DECISION

 

Matchmaker International Development Corporation v.  Matchmaker International, Lou Paravate and Denise Paravate

Claim Number: FA0309000198893

 

PARTIES

Complainant is Matchmaker International Development Corporation ("MIDC"), Rocky River, OH (“Complainant”) represented by Philip I. Frankel, of Bond, Schoeneck & King, PLLC, One Lincoln Center, Syracuse, NY 13202-1355.  Respondent is Matchmaker International, Lou Paravate and Denise Paravate, Pensacola, FL (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <matchmakerinternational.cc> registered with TLDs, Inc. d/b/a SRSplus and <matchmakerinternational.net> registered with Go Daddy Software, Inc.

 

PANEL

Each of 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.

 

Honorable Robert T. Pfeuffer (Ret.) as Panel Chairperson, and Houston Putnam Lowry (Chartered Arbitrator) and Rodney C. Kyle as Co-Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 30, 2003; the Forum received a hard copy of the Complaint on October 6, 2003.

 

As of October 3, 2003, both TLDs Inc. d/b/a SRSplus and Go Daddy Software, Inc. have confirmed by e-mail to the Forum that the domain names <matchmakerinternational.cc> and <matchmakerinternational.net> are registered with TLDs Inc. d/b/a SRSplus and Go Daddy Software, Inc. respectively and that the Respondent is the current registrant of the names.  TLDs Inc. d/b/a SRSplus and Go Daddy Software, Inc. have verified that Respondent is bound by the TLDs Inc. d/b/a SRSplus and Go Daddy Software, Inc. registration agreements 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 October 14, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 3, 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.cc and postmaster@matchmakerinternational.net by e-mail.

 

A timely Response was received and determined to be complete on November 3, 2003.

 

A timely Additional Submission from Complainant was received and determined to be complete on November 10, 2003.

 

A timely Additional Submission from Respondent was received and determined to be complete on November 17, 2003.

 

On November 19, 2003, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Robert T. Pfeuffer (Ret.) as Panel Chairperson, and Houston Putnam Lowry (Chartered Arbitrator) and Rodney C. Kyle as Co-Panelists. Panelist Rodney C. Kyle authored the majority decision.

 

RELIEF SOUGHT

Complainant requests that the registrations of the domain names at issue be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Basically, in the Complaint, Complainant makes three main sets of contentions, including to submit evidence contended to support aspects of them.

 

FIRST MAIN SET

In the first main set of contentions, Complainant basically makes contentions by way of four points.

 

The first point is that Complainant is a New York corporation, operating since 1983, that provides personal dating services through its licensed and franchised facilities located in various states across the United States.

 

The second point has three sub-points and is that the mark MATCHMAKER INTERNATIONAL (with a heart shaped “a” design as part of the words “MatchMaker International”) is a service mark (i) registered by the U.S. Patent & Trademark Office (“PTO”) on July 25, 1989 under Registration No. 1,549,618 for personal dating services (i.e. arranging dates for others) and by the Canadian Intellectual Property Office on May 24, 1996 under Registration No. TMA457626— all of which is evidenced by Complaint Exhibit 1; (ii) used in conjunction with a franchise program that utilizes the mark as part, and indeed as a foundational and integral part, of its franchise system; (iii) as to which, on April 13, 1995, Respondent’s Lanham Act, 15 U.S.C., Section 15 Affidavit was accepted by the PTO, acknowledging Respondent’s uncontestable right to the use of that mark for those services.

 

The third point has two sub-points, each sub-point being to the effect that a respective one of the domain names at issue is registered to Respondent: (i) the domain <matchmakerinternational.cc> has, as the Registrant and Administrative Contact, Lou Paravate of “Matchmaker International” (as evidenced by the copies of the domain name registration records that are Complaint Exhibit 4) and, although the full name of the latter entity is not specified, it can be inferred to be “Matchmaker International of Florida, Inc.” of principal address 5700 N. Davis Hwy., Pensacola, Florida 32503 and having Mr. Paravate is an owner and principal (as evidenced by the copies of the Florida Secretary of State, Division of Corporations, records of incorporation that are Complaint Exhibit 2); and (ii) the domain <matchmakerinternational.net> has, as the Registrant, “Matchmaker International” and, as the Administrative Contact, Denise Paravate, and, on the same basis as set out in point “(i)” of this paragraph and because of the domain’s filing address and direct link to the domain <matchmakerinternational.cc>, the owner of the domain <matchmakerinternational.net> can be inferred to be “Matchmaker International of Florida, Inc.”

 

The fourth point is that each of the domain names at issue is identical to Complainant’s MATCHMAKER INTERNATIONAL mark, as per MatchMaker Int’l Dev. Corp. v. Kaiser Dev. Corp. Inc., FA 146933 (Nat. Arb. Forum May 9, 2003) and cases cited therein on that point.

 

SECOND MAIN SET

In the second main set of contentions, Complainant basically contends by way of two points that Respondent has no “rights or legitimate interests” in respect of each of the domain names at issue.

 

The first point has seven sub-points and is to the effect that Respondent Lou Paravate and Respondent Matchmaker International of Florida, Inc. have a limited license from Complainant, to use of the mark MATCHMAKER INTERNATIONAL, pursuant only to a Stipulation of Settlement dated October 6, 1994 (the “Settlement”), evidenced by the copy of the Settlement document that is Complaint Exhibit 3. The sub-points are as follows: Respondent Lou Paravate and Respondent Matchmaker International of Florida, Inc. (i) rights and privileges as to using the mark MATCHMAKER INTERNATIONAL are limited by, and derive only from, the Settlement (which is mute as to the use of the Internet and domain name rights because the web was not contemplated at the time of the Settlement) and there has never been any specific authorization for them to use the mark as a domain name so they do not have a right or privilege to register either of the domain names at issue; (ii) in Section 1 of the Settlement, agree and acknowledge that Complainant is the sole and absolute owner of the MATCHMAKER INTERNATIONAL mark, that they have no right, title or interest in the MATCHMAKER INTERNATIONAL mark, and that they do not own, directly or indirectly, any or all of the legal interests in and to the MATCHMAKER INTERNATIONAL mark; (iii) use of the mark does not inure to their benefit and they have no right to the mark except in the sense of having the privilege to use the mark as provided in the Settlement— as per  MatchMaker Int’l Dev. Corp. v. Kaiser Dev. Corp., citing Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) and 2 T.J. McCarthy on Trademarks and Unfair Competition, § 18:52 (4th Ed. 2000); (iv) by Section 20 of the Settlement, are limited in their privilege of use of the mark to the A.D.I. Territories (i.e. “Area of Dominant Influence” territories, which refers to the area covered by a television broadcast signal) of Chattanooga, Mobile, Pensacola, and Savannah, subject to other non-related terms contained in the Settlement, whereas their use of the mark on the web effectively establishes a world wide use and therefore exceeds the geographical scope provided in the Settlement and violates the Settlement; (v) by Section 31 of the Settlement, have the understanding (and as per Complainant’s intent) that Complainant has no plans to sell or otherwise divest itself of its mark and maintains its exclusive ownership in the mark; (vi) do not own a state or U.S. trademark registration in the words “Matchmaker International”; and (vii) have steadfastly been objected to by Complainant as to their use of the domain <matchmakerinternational.cc>, so Complainant never would have granted its consent for such use of either of the domain names at issue.

 

The second point is that Respondent filed for the domain name registration of each of the domain names at issue, as evidenced by the copies of the domain name registration records that are Complaint Exhibit 4, and that Respondent’s registration and use of each of the domain names at issue was without authorization and contrary to the Settlement.

 

THIRD MAIN SET

In the third main set of contentions, Complainant basically contends by way of four points that Respondent registered, and is using, each of the domain names at issue in bad faith.

 

The first point has two sub-points and is that Respondent, by disrupting and, more particularly (as per the second through fourth points), by intentionally interfering with, Complainant’s business practices, is guilty of bad faith: (i) Complainant’s licensees and franchisees exist throughout the United States, and as a result Complainant seeks to have one central location to market the franchise and to direct customers’ inquiries to their local franchise operation; and (ii) Respondent’s registration of the domain names at issue has prevented Complainant from using its registered mark in those domains to provide information about its company, its services, and its franchisees, and therefore disrupts Complainant’s business practices.

 

The second point is that Respondent has hijacked Complainant’s mark and franchise marketing system: each of the domain names at issue establish a link to the <matchmakertinternational.cc> home page outlining its five franchise locations and are used only for the benefit of Respondent and not for other licensees, franchisees or the franchise system as a whole (e.g. if a customer in Florida logs on to the site and sees that the five locations are not nearby, the customer may assume that it is only linked to those offices and that there are no other offices in Florida, Alabama or Tennessee, which would be untrue and is an attack on the entire franchise as a whole since it prevents Complainant from directing inquiries to all its local franchisees).

 

The third point is that, as set forth above regarding absence of Respondent “rights or legitimate interests” in respect of each of the domain names at issue, whether by contract or otherwise Respondent has no right or privilege to register or use either of the domain names at issue, and includes the following four sub-points: (i) Respondent never sought prior approval for the use of the MATCHMAKER INTERNATIONAL mark as a domain name, nor was such permission ever granted by Complainant; (ii) it is obvious that Respondent’s use of the domain names at issue to advertise its services virtually everywhere in the world is a breach of the territorial limitations that are set forth in the Settlement; (iii) Respondent’s use of the mark to promote Respondent’s locations and foreclose Complainant’s ability to market itself to the public at large and to advertise and promote all its locations as a franchise was done intentionally; and (iv) such use and hijacking by Respondent is evidence of bad faith, because Respondent knew it had a limited privilege to use the mark MATCHMAKER INTERNATIONAL and ignored the limitations on that privilege when it registered each of the domain names at issue. 

 

The fourth point has three sub-points, and is to the effect that Respondent’s refusal to relinquish the domain names at issue is also evidence of bad faith, in that (i) Respondent Lou Paravate and Respondent Matchmaker International of Florida, Inc. were demanded of by Complainant, through Complainant’s attorneys, to transfer the registration of the domain name <matchmakerinternational.cc> to Complainant, as evidenced by a copy of a letter dated August 14, 2003 that is Complaint Exhibit 5; (ii) Respondent Lou Paravate and Respondent Matchmaker International of Florida, Inc. refused to transfer the registration of that domain name to Complainant; (iii) it is clear that Respondent registration of each of the domain names at issue was primarily for the purpose of disrupting the business of Complainant and to attempt to attract customers to Respondent in contravention of the Settlement.

 

B. Respondent

Basically, in the Response, Respondent makes three main sets of contentions, including to submit evidence contended to support aspects of them.

 

FIRST MAIN SET

In response to Complainant’s first main set of contentions, Respondent does not dispute this element of the Complaint.

 

SECOND MAIN SET

In response to Complainant’s second main set of contentions, Respondent contends that, in respect of each domain name, Respondent has a legitimate interest based on paragraphs 4(c)(i) and 4(c)(ii) of the Policy.

 

As for Policy ¶ 4(c)(i), Respondent contends by the way of four points.

 

The first point has four sub-points and is that (i) Respondent is authorized by the Settlement to engage in operating five businesses in four states; (ii) Respondent engages in operating those business in those states; (iii) such operation includes the registration, and use, by Respondent, of the domain names at issue; and (iv) such registration and use is authorized by the Settlement’s paragraph 20 and results, as per Mark Travel Corp. v. ATHS, FA 154644 (Nat. Arb. Forum May 29, 2003) and like cases on that point, in a legitimate interest within Policy ¶ 4(c)(i).

 

The second point has two sub-points and is that (i) Complainant contends that the Settlement does not provide for Respondent’s use of the domain names at issue; and (ii) Complainant’s contention in that regard is wrong in that, (a) for the purposes of this proceeding, a registrant’s right to use a domain name arises not from contractual rights with another party but, rather, under the Policy, and that, in this case the Policy permits use of a domain name for the bona fide offering of services and (b) the Settlement does not prohibit use of the MATCHMAKER INTERNATIONAL mark in a domain name and instead broadly states that Respondent “will be permitted the use of the [MATCHMAKER INTERNATIONAL] Service Mark.”

 

The third point has two sub-points and is that (i) Complainant contends that Respondent’s Internet use of each of the domain names at issue establishes a worldwide usage of each of the domain names at issue and therefore violates the Settlement by exceeding the geographic scope of the Settlement; and (ii) Complainant’s contention in that regard is wrong in that, (a) accessibility of a website to users located all over the world does not mean that a website publisher is promoting the site to the entire world, any more than a business that can receive phone calls or mail from the rest of world is promoting its business outside of its local markets, (b) if it is true that the fact that a domain name can be accessed from a geographic region means the publisher is doing business there, then Complainant, too, would be violating the Settlement, since Complainant is prohibited thereunder from operating Matchmaker International businesses “in competition with any MatchMaker International facility operated by Mr. Paravate,” as evidenced by Settlement paragraph 16 and (c) taking Complainant’s argument to the extreme, Complainant would be prohibited from marketing a dating service on the Internet under any name, as it would compete with Respondent’s business, since any website operated by Complainant could be accessed from within Mr. Paravate’s protected territories.

 

The fourth point has two sub-points and is that (i) Complainant contends that Matchmaker Int’l Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Nat. Arb. Forum May 9, 2003) stands for the proposition that Respondent has no right or privilege to the mark other than the privilege to use the mark as provided in the Settlement; and (ii) Complainant’s contention in that regard is wrong in that the decision dealt with a franchise agreement rather than a settlement agreement and so has no relevance.

 

As for Policy ¶ 4(c)(ii), Respondent contends by way of three points that Respondent has been commonly known by its corporate name: (i) as evidenced by Complaint Exhibit 2 as well as the affidavit of Louis A. Paravate that is Response Exhibit 1, a USA Today article dated October 25, 1988 that is Response Exhibit 2, a U.S. registered trademark for the term MATCHMAKER INTERNATIONAL filed June 9, 1983 (U.S. Registration No. 1304462) but which is no longer active and of which Louis A. Paravate was the first owner as evidenced by a U.S. Patent and Trademark Office (“PTO”) Trademark Electronic Search System report that is Response Exhibit 3; (ii) the domain names at issue are both registered to Respondent; and (iii) Complaint’s naming of Respondent in the style of cause of this proceeding.

 

THIRD MAIN SET

In response to Complainant’s third main set of contentions, Respondent contends by way of four points that, in respect of each domain name, Respondent did not register, and is not using, the domain name at issue in bad faith.

 

The first point has two sub-points and is that (i) Complainant contends that Complainant has been prevented from using its registered mark as a domain to provide information about its company; and (ii) Complainant’s contention in that regard is wrong in that, (a) Complainant owns <matchmakerinternational.com>, so it may not avail itself of this argument, as per Mark Travel Corp., supra to the effect that “Complainant is not being blocked from using its trademarks as a domain name because it has eight domain names incorporating its marks” including the .com version and (b) even if Complainant were prevented from using its mark, that is irrelevant since it is Respondent’s intent to prevent Complainant from using its trademark, along with evidence of a pattern of such activity, that establishes bad faith under paragraph 4 (b)(ii) of the Policy and, as per Mark Travel Corp., supra, there is no evidence of an intent or pattern here on the part of Respondent.

 

The second point has two sub-points and is that (i) Complainant contends that Respondent’s website is used solely for Respondent’s benefit; and (ii) Complainant’s contention in that regard is wrong in that, it is irrelevant since (a) there is no obligation on Respondent’s part to promote other franchises owned by Complainant, (b) Respondent is not required, as suggested in the Complaint, to seek Complainant’s approval to use domain names incorporating Respondent’s own business name, so (c) neither does Respondent’s failure to seek such approval, nor does Respondent’s failure to surrender the domain names at issue to Complainant, constitute bad faith.

 

The third point is that there is no evidence that Respondent registered each of the domain names at issue to disrupt Complainant’s business.

 

The fourth point is that there is no evidence that Respondent has intentionally attempted to attract users to its website by creating a likelihood of confusion with Complainant’s mark, the Respondent clearly identifies each of its own offices on its web page designated “Locations,” and the page has a prominent statement instructing users to “please visit www.matchmakerinternational.com for other locations” as evidenced by the web page print-out that is Response Exhibit 5.

 

C. Additional Submissions

Neither Party’s Additional Submission appears to permissibly provide anything

pertinent that, in view of the Complaint and the Response, was not already apparent to

the Panel as being at issue in this proceeding or as being the responsibility of the Panel.

 

FINDINGS

The majority of the Panel (hereinafter “the majority”) finds

(i)         each of the domain names at issue is registered to Respondent, there are U.S. uncontestable service mark registration 1,549,618 and Canadian trademark registration TMA457626 each as to MATCHMAKER INTERNATIONAL with a design, and in which Complainant has rights, and each of the domain names at issue is identical thereto;

Respondent has no rights or legitimate interests in respect of either of the domain names at issue; and

each of the domain names at issue has been registered and is being used in bad faith.

 

As to points “(ii)” and “(iii)” of the immediately preceding paragraph, Co-Panelist Lowry dissents (hereinafter “the dissent”).

 

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:

the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in 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 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).

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, 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. 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.

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.”

 

Identical or Confusingly Similar

The third of the four rules and principles of law set out in the immediately preceding paragraph hereof is applicable to the Parties’ contentions on this topic: the Panel finds that Respondent admits Complainant’s first main set of contentions.

 

In view of the immediately preceding paragraph, the Panel finds that on this topic Complaint Exhibits 1, 2, and 4 are immaterial and that Policy ¶ 4(a)(i) is proven: each of the domain names at issue is registered to Respondent, there are U.S. uncontestable service mark registration 1,549,618 and Canadian trademark registration TMA457626 each as to MATCHMAKER INTERNATIONAL with a design, and in which Complainant has rights, and each of said domain names is identical thereto.

 

Rights or Legitimate Interests

This part of this discussion is basically as to Policy ¶ 4(c)(i) and 4(c)(ii), and the context in which this part of this discussion occurs includes Policy ¶ 4(c) and decisions such as Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).

 

Policy ¶ 4(c) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that

When you receive a complaint, you should refer to [Rule 5] in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of [Policy paragraph] 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial 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.

(See footnote 2 hereof for some provisions of Rule 5.)

 

Policy ¶ 4(c)(iii) is not contended for in this proceeding.

 

As for Policy ¶¶ 4(c)(i) and (ii), they are contended for by Respondent as part of Respondent contending against, and therefore putting in issue, Complainant’s second main set of contentions. Respondent does so through Respondent’s second main set of contentions. However, as the Panel finds in the following paragraphs, neither Policy ¶ 4(c)(i) nor Policy ¶ 4(c)(ii) avails Respondent.

 

The fourth of Respondent’s points as to Policy ¶ 4(c)(i) basically takes issue with Complainant’s contention that Matchmaker Int’l Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Nat. Arb. Forum May 9, 2003) is relevant to this case, and does so by contending this case deals with a settlement agreement whereas that decision dealt with a franchise agreement. Respondent’s contention is therefore to the effect that what is dispositive of the applicability or inapplicability of that decision is the merely formal difference between the titles that appear on or are applied to such types of agreement documents, i.e. “franchise” versus “settlement”. In accordance with the Policy and the Rules, and with potentially applicable principles from or in Matchmaker Int’l Dev. Corp. v. Kaiser Dev. Corp., that contention will not dissuade this Panel from dealing with the substance of the Settlement.

 

The second of Respondent’s points as to Policy ¶ 4(c)(i) basically takes issue with Complainant’s contention that the Settlement evidences Respondent’s duties to not register and not use each of the domain names at issue. Said contended duties are contended against by Respondent, alternatively, as being absent either in principle (i.e. that the Settlement is a contract and Respondent’s duties arise not by contract between Respondent and Complainant but instead arise under the Policy, and in turn that Respondent’s registration and use of each of the domain names at issue is part of bona fide offering of services under the Policy and so are therefore within the scope of privileges conferred by or under the Policy) or as being absent in this particular case (i.e. that the Settlement does not create Respondent duties to not register and not use each of the domain names at issue and instead, from the Settlement, Respondent has privileges to use Complainant’s mark, including to use that mark in registering each domain name and using each domain name). Each Respondent contention, i.e. the contention on the basis of principle and the contention on the basis of particulars, is wrong, each for its own reasons.

 

As for the contention on the basis of principle, Respondent, and the dissent, basically do not indicate from whence this Panel is to attribute “rights or legitimate interests” within the meaning of Policy ¶ 4(a)(ii). A factor in their approach may well be to apply a widely disseminated, incorrectly quoted, version of Rules paragraph 15(a), in which, unlike the correctly quoted passage set out above, the second of the four occurrences therein of the word “and” is missing. In any event, this Panel is basically a law-applying body rather than a law-making body and it is from applying law to facts ascertained in accordance with law that this Panel discerns first what Respondent legal interests exist in this case and then which if any of them are within the scope of Policy ¶ 4(c). Two points are associated therewith.

 

First, other than Complainant, persons in at least the U.S. (such as Respondent) have duties from U.S. trademark law that include but are not limited to duties to (i) not register a domain name that includes the text of the mark covered by Complainant’s U.S. registered trademark; and (ii) not use that domain name in association with services specified in the trademark registration. (See e.g. PACCAR Inc. v. TeleScan Technologies, L.L.C., 319 F.3d 243 (6th Cir. 2003) available at <http://pacer.ca6.uscourts.gov/cgi-bin/getopn.pl?OPINION=03a0040p.06>.) Those duties are confirmed by, and are part of the context of, the Policy, in at least two ways. First, Policy ¶ 2 for the “.net” domain name at issue is directed from a domain name registrar to a prospective domain name registrant-respondent and is as follows:

By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.

(Emphasis added; Policy ¶ 4.1 for the “.cc” domain name at issue is basically to the same effect.) Second, the Policy “is less about legislation than about the efficient application of existing law in a multijurisdictional and cross-territorial space.” (Emphasis added; Second WIPO Report, “The Recognition Of Rights And The Use Of Names In The Internet Domain Name System -- Report of the Second WIPO Internet Domain Name Process”, 3 September 2001, and available on-line at <http://wipo2.wipo.int/process2/report/html/report.html#1>, paragraph 66, as to the First WIPO Report process of proposing the Policy.)

 

Second, MatchMaker Int’l Dev. Corp. v. Kaiser Dev. Corp., supra, includes the above-cited summaries of law from Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) and 2 T.J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 18:52 (4th Ed. 2000):

[T]here 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 Corp. v. Takin’ Care of Business, D2002-0799 (WIPO Oct. 10, 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. v. Technilab, Inc., D2000-1774 (WIPO Feb. 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.

 

As for the contention on the basis of particulars, this Panel turns initially to the first and third of Respondent’s points as to Policy ¶ 4(c)(i) and to the particular provisions of the Settlement, to discern what if any privileges the Settlement defines (i.e. what is their scope as to territory and activity) and whether Respondent’s registration and use of each of the domain names at issue within the scope of those privileges.

 

To a limited extent, Respondent’s trademark law duties have been overcome by the Settlement’s including a license from Complainant (i.e. permission from Complainant to Respondent for Respondent to do what it would otherwise be unlawful for Respondent to do); the license is to the corporate Respondent and to Mr. Paravate, and, as far as this case is concerned, only to them. The result is that Respondent’s legal interests regarding Complainant’s mark includes privileges (sometimes referred to in some legal discourse as liberties) although not Respondent’s rights per se. Outside the scope of those privileges, or otherwise in the absence of those privileges (such as in the case of Ms. Paravate who has no license from Complainant whatsoever), Respondent still has those duties from trademark law and that are confirmed by, and are part of the context of, the Policy.

 

The first and third of Respondent’s points as to Policy ¶ 4(c)(i) are wrong because they confuse transmission with reception, and more particularly confuse actual transmission with mere reception capability, and also because they confuse having facilities at particular geographic locations (and merely advertising within the particular A.D.I.s) with doing business on the Internet. (For example, if the Panel were to take the approach of pointing to the impossibility of Respondent preventing Internet users from outside Respondent’s license area from accessing a Respondent website then the Panel would basically be blaming Complainant for Respondent’s unlawful behavior of registering and using the domain names at issue. For the Panel to do so would conflict with rather than accord with applicable law and with the Policy.) Respondent’s privileges conferred by the Settlement are instead exactly as contended for above in the first point of Complainant’s second main set of contentions, i.e. sub-point “ii” (regarding section 1), sub-point “iv” (regarding section 20, which section provides that Respondent has a geographically limited privilege to use materials currently in use, but of course neither of the domain names at issue was currently in use), and sub-point “v” (regarding section 31).

 

More particularly, Respondent’s behavior is not within Policy ¶ 4(c)(i). To the extent of behaving outside the restrictions, and therefore outside the scope of the license, Respondent is offering unlicensed services, and therefore other than “bona fide” services, so Respondent’s behavior is not within and does not confer “rights or legitimate interests” as that expression is used in Policy ¶ 4(a)(ii); see e.g. Heel Quik!, Inc. v. Goldman, supra.

 

Also more particularly, Respondent’s behavior is not within Policy ¶ 4(c)(ii). By way of four steps it is clear that via Policy ¶ 4(c)(ii) Respondent’s behavior is also not within and does not confer “rights or legitimate interests” as that expression is used in Policy ¶ 4(a)(ii). First, the expression “domain name” is used in Policy ¶ 4(c)(ii) and is to be contrasted with and is narrower than the Policy ¶ 4(c)(i) expression “domain name or a name corresponding to the domain name”. Second, it is already clear from the above that Respondent’s behavior of registering and using of each of the domain names at issue is unlawful. Third, Policy ¶ 4(c)(ii) is to be construed as being to the effect that neither a respondent licensee’s lawful local use of a complainant’s mark nor a respondent licensee’s unlawful registration and unlawful use of contested domain names results in that respondent being “commonly known” by the contested domain names; see e.g. Heel Quik!, Inc. v. Goldman, supra. In any event, in this proceeding, there is not even any evidence of Respondent being known by either “domain name” at issue, on either basis. Instead, as is more fully described in Appendix “A” hereof, (i) the evidence shows that Respondent has merely obtained a Florida corporate name and obtained a Florida occupational license; and (ii) when it comes to proving that Respondent is commonly known by either of the domain names at issue, the corporate name and the occupational license are each as readily obtainable as domain name registrations  (e.g. by a simple form and, at least for renewals, on-line) and as irrelevant as domain name registrations are per se (i.e. not only is lawful use in trade not required or conferred, but not even any use is required or conferred). Fourth, as a result, Respondent’s behavior of registering each of the domain names at issue and using each of the domain names at issue, and of having a corporate name and an occupational license, does not, and indeed cannot, result in Respondent having “been commonly known by the domain name” at issue within the meaning of that expression in Policy ¶ 4(c)(ii).

 

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”.

 

Specifically, on Policy ¶ 4(c)(i), Mr. Paravate’s affidavit that is Response Exhibit 1 appears, at most, to merely contend that Respondent has privileges to register and use each of the domain names at issue and has behaved within the scope of those privileges. His affidavit therefore does not appear to even be relevant on that aspect of 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? His evidence would at best be subjective evidence of what the parties to that agreement agreed. The Panel is willing, however, to consider his affidavit as relevant on this topic. Similar considerations apply to the letter (from Complainant’s counsel to Respondent) that is Complaint Exhibit 5 as they do to the declaration, and the Panel is, likewise, willing to consider the letter as relevant on this topic. As is inferable from the above, the Panel finds the affidavit and the letter of far less weight than the Settlement.

 

As for Policy ¶ 4(c)(ii), especially in view of the Settlement (e.g. sections 1, 20 and 31) and the effect of the Settlement, neither the affidavit nor Response Exhibit 2 (i.e. a USA Today article dated October 25, 1988) or Response Exhibit 3 (i.e. U.S. registered trademark 1304462 for MATCHMAKER INTERNATIONAL filed June 9, 1983 but which is no longer active and of which Louis A. Paravate was the first owner) or Response Exhibit 4 (i.e. Respondent’s corporate documents, as contrasted with documents as to e.g. present lawful use in trade) is even relevant. Similarly, as to Respondent’s contentions regarding each of the domain names at issue being registered to Respondent and regarding Complaint’s naming of Respondent in the style of cause of this proceeding, each contention is irrelevant: domain name registrations that are the very subject-matter of the dispute do not confer Policy ¶ 4(c) “rights or legitimate interests”, and Complainant’s naming of Respondent basically had to account for at least the Forum’s view of the interaction between how domain name registrars keep records and the style of cause requirements of the Policy.

 

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 ¶ 4(a)(ii).

 

In view of the immediately preceding paragraph hereof, the Panel finds that Policy ¶ 4(a)(ii) is proven regarding each domain name at issue.

 

The majority should add four further sets of comments.

 

First, the minority characterizes the above resolution of this aspect of this dispute (between a complainant owner of, inter alia, a U.S. trademark registration, and respondent in the U.S.) as being to the effect that ownership of a trademark anywhere provides sufficient basis for prevailing under the Policy. However, that is neither the purpose nor the effect of the majority’s decision or reasons. Instead, neither expressly nor implicitly does the Policy require a complainant to have trademark rights corresponding to more than one geographical area in order for that complainant’s complaint to succeed. Indeed, to require a global or otherwise multi-area scope of complainant trademark rights (as contrasted with complainant rights under the Policy) would be contrary to the Policy, since the Second WIPO Report, supra, instead is “about the efficient application of existing law in a multijurisdictional and cross-territorial space.”

 

Second, though the minority characterizes the above as being other than good public policy and as not required by the Policy, the majority considers such characterizations as mistaken, basically in three respects. First, as mentioned above, this Panel is basically a law-applying body rather than a law-making body, and good public policy is already expressed by the court in PACCAR Inc. v. TeleScan Techs., L.L.C., supra; for the Panel to rule otherwise than it has would basically be making law rather than applying law, and the Panel’s decision would conflict with rather than accord with applicable law and with the Policy. Second, the characterizations beg the question by assuming, contrary to PACCAR Inc. v. TeleScan Techs., L.L.C., supra, that Respondent had and has authority to (i) register a domain name that includes the text of the mark covered by Complainant’s U.S. registered trademark; and (ii) use that domain name in association with services specified in the trademark registration. Third, the characterizations’ assumptions are also contrary to the facts of this case, including the Settlement and that the Settlement exists in the context of trademark law which (as referred to in 2 T.J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 18:52 (4th Ed. 2000) supra) includes that a trademark “licensee’s use [of a mark] inures to the benefit of the licensor-owner of the mark.” The pre-existing rule that the benefit inures to Complainant still exists, and does not have to be expressed or repeated or elaborated upon in the Settlement in order to still exist and apply to the Parties. To instead read in an implied provision to the effect that the rule does not exist or does not apply to the Parties (as the minority would do), and that instead Complainant authorized Respondent in the way contended for by the minority, would be to read into the Settlement a provision which is contrary to that rule of law and which is not indicated as being implied by the Settlement.

 

Third, the minority characterizes the time between Respondent registration of the domain names at issue and the commencement of this proceeding as warranting a delay-based defense such as estoppel. However, this being an adversarial rather than inquisitorial proceeding, it is not open to the Panel to make what amounts to a Respondent contention of such as defense, especially without Complainant having an opportunity to respond thereto. Moreover, there appear to be conflicting views, expressed in and applied by administrative panel decisions under the Policy, as to whether various doctrines, such as the doctrine of estoppel, or such as general or other doctrines from the law of equity, can be applied in administrative panel decision-making under the Policy. In any event, a doctrine such as estoppel is unavailable in this case because there appears to be no evidence that Complainant was engaged in any conduct inducing or allowing Respondent to proceed such as would warrant the Panel to apply the doctrine to Complainant.

 

Fourth, though the minority characterizes the registration and use of the domain names at issue as not causing confusion (and instead as accurately disclosing the relationship between Complainant and Respondent) and as in fact driving traffic to Complainant’s website, such considerations are more appropriately dealt with in connection with bad-faith use and bad-faith registration, and that is where the majority deals with them.

 

Registration and Use in Bad Faith

The context in which this part of this discussion occurs includes Policy ¶ 4(b).

 

Policy ¶ 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 ¶¶ 4(b)(i), (ii) and (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 ¶ 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 ¶ 4(b)(i) appears to not be contended for but Policy ¶¶ 4(b)(ii), (iii) and (iv) do appear to be contended for by Complainant; in view of the Panel’s disposition of ¶¶ 4(b)(iii) and (iv) issues, the Panel need not address ¶ 4(b)(ii) issues.

 

As for Policy ¶ 4(b)(iii), the above discussion of the Settlement indicates the circumstances cannot be other than within that provision: the Settlement is so clear and Respondent’s behavior so clearly outside of the privileges conferred by it and so clearly within the duties imposed by it, and by trademark law, that Respondent must have known that Respondent’s registration and use of each of the domain names at issue would disrupt competitor business, and indeed must have been done primarily for that purpose. Similarly, see Heel Quik! Inc. v. Goldman, supra (holding that the registration of a domain name in violation of a license agreement is evidence that the domain name was registered and used in bad faith); and Gorstew Ltd. v. Carribean Tours & Cruises, FA 94927 (Nat. Arb. Forum July 28, 2000) (finding that Respondent’s use of the disputed domain name to sell the services of Complainant or to attract customers to Complainant, presumably for which Respondents would be paid a fee, is classic trademark infringement, even if the result of same is that some revenue flows to Complainant, the owner of the marks).

 

Furthermore, as to Policy ¶ 4(b)(iv), in Response Exhibit 5 in what appears to be a copy of the <matchmakerinternational.cc> website there is high-lighted a direction that Respondent apparently makes to Complainant’s <matchmakerinternational.com> website. That direction appears to basically be contended by Respondent to be a disclaimer. If it is a disclaimer, it is not very clear and is instead quite susceptible of being ignored or misunderstood, and, in any event, there is the matter of initial interest confusion. Specifically, entry of Complainant's mark will result in visits not only to Complainant's website but also to Respondent's website which resolves through the domain names at issue. See e.g. Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 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. Prudential Ins. Co. v. Prudential Mortgage Loans, FA 103880, (Nat. Arb. Forum Mar. 20, 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 seven paragraphs hereof, the Panel finds that Policy ¶ 4(a)(iii) is proven as to each domain name at issue.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <matchmakerinternational.cc> and <matchmakerinternational.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Robert T. Pfeuffer, (Ret.), Panel Chairperson
Dated: 12 December 2003

 

 

Rodney C. Kyle, Panelist
Dated: 12 December 2003

 

DISSENT OF: Houston Putnam Lowry

I must respectfully dissent from the majority's decision.

Rights or Legitimate Interests
Under ICANN Dispute Resolution Policy §4(c), the following is a partial list of how one might prove rights to a domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial 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.

There is some confusion about who registered what domain name in this case. Matchmaker International (presumably of Florida) registered MatchmakerInternational.net according to the whois print out provided to the Panel. Since this is a documents only proceeding, that information should be authoritative and controlling. Administrative and technical contacts do not show ownership of the domain name.

The majority's contention there was no proof Matchmaker International of Florida, Inc. is commonly known to the public by its corporate name does not withstand scrutiny. Merely having a corporate name suggests the corporation is known by that name (or some diminutive thereof). It should be noted Respondents' original response said "…Respondent [sic] has been commonly known by its corporate name Matchmaker International of Florida, Inc. and Matchmaker International of Pensacola, Inc." Complainant failed to rebut this sworn evidence. Similar evidence was submitted in Respondents' additional submission on page 2.

There is no doubt Matchmaker International of Florida, Inc. is commonly known by "Matchmaker International." There was no contrary evidence submitted to the Panel. At that point, the inquiry should stop and Complainant must lose (at least regarding the MatchmakerInternational.net domain name).

Instead, the majority makes an inquiry into whether or not Matchmaker International of Florida, Inc. has rights to use its own name (called "trade name rights"), despite the fact the UDRP 4(c)(ii) specifically provides even if a Respondent has acquired no trademark or service mark rights, the Respondent has a right to use the domain name when it includes its name. While a court may certainly undertake such an inquiry and will give the matter a full evidentiary hearing applying the proper law (which would include trademark law), that is far beyond the "quick and dirty" purview of a UDRP documents only proceeding. The majority confuses a UDRP proceeding with trademark litigation. This is the first error made by the majority.

Lou Paravate personally registered MatchmakerInternational.cc. The "settlement agreement" that gave Matchmaker International of Florida rights also gave rights to Lou Paravate personally. This settlement document is very interesting for several reasons:

1. There is no limitation (other than a geographical limitation) on how Respondents may use the MatchMaker servicemark. It presumably can be applied to any good or service.

2. Respondents have no continuing financial obligation to Complainant regarding the servicemark (meaning Respondents do not have to pay a periodic licensing fee).

3. No procedure is made for canceling Respondents' rights to use the servicemark.

4. The right to use the servicemark was granted indefinitely.

5. The right to use the servicemark as a domain name is not discussed, even though the document was executed in 1994.

Needless to say, this is an extraordinary document that only exists because it was in settlement of prior litigation between the parties. It was undoubtedly heavily negotiated.

Respondents have rights and legitimate interests in the domain name because they are authorized to use Complainant's marks within certain geographical areas. The Internet is particularly noteworthy because it does not have geographical boundaries as it is commonly implemented.

The question is whether or not a geographical limitation in an authorization to use a servicemark can be used to prevent an otherwise authorized user of a registered servicemark from registering a domain name incorporating those marks. If so, Complainant must win. If not, Respondents must prevail. The majority appears to believe once a servicemark (even if in only one country) is registered it should be enough to allow the owner (assuming no conflicting registrations, of course) the right to recover any domain name registered in the nearly 300 top level domains. With all due respect, such a result is not good public policy and is not required by the UDRP. This is the majority's second error.

It should be noted the oldest domain name, MatchMakerInternational.cc, was registered April 3, 2000 and has been used since that date (some 1,275 days before the complaint was filed). Lou Paravate did not receive any notice for more than three years that his MatchMakerInternational.cc web site was infringing on Complainant's servicemark. Complainant finally gave notice on August 14, 2003 that it objected to the registration of the MatchMakerInternational.cc domain name (1,228 days after the domain was registered).

The web site had a link to Complainant's web site indicating additional locations were available there. How does this cause confusion? In fact, it drives traffic to Complainant's web site. This meets, in the minority's view, the requirements of UDRP §4(c)(i) that before any notice to Respondent owner of MatchMakerInternational.cc of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The services in question were bona fide in the sense they were really delivered and were even within the scope of what was allowed under the settlement agreement.

As an authorized user of the servicemark, Respondent uses the domain name in connection with a bona fide offering of goods and services. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001). According to the authorization in question in this case, Respondents may use Complainant's trademark in its domain name if Respondent is

1) actually selling goods or services (but need not be the same goods or services Complainant sells because that requirement does not appear in the authorization);

2) selling only the goods and services authorized on the web site in question (there was no limitation in the authorization in this regard);

3) accurately disclosing the relationship between Complainant and Respondent (meaning Respondent is not causing confusion by suggesting Respondent is the owner of the trademark); and

4) not attempting to corner the market in all domain names incorporating Complainant's mark and thereby prevent Complainant from reflecting its mark in its own domain name); see also Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (finding that Respondent, as an authorized dealer of Complainant's WEBER GRILL products, had rights and legitimate interests in <webergrills.com>, <webergrill.com>, <weber-grills.com>, <webergrillsource.com>, <webergrillstore.com>, <webergrillshowroom.com>, <webergrills-ah.com> and <webgrills.com> because it was using the domain names in order to make a bona fide offering of Complainant's goods and services).

Respondents meet all of these requirements. Respondents have registered only two domain names, which has not prevented Complainant from registering the MatchMakerInternational.com domain name. Respondents have not prevented Complainant from registering and using its own servicemark as a domain name.

While it is uncontested Complainant owns the servicemark at issue, ownership of a mark is not a mechanical test under the UDRP to determine who prevails. A respondent need only show some rights, not that ownership of the mark is contested. While Respondents have some rights, it is conceded they do not have any ownership interest in the registered servicemark (although Complainant gave away so many rights in the settlement agreement Respondents may well be unregistered co-owners in the servicemark, but that is a for a court to determine).

Registration and Use in Bad Faith
Under ICANN Uniform Domain Name Dispute Resolution Policy Paragraph 4(b), the following non-exclusive factors indicate registration and use of a domain name in bad faith:

(i) circumstances indicating that respondent has registered or 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 respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) respondent has 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 respondent engaged in a pattern of such conduct; or

(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's 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 respondent's web site or location or of a product or service on respondent's web site or location.

"Bad faith" is defined in Black's Law Dictionary 7th edition at page 134 as: "1. Dishonesty of belief or purpose..". In Halsey v. Brotherhood (1881), 19 Ch. D. 386 Lord Coleridge L.C.J. in determining whether there was evidence of mala fides stated that the task of the Court was to consider "whether there is anything to show that what the defendant stated was stated without reasonable and probable cause".

It is very difficult to prove a negative. It is also difficult to prove a party's intention in a document-only proceeding. Respondents did not register or use the domain names in bad faith because they have used them for legitimate business purposes. The advertised services were rendered. Respondents have enough business to support five physical locations.

Respondents' domain names will not cause Internet users to mistakenly believe that the Matchmaker International services generally are limited to Respondents' territory because the attached website states, "for other locations please visit <matchmakerinternational.com>." Further, use of the websites does not violate the geographic limitation of the settlement agreement because the domain names, like phone numbers, are accessible to the international community but do not constitute world-wide promotion. See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where Respondent has an active website that has been in use for two years and where there was no intent to cause confusion with Complainant's website and business); see also DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute); see also Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding no bad faith registration or use of the domain name <racegirl.com> where no evidence was presented that Respondent intended to divert business from Complainant or for any other purpose prohibited by UDRP Rules); see also Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125(d)(1)(B)(ii): "[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."

For all of the foregoing reasons, I would have found in favor of Respondents.

Houston Putnam Lowry, Chartered Arbitrator and Panelist
Dated: 12 December 2003

 

 

APPENDIX “A”

 

There is a world of difference between, on the one hand, merely having a corporate name (which basically is a matter between a corporation and the state agency that incorporated it) or having an occupational license document or domain name registration record (which basically is a matter between the recipient of that license or of that registrant, and the entity that confers the license or keeps the registry), and, on the other hand, being commonly known by a domain name (e.g. being known to the public at large by that domain name, or e.g. having trade name rights enforceable against the public at large); and in this case there is no evidence of Respondent being commonly known by either of the domain names at issue and there is not even evidence of Respondent being commonly known to the public by its corporate name.

 

Florida Corporation Name

 

As for the corporation database record copy that is Complaint Exhibit 2, at <sunbiz.org>, under “Legal Opinions,” and in turn under “Florida Statutes”, there is Title XXXVI, chapter 607, section 607.0202 , subsection (1), clause (a). That clause is as to the corporate name of a corporation incorporated in Florida, such as the corporate Respondent. The clause is that  “(1) The articles of incorporation must set forth (a) A corporate name for the corporation that satisfies the requirements of s. 607.0401”. Section 607.0401 includes subsection (5) which is as follows (with emphasis added): “The name of the corporation as filed with the Department of State shall be for public notice only and shall not alone create any presumption of ownership beyond that which is created under the common law.”  (There is no evidence in this proceeding that when dealing with a prospective Florida corporation name the Florida Department of State, Division of Corporations, officials engage in more or other than the common practice of merely checking the name against only that state’s corporations names and only for identicality rather than similarity.) For similar law, practice, and effect as to business name registrations, and therefore as to such registrations per se not conferring or evidencing Policy ¶ 4(c) “rights or legitimate interests”, see. e.g. Gavagai Tech. Inc. v. Gavagai, FA  135611 (Nat. Arb. Forum  February 3, 2003) (in and associated with endnote 12 thereof).

 

Occupational License

 

As for the occupational license document that is part of Response Exhibit 4, it indicates that the Escambia County Tax Collector mailed to “Matchmaker International of Florida” a “Specialized Services” occupational license for 2003-2004 and designating the owner of that license as “Matchmaker Intl of Florida”. It cannot, per se, avail Respondent. (Moreover, the Escambia County Tax Collector has records available on-line at <http://ectc.co.escambia.fl.us> indicating, via “Occupational Licenses” and a form “TC Form 2001 (Rev 7/01),” that the requirement for obtaining that license was “to fill out a simple application” and that renewals of the license can be done on-line, but the license evidenced by Response Exhibit 4 appears to have been issued contrary to the requirements of the “TC Form 2001 (Rev 7/01)” form and Florida law. Specifically, the license was issued in other than the legal name of any of the Respondents, and if a person carrying on business in Florida uses any name for their business other than their legal name then Florida Statutes 865.09 requires them to file a fictitious name with the Florida Department of State, Fictitious Name Filing System, available on-line through <sunvbiz.org>. There is no evidence in this proceeding of records under that filing system indicating any fictitious name in any way corresponding to the corporate Respondent or to either of the individual Respondents.) For similar law, practice, and effect as to business licenses and tax registration certificates, and therefore as to neither such licenses nor such certificates per se conferring or evidencing Policy ¶ 4(c) “rights or legitimate interests”, see. e.g. Thrifty, Inc. v. FrugalAutoSales.com, Inc., FA 190516 (Nat. Arb. Forum  October 13, 2003).


ENDNOTES

 

[i] W.N. Hohfeld, "Some Fundamental Legal Conceptions as Applied in Judicial Reasoning", (1913-14) 23 Yale L. J. 16, at 27, footnote 23. Emphasis in original.

 

[ii] See e.g. Rules 5(b)(i), 5(b)(ix), and 14(b). Rule 5(b)(i) includes that "The response shall … [r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name", Rule 5(b)(ix) includes that "The response shall … [a]nnex any documentary or other evidence upon which the Respondent relies" , and Rule 14(b) includes that "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules … the Panel shall draw such inferences therefrom as it considers appropriate." Rule 5(b)(i) and Rule 5(b)(ix) are each clearly a "provision of, or requirement under, these Rules" within the meaning of that expression as it appears in Rule 14(b).

 

[iii] The mode "1" referred to in the passage cited in endnote 1 above, together with Delisle, Evidence Principles and Problems, (1984), Carswell, Toronto, at  5:

The concept of relevancy is simply dictated by our own present insistence on a rational method of fact-finding.

However, not only must the evidence tendered be rationally probative of the fact

sought to be established; the fact sought to be established must concern a matter in issue between the parties, i.e. it must be material. …

The law of evidence then principally consists of the study of canons of exclusion, rules regarding admissibility, which deny receipt into evidence of information which is rationally probative of a matter in issue between the parties.

Therefore, evidence which is immaterial, or is material but irrelevant, is inadmissible, and even evidence which is material and relevant may still be inadmissible in view of further inadmissibility rules of the law of evidence.

 

[iv] Delisle, endnote 3 above, at 94.

 

[v] Delisle, endnote 3 above, at 91.

 

[vi] That decision includes the following:

The Respondent has used, and made preparations to use, the domain name in connection with an offering of its goods and services. However, such use has been a restricted use subject to the terms of a License Agreement. Any use in violation of the License Agreement cannot be a bona fide use within the meaning of the Policy. 

 

[vii] That decision includes the following:

Although the Respondents may have been known locally by the domain name, such was as licensee or franchisee of an international franchiser and does not constitute common knowledge of the domain name. Local knowledge of a franchisee with a license to use the franchise name locally does not necessarily show common knowledge of the domain name as the knowledge is limited by the terms of the license.

and

The Respondents have not obtained any rights to the world-wide accessible web sites from the local advertising provisions of the License Agreement.

 

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