Martin Biochem Inc. v. Benjamin Crosby
Claim Number: FA0706001008277
PARTIES
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.
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.
David P. Miranda, Esq., as Panelist.
PROCEDURAL HISTORY
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 postmaster@martinbiochem.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
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.”
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
Prod.
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.”).
DECISION
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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