Sebastian International, Inc. v. Sebastian Contracting Services, Inc.
Claim Number: FA0711001106694
Complainant is Sebastian International, Inc. (“Complainant”), represented by Leon
Medzhibovsky, of Fulbright & Jaworski LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sebastian.com>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 8, 2007.
On November 7, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <sebastian.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 November 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on December 10, 2007.
A timely Additional Submission was received from Complainant on
A timely Additional Submission was received from Respondent on December
On December 19, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed P-E H
Due to exceptional circumstances, the Panel issued an order on December 20, 2007, to extend the decision date from January 2, 2008 to January 7, 2008.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant is an international beauty care manufacturer, incorporated in 1973. Complainant states that the
founders, John and Geri Cusenza, were renowned
As of fiscal year ending June 30, 2007, sales of
Sebastian hair care products on an international basis were approximately $160
The Complainant is the owner of six
The Complainant claims that the SEBASTIAN mark is famous as it is universally recognized and relied upon as identifying Complainant as the source of salon and hair care products, and that it has acquired substantial goodwill and is an extremely valuable commercial asset.
The SEBASTIAN website is accessible through the domain name <sebastian-intl.com>, registered in the name of Wella Corporation, Procter & Gamble, Complainant's ultimate parent company.
The Complainant further states that the disputed domain name, considered to be registered on October 21, 1997, is confusingly similar to the SEBASTIAN trademark as it fully incorporates the said mark and merely adds the generic top-level domain gTLD ".com" to the mark. The domain name <sebastian.com> has a tendency to mislead the public as to the source and origin of the website and suggests an affiliation with Complainant that it does not have.
The Complainant argues that Respondent has no rights or legitimate interests in rerspect of the domain name, as it was registered long after the Complainant acquired its rights in the SEBASTIAN mark and after its mark achieved fame and world-wide consumer recognition, and as it is not used - and has never been used - for an active website. The Complainant refers to a number of UDRP cases in support of it’s conclusion that Respondent's passive holding of the domain name demonstrates a lack of rights and legitimate interests.
Respondent is not a licensee of Complainant, nor is Respondent otherwise authorized to use Complainant's marks for any purpose.
The Complainant points out that while the WHOIS information lists Sebastian Contracting Services, Inc. as the registrant of the disputed domain name, the California Secretary of State records show that Respondent's corporation under this name is dissolved (Exhibit 16 of the Complaint). The Complainant, referring to AARP v. AARP Canada Inc., FA 831367 (Nat. Arb. Forum Dec. 18, 2006) (finding that a dissolved corporation is not "commonly known" by the former corporation name) and other UDRP cases therefore concludes that the Respondent is not commonly known as “Sebastian” or <sebastian.com>. Even if “Sebastian” is a common name, surname or given name somehow associated with Respondent, it does not establish that Respondent has rights in the name as it is not being used as an indicator of the origin of his or her goods.
Finally, the Complainant states that the Respondent has registered and
is using the disputed domain name in bad faith, as the Respondent is passively holding the domain name. Further, on information and belief, Respondent was
aware of Complainant and its rights in
the SEBASTIAN mark prior to registration of <sebastian.com>. Complainant has been in business since at least as
early as 1973, almost 25 years before Respondent
registered the domain name and the Complainant was first established and
continues to be located in
The Respondent concedes that the disputed domain name is confusingly similar to the Complainant’s mark.
Respondent claims to have rights or legitimate interests in the domain name. The Respondent states that the disputed domain name was registered on October 27, 1993, which makes <sebastian.com> one of the earliest domain names ever registered (Exhibit A of the Response is a confirmation from the IP provider Portal, dated October 27, 1993). The name was originally chosen because it was a favorite name of Jascha Lee’s wife, Sheryl Lee - a name she later gave to her first born son, Jacob Sebastian Lee. The domain name was not registered specifically for commercial use, but more to have an e-mail domain, and because the Lees wanted to be a part of the UNIX community in the days when there were only a few hundred domains registered in the world.
The domain name was later transferred to Respondent’s company, Sebastian Contracting Services Inc., and was thereafter used in connection with a bona fide offering of services from July 1997 to September 2006, when the corporation was dissolved, and the assets - including rights to renew the domain registration - were transferred to the founder and sole shareholder of Sebastian Contracting Services, Inc., Mr. Jascha Lee (Exhibit B of the Response is a copy of the – not signed - Certificate of Dissolution).
The disputed domain name has also continuously been Respondent’s primary e-mail address under email@example.com since 1993.
The Respondent denies to have ever intended to mislead consumers of Complainant's hair care products for his own commercial gain or to have used <sebastian.com> for the purpose of tarnishing the Complainant's mark. The business of Sebastian Contracting Services Inc. had nothing to do with hair care, but was rather a technical contracting service.
Complainant has offered no facts to indicate that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. The Respondent informs that the Complainant made two previous attempts to purchase <sebastian.com> from Respondent: in 1998 for $5,000 plus free shampoo for life, and in 2000 for $15,000 cash. Both offers were declined. Copies of correspondence between the parties are provided as Exhibits C – F of the Response. The Complainant has made no further contact until filing the Complaint, more than seven years later. During that period, Respondent has received occasional, anonymous inquiries from people claiming to be interested in purchasing the domain name, and these have always been refused.
In 1993, when the disputed domain name was registered, the World Wide Web was in its infancy, and Internet commerce barely existed. Respondent argues that it was not yet possible to purchase hair care products on the Internet in 1993, and that the Complainant’s domain name <sebastian-intl.com> was registered in 1997 and not used until November 1998. Therefore, a domain name from 1993 could hardly have been registered primarily for the purpose of disrupting the business of a competitor.
The Respondent further argues that Complainant’s contention that Respondent is acting in bad faith by not posting a website on the disputed domain name lacks merit. In 1993, hosting a website was far from the primary purpose of a domain name registration. Respondent has continuously used the domain name as an e-mail address, as well as for other technical purposes.
The Respondent refers to the concept of Laches, and claim that Complainant has waived its rights to request that the domain name be transferred, as it has been registered for 14 years and almost 8 years have passed since Complainant threatened to take action against Respondent.
Finally, the Respondent demands a finding of reverse domain name hijacking against Complainant, based on the fact that “the Complainant has concealed obviously relevant facts about its prior, unsuccessful efforts to acquire Respondents rightful property”.
The Respondent requests that the Administrative Panel denies the remedy requested by the Complainant.
C. Additional Submissions
Complainant’s Additional Submission
The Complainant points out that by the time Respondent registered the disputed domain name, Complainant had clearly established rights in the SEBASTIAN trademark. When Respondent registered <sebastian.com> it had no legitimate interest in the domain name and the passage of time has done nothing to legitimize Respondents legal right to the domain.
The Complainant once again states that the domain name has never been used for an active web site and the Respondent has never used <sebastian.com> in connection with a legitimate business offering or noncommercial use. Use of the domain name for e-mail purposes is not a legitimate use, particularly where e-mail is confusingly similar to a famous trademark and there exist actual instances of consumer confusion.
The Complainant refers to the fact that actual confusion has occurred and refers to Respondent’s Exhibit D, a letter of February 2, 2000 from Respondent’s counsel: “Since your client joined the online community in January of 1997, my clients have been very helpful and cooperative, taking care to redirect misaddressed e-mails, most of which came from your client's employees. They have even corresponded with your client by e-mail on several occasions to make sure that they were redirecting these e-mails correctly.” Therefore the use of the domain name as an e-mail address is itself evidence of bad faith.
The Complainant states that a further evidence of bad faith is the fact the Respondent demanded $100,000 from Complainant in order to sell the domain name. Complainant refers to Respondent’s Exhibit F, a letter of March 23, 2000 from Respondent’s counsel: “If not for your recent letters, the Lees would probably still be willing to accept an offer of $75,000. Now, however, because the Lees are offended by your client's threatening tactics and misplaced accusations of wrongdoing, they will not consider any offer of less than $100,000."
Respondent’s Additional Submission
Respondent argues that the Complainant has failed to prove that Respondent has no rights or legitimate interests in the domain name or that the name has been registered and is being used in bad faith. The word "Sebastian" may have acquired some secondary meaning in the world of hair care products, but it is primarily a common name, and Complainant has failed to demonstrate that its mark is so generally famous and distinctive that when one hears the word "Sebastian," one automatically thinks "hairspray."
The Respondent refers to Sebastian County, Arkansas and Sebastian City, Florida, as well as to the fact that “Sebastian” is ranked number 76 out of the 100 most popular baby names in USA 2006.
Respondent refers to Exhibit A of it’s Additional Submission, a copy of an email exchange using the disputed domain in connection with services offered by Sebastian Contracting Services Inc., through Jascha Lee, in order to contradict Complainant’s allegations that Respondent has never used <sebastian.com> in connection with a legitimate business offering or noncommercial use.
The Respondent claims that e-mail use alone constitutes sufficient use to support the rights and legitimate interests of the owner of the domain name and refers to several previous UDRP cases. Respondent contends that <sebastian.com> is not only used for e-mail, but also for a “jabber server” and an ftp server.
Finally, Respondent argues that when he told the Complainant that he would not sell the domain name for less than $100,000, it was really another way of saying that it was simply not for sale.
The Complainant is the owner of the following U.S. Trademark registrations for SEBASTIAN:
No. 1,209,082 of Sept. 14,
No. 1,231,575 of March 22,
No. 1,604,453 of July 3,
No. 1,529,198 of March 14,
No. 1,502,932 of September 6,
No. 2,541,465 (figurative)
of February 19,
The domain name <sebastian.com>, created in 1993, was registered in the name of the Respondent on October 21, 1997.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The relevant part of the disputed domain name is “sebastian.” See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Complainant has established rights
in the SEBASTIAN trademark in the
The Panel concludes that the <sebastian.com> domain name is identical to the registered trademark SEBASTIAN, owned by Complainant, and accordingly that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
The Complainant state that Respondent has no rights or legitimate interests in respect of the domain name as there is no evidence, before the dispute, of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, nor is the Respondent commonly known by the domain name or making a legitimate non-commercial or fair use of the domain name.
The ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") defines “Respondent” as “the holder of a domain-name registration against which a complaint is initiated,” and “Registrar” as the entity with which the Respondent has registered a domain name that is the subject of a complaint.
According to the WHOIS result of the registrar, Network Solutions, the registrant (and therefore also the Respondent) is Sebastian Contracting Services, Inc. The Response contends that when the said corporation was dissolved in September 2006, the assets – including the domain name or at least the right to renew the domain name – were transferred to the first registrant, Mr. Jascha Lee. Exhibit B of the Response is claimed to prove that transfer. The Panel, having carefully considered the content of the unsigned document named “Certificate of Dissolution,” can however not accept that as a proof of Mr. Lee’s ownership of the disputed domain name. The only reference made to the company assets is paragraph 4, stating that “[t]he known assets have been distributed to the persons entitled thereto,” with no further indication of the names of those persons, except for that Mr. Lee’s name appears at the bottom of the document.
For the purpose of this proceeding, the Panel will have to rely on the public WHOIS information given by the registrar. That information identifies Sebastian Contracting Services, Inc. as the current registrant and holder of the disputed domain name, with Mr. Lee as the Administrative and Technical Contact. Mr. Lee will therefore in the following be treated as a representative of the registrant/Respondent, the dissolved corporation Sebastian Contracting Services, Inc.
It is an undisputed fact that the so identified Respondent has existed. Complainant’s Exhibit 16 shows a printout from the California Business Portal, setting the founding date of Respondent to July 7, 1997 and indicating “dissolved” as Respondent’s current status. The same document identifies Mr. Lee as the “Agent for Service of Process.”
As the Respondent is dissolved, it cannot have
any further rights or legitimate
interests in the domain name. See PAA Laboratories GmbH v. Printing Arts
The Panel concludes that the Respondent has no rights or legitimate interests in the domain name, and finds for Complainant under Policy ¶ 4(a)(ii).
The third requirement for the Complainant to prove is whether the domain name has been registered and is being used in bad faith. Policy ¶ 4(b) regulates the kind of evidence and circumstances, “in particular but without limitation” that shall be evidence of the registration and use of a domain name in bad faith.
SEBASTIAN trademark, in the name of the Complainant, is indeed well protected
by a number of registrations in the
Complainant asserts that Respondent is not making any active use of the disputed domain name, concluding that passive holding of a domain name for so many years is a clear indication of bad faith registration. Complainant further points out that Respondent must have been aware of Complainant and it’s trademark rights prior to the registration of <sebastian.com> as Complainant has been in business since 1973 and both parties are located in California, U.S.A.
The disputed domain name was originally
registered on October 27,
It is an undisputed fact that the domain name has never been used for an active web site. Respondent and Mr. Lee claims to have used it continously for e-mail purposes and other Internet related services. This statement is partly supported by Exhibit A of Respondent’s Additional Submission, as well as of the fact that the said e-mail address was successfully used to contact Respondent in this proceeding.
It is an often neglected fact that a registered domain name which does not resolve to an active web page can still be used as an an e-mail address for fraudulent purposes. Nothing in this case indicates however that such use has been committed. Respondent provides poor evidence of the - good faith - use of the domain name, but the Complainant has even less to show in this respect.
Both parties mention the fact that e-mails have been misaddressed, most of which, according to the Respondent, came from the Complainant’s own employees. The Complainant has not provided any evidence supporting the contention that also consumers have been confused. To this Panel, it seems a bit odd or at least unusual that the Complainant’s own e-mail and web address obviously was not known enough in-house to avoid such confusion. If nothing else, it does not support Complainant’s statement of “significant presence on the Internet.” Further, the Respondent does not seem to have taken any advantages of such confusions, but rather tried to redirect these e-mails to the Complainant (a fact referred to by both parties).
The Complainant further refers to that the Respondent demanded “no less than $100,000” from Complainant in order to sell the domain name, as evidence of bad faith. Respondent argues that this last offer was nothing more than another way of saying that the domain name was not for sale. The Panel is not convinced by Respondent’s explanation, considering that the “market price” for certain domain names can be counted in seven digits or more.
Indeed, demanding a large sum of money for a domain name can, according to Policy ¶ 4(b)(i), be evidence bad faith: “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.”
SEBASTIAN is a trademark, but it is also a common surname. The Panel finds no indications that the Respondent acquired the disputed domain name primarily for the purposes mentioned above, even if Respondent had some knowledge of Complainant’s use of Sebastian as a trademark prior to the registration of the domain name.
Both Respondent and Mr. Lee have presented plausible explanations for the registration and use of <sebastian.com>. Respondent has also refused to sell the domain name to other interested parties. Under these circumstances, Respondent’s final offer is not enough to indicate bad faith. See Coca-Cola Co. v. Svensson, FA0 103933 (Nat. Arb. Forum Feb. 27, 2002) (finding that the respondent was not acting in bad faith when it engaged in discussions to sell its domain name registration to the complainant after the complainant initiated the discussion); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding no bad faith where “the Complainant offers the Respondent far more than the Respondent paid for the disputed domain name and the Respondent asks for an even larger sum”); see also Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Technology, (WIPO Case No. D2000-0026) (“Rather than the classic cybersquatting model of a Registrant who registers the trademark of another, hoping to profit from the trademark owner’s desire to reflect its trademark in a corresponding domain name, we have here a company which registered a domain name to reflect the name of its own business, which seeks to sell that domain name to others for profit now that its business has dissolved”).
The Panel concludes that the domain name was not registered or used in bad faith.
Reverse Domain Name Hijacking
The Respondent suggests that the Complainant is guilty of Reverse Domain Name Hijacking. Rule ¶ 1 defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rule ¶ 15(e) further defines the situation as filing the complaint “in bad faith, for example in an attempt to harass the domain-name holder.”
Although the Complainant has been in contact with the Respondent several times over the years prior to filing this Complaint, there are some facts and evidence regarding the disputed domain name that have not been revealed until now.
There is no evidence of harassment from the Complainant, and the accusations and presumptions filed against the Respondent are well within the scope of what the Panel finds acceptable from a trademark owner who discovers a domain name that may infringe its trademark rights.
The Panel therefore states that this is not a case of Reverse Domain Name Hijacking.
Doctrine of Laches
Respondent has alleged that Complainant’s failure to bring this Complaint for more than fourteen years since the <sebastian.com> domain name was registered is evidence that Complainant did not believe its claims to be warranted under the Policy. Respondent asserts that this delay leads to the conclusion that Complainant did not feel that Respondent was violating Complainant’s rights under the Policy.
Firstly, the disputed domain name was not registered in the name of the Respondent until October 1997, and the Complainant has clearly expressed interest in <sebastian.com> several times after that date.
Secondly, the doctrine of laches is not relevant to the Panels consideration of the instant claim. See E.W. Scripps Co. v. Sinologic Indus., D2003-0447 (WIPO July 1, 2003) ("[T]he Policy does not provide any defence of laches. This accords with the basic objective of the Policy of providing an expeditious and relatively inexpensive procedure for the determination of disputes relating to egregious misuse of domain names."); see also Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”).
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dated: January 7, 2008
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