Claim Number: FA0706001008277
Complainant is Martin
Biochem Inc. (“Complainant”),
represented by Derek Martin, of Martin & Associates L.L.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <martinbiochem.com>, registered with Go Daddy Software, Inc.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2007.
On June 15, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <martinbiochem.com> domain name is registered with Go Daddy Software, Inc. and that 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 June 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 10, 2007 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on July 9, 2007.
A timely Additional Submission was received from Complainant and determined to be complete on July 11, 2007.
On July 17, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant Martin Biochem Inc. (“Complainant”) is the owner of U.S. Service Mark Registration No. 3,075,626 for the mark MARTIN BIOCHEM. The mark has a registration date of April 4, 2006, a date of first use of June 1, 2000, for goods and services of agricultural services, namely adding ingredients to the aqueous biological cultures forming in onsite farm distribution equipment to assure continued onsite production of the biological cultures. Complainant seeks the transfer of the domain <martinbiochem.com> from Respondent Benjamin Crosby hereinafter (“Respondent”). Complainant contends that Respondent’s domain name is identical to Complainant’s registered service mark and that Complainant’s date of first use precedes Respondent’s registration. Respondent was an independent contractor that acquired the domain name and managed the website for Complainant under the domain in question, <martinbiochem.com>, with the understanding that it would be registered under Complainant’s name. Respondent registered the domain name in his own personal name, failed to transfer the domain name to Complainant, and made the website inaccessible to Complainant’s customers. Complainant alleges bad faith of Respondent’s registration of the domain in his own name instead of Complainant’s, and Respondent’s failure to turn over the domain name when requested. Complainant contends that Respondent is holding the domain name hostage, and that Respondent is without legitimate rights to the domain name.
Respondent concedes that Complainant has a federally registered service mark to MARTIN BIOCHEM, with a date of first use that precedes Respondent’s registration, and the domain name is identical to Complainant’s registered service mark. Respondent contends that it had a contractual relationship with Complainant since 1999 for the distribution and sales of Complainant’s products. Respondent used the domain <martinbiochem.com> to further sales and support Complainant’s operation. Respondent contends that the domain at issue was registered under the name of Respondent rather than Complainant due a lack of technological ability available to Complainant. Respondent contends that Complainant did request that the domain name be transferred to Complainant, but the transfer did not take place. When the transfer issue was raised again, Respondent contends that it again attempted to transfer the domain name to Complainant. Respondent contends that because of Complainant’s failure to properly respond to the Registrant’s notification, the transfer was not completed. Respondent further contends that it has proceeded in good faith and attempted to transfer the domain to Complainant prior to receipt of compensation.
C. Additional Submissions
Complainant contends in an additional submission that further proof of Respondent’s bad faith is evidence by the admitted registration of the domain name in his own name, when he was admittedly hired to service, manage and maintain the domain name on behalf of Complainant. Complainant contends further evidence of bad faith based upon Respondent’s holding the domain name hostage unless he gets paid additional sums he believes he is owed. Complainant contends that the information from the Registrant regarding transfer of the domain attached to Respondent’s papers was not received by Complainant. Complainant further contends that Respondent’s arguments relating to an alleged breach of contract are irrelevant in this proceeding, and are unrelated to the issue of domain name ownership.
Complainant has established and Respondent has admitted that Complainant is the owner of the service mark registration to MARTIN BIOCHEM identical to the domain name at issue, <martinbiochem.com>. Since Respondent contends that it has sought on multiple occasions to transfer the domain name to Complainant, the Panel forgoes an analysis of the issues of rights and legitimate interests and bad faith, and directs transfer of the domain name to Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the MARTIN BIOCHEM mark by virtue of a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,075,626 issued April 4, 2006, filed March 11, 2004). Complainant’s trademark registration establishes rights in the MARTIN BIOCHEM mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).
Respondent acknowledges that Complainant has rights in the MARTIN BIOCHEM mark, that those rights precede Respondent’s registration of the disputed domain name, and that the <martinbiochem.com> domain name is identical to Complainant’s mark.
Complainant has alleged that Respondent has no rights or legitimate interests in the domain and that the registration and use of the domain is in bad faith because the Respondent had knowledge that the mark was used and owned by Complainant. Respondent, however, contends that its registration and use of the domain was in good faith based upon an agreement between the parties. In certain instances where it appears that the issue involves a financial or contractual dispute between Complainant and Respondent, and not a case of abusive registration or cybersquatting, the panel may conclude that a complaint is outside the scope of the UDRP and dismiss the Complaint. See Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (concluding that when the respondent registers a domain name on behalf of the complainant and then refuses to relinquish control over the domain name registration, the cause of action is for breach of contract or fiduciary duty and is thus outside the scope of the Policy); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Jan. 2, 2007) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the Policy).
However, the Panel
has discretion to determine whether or not it has jurisdiction over this
dispute. If the Panel finds that there
is sufficient evidence for it to properly decide the dispute under the UDRP, it
may proceed with the case and consider the contentions of Complainant and
Respondent as outlined below. See Weber-Stephen
The Panel has decided to forgo the traditional analysis because both parties have sought the transfer of the domain in question to Complainant, which has not been completed because of administrative and technical reasons. Respondent asserts that it has previously tried to transfer the <martinbiochem.com> domain name to Complainant on multiple occasions, but that Complainant has not completed the transfer. Respondent also admits that Complainant has rights in the MARTIN BIOCHEM mark, and that the disputed domain name was registered for use on behalf of Complainant. Respondent’s statements in this regard in the Response qualify as a consent to transfer the <martinbiochem.com> domain name. Thus, the Panel decides to forego the traditional UDRP analysis and order the immediate transfer of the domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . 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.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Having found that both parties consent to transfer of the domain, the Panel concludes that the relief shall be GRANTED.
Accordingly, it is Ordered that the <martinbiochem.com> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: July 31, 2007
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