Sebastian International,
Inc. v. Sebastian Contracting Services, Inc.
Claim Number: FA0711001106694
PARTIES
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.
PANEL
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.
P-E H
PROCEDURAL HISTORY
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 postmaster@sebastian.com 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
December 17,
A timely Additional Submission was received from Respondent on December
21,
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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
million, with
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
B. Respondent
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 jascha@sebastian.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.
FINDINGS
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.
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 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.
The
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.”).
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
P-E H
Dated: January 7, 2008
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum