closest the Complainant comes is by suggesting that it has protected “common law” rights, although whether it asserts to have them in its own domain names (<personalinjurylawyer.com> and <medicalmalpractice.com>) or the disputed domain names (<personalinjurylawoffices.com> and <medicalmalpracticelawoffices.com>) is unclear. The Complainant has not, however, evidenced or even properly pleaded that it has actually obtained such rights in the disputed domain names, or even its own domain names (to which the disputed domain names are allegedly confusingly similar). See Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105 (April 13, 2000) (describing test for common law trademark rights).

The Complainant has the burden under the Policy of establishing that it has rights in a trademark or service mark to which the disputed domain names are identical or confusingly similar. It has not done so and, accordingly, its claim must fail.

B. Rights or Legitimate Interests

Given the Panel’s finding under Section A above, it is not necessary to address the second requirement under paragraph 4(a) of the Policy. For the sake of completeness, however, the Panel points out that the Complainant concedes that the Respondents “are commonly known by” the disputed domain names (Amended Complaint, § 5(b)(ii)), a circumstance identified in the Policy as establishing legitimate rights and interests.

It is likewise unnecessary, in light of the determination in Section A above, to make a finding on the requirement of bad faith registration and use.

D. Reverse Domain Name Hijacking

The Respondents seek a finding of attempted reverse domain name hijacking, saying the Complaint was brought in bad faith in response to an adverse ruling on November 9, 2004, in a separate state court action (see Response at p. 7; Affidavit of Michael Tate, Annex B to the Response, at §§ 9-10).

Article 1 of the Rules defines “Reverse Domain Name Hijacking” as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Article 15 of the Rules permits a finding to this effect only where the complaint as a whole was brought in bad faith or primarily to harass the domain-name holder.

In the present case, it is clear that the Complaint lacked supporting evidence. However, on the basis of the facts alleged, there was an arguable basis for bringing the Complaint.

The Complaint failed in this case largely due to an absence of sufficient proof. This does not establish that the allegations were brought in bad faith, see Microgaming Systems Anstalt v. Sergey Milutin, WIPO Case No. D2002-0213 (August 23, 2002), nor have the Respondents otherwise succeeded in making that showing. The Panel can therefore not find that the Complainant’s actions or behavior are such that a finding of reverse domain name hijacking is justified here.

7. Decision

For all the foregoing reasons, the Complaint is denied.

D. Brian King
Sole Panelist

Dated: January 26, 2005