National Arbitration Forum

DECISION

Tech International, Inc. d/b/a Health Tech v. Clear Choice Of New York

Claim Number: FA0411000372828

PARTIES

Complainant is Tech International, Inc. d/b/a Health Tech (“Complainant”), 1095 Windward Ridge Parkway, Ste 150, Alpharetta, GA 30005.  Respondent is Clear Choice Of New York (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <clearchoice-affiliates-secure-shopping-cart.biz>, registered with Go Daddy Software, Inc.

PANEL

The undersigned 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.

Richard Hill as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 29, 2004.

On November 29, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <clearchoice-affiliates-secure-shopping-cart.biz> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 December 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 28, 2004 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@clearchoice-affiliates-secure-shopping-cart.biz by e-mail.

A timely Response was received and determined to be complete on January 7, 2005.

On January 13, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the sole owner of the “CLEAR CHOICE” trademark, United States Registration Numbers 2,264,493 and 2,483,055 and Canadian Registration Number 548,063.  The goods with which the “CLEAR CHOICE” mark is used relate to nutritional and dietary supplements in the form of carbohydrate shakes, herbal teas, herbal capsules and tablets, liquid additives, and beverages.

Complainant is the exclusive distributor for a line of CLEAR CHOICE products that are sold to online retailers and hundreds of stores in the United States and Canada.  In addition, Complainant markets and sells its CLEAR CHOICE products directly to individuals throughout the world.  Complainant has been in business since 1993 and has sold over one million CLEAR CHOICE products since that time.

Complainant selectively grants to qualified companies and individuals a limited license to use the CLEAR CHOICE mark, in addition to other licensed marks and copyrights, used in association with the operation of Authorized Dealer (hereinafter referred to as “Agent”) websites.  Respondent was an Agent for Complainant and, as such, was granted a limited license to use Complainant’s intellectual property on its websites pursuant to an Internet Retailer Agreement (the “Agreement”) entered into on February 27, 2003. The Agreement was breached on or before October 1, 2004 and the Agreement was terminated by Complainant for cause and Respondent was notified on November 2, 2004.

In direct violation of its specific contractual obligations under the Agreement, Respondent has appropriated for its own use the disputed domain name <clearchoice-affiliates-secure-shopping-cart.biz>, which contains the identical trademark owned by Complainant.

Respondent has used, and is continuing to use, the domain name in connection with an offering of Complainant’s goods.  However, such use has been a restricted use subject to the terms of the Agreement.  Any use in violation of the Agreement cannot be a bona fide use within the meaning of the Intellectual Property provision.

Respondent’s actions with respect to the continued use of the domain name after Complainant’s termination of the Agreement for cause evidence bad faith.  Respondent has been promoting and selling competing products using the domain name containing the CLEAR CHOICE mark, thereby disrupting the business of Complainant.  Although Respondent is no longer an Agent of Complainant, Respondent has persisted in using the trademarks of Complainant for commercial gain, to misleadingly divert consumers, and to tarnish the trademark at issue.  In attempting to attract, for commercial gain, customers by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, endorsement of the websites, Respondent has acted in bad faith.

B. Respondent

Respondent denies the factual allegations of the Complaint.  Respondent has operated as Clear Choice of New York since December 1998 with Complainant’s knowledge and approval.  Respondent has used the disputed domain name, <clearchoice-affiliates-secure-shopping-cart.biz>, at all times in connection with the bona fide offering of goods and services including the sale of Complainant’s products with Complainant’s full knowledge and awareness.  Respondent did not register or use the disputed domain name in bad faith.  Accordingly, there is no basis for transferring the disputed domain name to Complainant.

Nevertheless, the disputed domain name is not critical to Respondent’s business and in the interest of saving the cost involved in defending its rights to the disputed domain name, Respondent stipulates for the Panel to transfer the disputed domain name to Complainant.  Where a Respondent stipulates to transfer a domain name to a Complainant, the panel need simply transfer the domain name.  See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. - Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003).

FINDINGS

The panel will not make any findings of fact, for the reasons explained below.

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.”

In this case, the parties have both asked for the domain name to be transferred to Complainant.  In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties.  Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.

The same conclusion was reached by the Panel in Boehringer Ingelheim Int’l GmbH v. Modern Ltd. - Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003); in Alstyle Apparel/Active Wear v. Schwab, FA 170616 (Nat. Arb. Forum Sept. 5, 2003); and in Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004).

DECISION

Given the common request of the parties, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <clearchoice-affiliates-secure-shopping-cart.biz> domain name be TRANSFERRED from Respondent to Complainant.

Richard Hill, Panelist
Dated: January 27, 2005

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