Dr. Anthony Gallegos v. Christopher Patti
Claim Number: FA0811001233622
PARTIES
Complainant is Dr. Anthony Gallegos (“Complainant”), represented by Peter R. Afrasiabi, of Turner Green Afrasiabi & Arledge LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <celebritysmiles.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.
Darryl C. Wilson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 12, 2008; the National Arbitration Forum received a
hard copy of the Complaint on November 17, 2008.
On November 12, 2008, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <celebritysmiles.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 25, 2008, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 15, 2008 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@celebritysmiles.com by
e-mail.
A timely Response was received and determined to be complete on
December 15, 2008.
An Additional Submission was submitted by Complainant on or about
December 23, 2008 and was determined to be deficient as it was not in
compliance with Supplemental Rule 7. The Panel did review the submission and
has chosen to consider this Additional Submission in its Decision.
An Additional Submission was submitted by Respondent on or about
December 29, 2008 and was determined to be in compliance with Supplemental Rule
7. The Panel considered the submission in reaching its decision.
On December 17, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Prof. Darryl C. Wilson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that in 1998 it established rights in the mark CELEBRITYSMILES
upon which it has built a local business and has also operated that business at <celebritysmiles.com>. Complainant
further asserts that Respondent’s domain name is identical and/or confusingly
similar to Complainant’s CELEBRITYSMILES mark. Complainant also contends that
Respondent has no rights or legitimate interests with respect to the disputed
domain name and that Respondent has registered and is using the disputed domain
in bad faith.
B. Respondent
Respondent contends that it acquired the disputed domain pursuant to a
successful bid in an auction in 2008. Respondent also asserts that Complainant
has no enforceable trademark rights in the disputed domain name or the mark
CELEBRITYSMILES since it is generic or merely descriptive and that Respondent
has rights and legitimate interests to the name based on its own established
business. Respondent finally contends that it is using the disputed domain name
in good faith.
C. Additional Submissions
Complainant’s Additional Submission primarily repeats the contentions
made in the original Complaint albeit with a vigorous reaffirmation of
Respondent’s purported bad faith in registration. Respondent’s Additional Submission
is also largely repetitive with additional emphasis placed on Complainant’s
allegedly negligent behavior in allowing the disputed domain to lapse.
Respondent also underscores facts supporting his contention that he has been
known by the disputed domain since its acquisition and also argues extensively
regarding what an Internet search purportedly showed at the time of the disputed
domain’s acquisition as well as what current search results reflect.
FINDINGS
The Complaint begins with the statement that
the case “…sits before this Panel in an odd posture.” That statement is probably the clearest,
least controversial remark in all the pleadings submitted regarding this
matter.
Complainant is a dentist whose
Complaint and advertisements state that he practices, lectures and teaches
dentistry on a national and international basis. Complainant’s first asserted
use of the mark CELEBRITYSMILES in commerce occurred May 1, 1998 and
Complainant has used the mark consistently since that time in relation to his
dental practice. While Complainant never filed for state or federal
registration of the mark or any variation thereof until October 9, 2008,
Complainant did register the disputed domain name <celebritysmiles.com> on or about May 21, 1998. Complainant
states that the registration was to be in effect through May 2010 based on
payments made to his webhosting service and that he was unaware of Respondent’s
purchase of the domain name since notices allegedly sent to him by the domain
name registrar were sent to the wrong address.
On or about October 5, 2007 Respondent
created and registered “Premier Automotive Enterprises, LLC” with the Florida
Division of Corporations for an automotive customization and auto sales center.
Respondent then abandoned the idea “in early 2008” because “the business plan
seemed unsuccessful” and decided to explore another idea he had allegedly been considering,
namely offering teeth whitening outside a dental office. On June 11, 2008
Respondent amended his LLC to change the name to “Celebrity Smiles Professional
Teeth Whitening LLC.” Respondent points
out that this amendment was prior to his obtaining the disputed domain name.
Respondent states that “As in all new business ventures, the next steps in the
process were to solidify every other aspect of opening salons throughout West
Central Florida.” Respondent further
alludes to various types of research done regarding the business. As a result
of his prior inquiry and backorder, occurring at least as early as May 2008,
Respondent was notified on June 30, 2008 that his efforts in an auction and
bidding process were successful and that he was the new owner of the disputed
domain.
Throughout the fall of 2008 the parties
exchanged e-mails with each other and with the domain name registrar who
refused to acknowledge any wrongdoing and assured Respondent that he now
properly owns the domain name. A current search response reveals that the site
resolves to Respondent’s website if the search result “Celebrity Smiles;
Professional Teeth Whitening” is clicked but the same result offers a hotlink
to Complainant’s address and place of business as well. The WHOIS information
has changed from Complainant’s name to Respondent although it shows the date of
origin as May 21, 1998 claimed by Complainant, and the expiration date as May
20, 2010 date, which is the date Complainant asserts that he paid for
webhosting services to last through. The information shows its last update
occurred July 7, 2008.
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.
Complainant asserts that the disputed domain is identical and/or
confusingly similar to his common law mark CELEBRITYSMILES. Respondent does not
address Complainant’s contentions regarding Complainant’s establishment or use
of the mark but instead argues that the mark is generic or descriptive or in
the alternative that Complainant has failed to establish secondary meaning.
While the mark is not inherently distinctive based on it being arbitrary or
fanciful, the Panel agrees that the mark is suggestive and that Complainant has
established common law rights in the mark. Common law rights are sufficient for
a party to exercise their options under the policies of the UDRP. See Artistic Pursuit LLC v.
calcuttawebdevelopers.com, FA 894477
(Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require
a trademark registration if a complainant can establish common law rights in
its mark); see also
The disputed domain name <celebritysmiles.com> is identical to Complainant’s CELEBRITYSMILES mark, despite the addition of the generic top-level domain “.com.” The addition of “.com” is irrelevant when making a Policy ¶ 4(a)(i) analysis. See, e.g., W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Complainant has established this element.
Complainant asserts that Respondent lacks
rights or legitimate interests in <celebritysmiles.com>
because Respondent has never been commonly known by the disputed domain name
and Complainant never authorized or licensed Respondent to use the
CELEBRITYSMILES mark. Respondent does
not disagree with those assertions but instead argues that it has rights and a
legitimate interest in the domain name based on its purchase via an auction as
well as the subsequent costs incurred in establishing its present ongoing teeth
whitening business. Although both parties set forth respective claims of costly
expenditures regarding business expenses associated with the disputed domain
name these facts, if true, are unpersuasive as subsequent business expenses are
not dispositive in determining whether rights or legitimate interests were
initially established in a proper manner. While the WHOIS information presently
shows the name of Respondent, it reflected the name of Complainant from May 21,
1998 until at least May 2008. As Respondent indicates that substantial research
went into preparing to start his business it appears he knew or should have
known of Complainant. A search of the availability of CELEBRITYSMILES as a
domain name would have shown Complainant as well as others as holders of
various gTLD’s incorporating that mark and possibly other available gTLD’s for
the mark. In fact Respondent did know that the disputed domain name was not
available and decided to use the backorder process instead of using a different
domain name or gTLD. Respondent’s preparations to use the disputed domain
before receiving notice of the successful bid only involved amending the name
of its existing LLC. Since receiving the domain name and prior to the dispute
Respondent has established and marketed its business as Celebrity Smiles and
has also consulted with a web designer to upgrade the website to which the
disputed domain name resolves. While all of the events may have been merely
coincidental the Panel finds that Respondent is not and has never been commonly
known by the disputed domain name under Policy ¶ 4(c)(ii).
Finding to the contrary, while possible as a literal interpretation of the
UDRP, seems otherwise unsupportable as it allows an individual to use the speed
of technology and commerce to align himself with the wording of the UDRP by
methods that thwart the policies’ real underlying intent. See
Instron Corp. v. Kaner, FA
768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometers.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the
registrant of the disputed domain names and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute); see also
Complainant has
established this element.
Complainant claims that
Respondent’s registration and use is in bad faith based on the similarity
between the domain name and his mark, the timing involved in the registration,
and that Respondent’s website causes intentional confusion and diversion of
Complainant’s customers. Respondent asserts there is no confusion given that
the parties are on opposite sides of the country and that there was not any way
for him to know of Complainant’s existence when he rightfully bid for and
received the disputed domain. A finding of registration and use in bad faith is
generally premised on the factors listed in Policy ¶ 4(b). See Societe des
Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12,
2001) (finding that where the respondent has not attempted to sell the domain
name for profit, has not engaged in a pattern of conduct depriving others of
the ability to obtain domain names corresponding to their trademarks, is not a
competitor of the complainant seeking to disrupt the complainant's business,
and is not using the domain name to divert Internet users for commercial gain,
lack of bona fide use on its own is insufficient to establish bad faith).
However evaluation of bad faith registration and use is not limited to the four
enumerated elements under Policy ¶ 4(b), as the totality of the circumstances
should be considered when rendering a finding under Policy ¶ 4(a)(iii). See
Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”). While Respondent is not a direct competitor of
Complainant, and his actions since receiving the domain indicate a genuine
effort to make his business known by the disputed domain name, his actions
prior to receiving the domain weigh in favor of bad faith in the context of the
choices available in these proceedings.
The pleadings indicate that the disputed domain apparently lapsed
inadvertently in 2008 possibly due to a mailing address snafu, an erroneous
assumption by Complainant that mixed up the web hosting service payments with
domain name service, or possibly Complainant’s negligence as Respondent
asserts. But domain names are not torts waiting to happen where negligence,
incidental circumstances, or other unforeseen accidents call for turnover of a
domain name as damages to fortuitous or devious parties at the expense of
former owners. Domain names are a form of property and property law generally
abhors forfeiture to the benefit of prior rightful owners without reward to
those who knew or should have known of existing potentially adverse interests
at the time they made claim to the property in dispute. A larger question looms
regarding the UDRP policies as presently constituted in relation to technological
innovations such as automated submissions, instant notifications, backorder
auctions and other activities that quickly allow individuals to establish
rights and refute bad faith under the literal guise of the policies regardless
of the mindset of the claimant or serendipitous facts in a given situation. In
the instant matter, Respondent wanted a domain name that belonged to
Complainant and ultimately acquired it against Complainant’s will despite the
availability then and now of other almost identical domain names. Contrary to
both parties’ contentions the UDRP proceedings are only an administrative
determination of the parties’ rights to the disputed domain name and not a
binding declaration on the validity of their existing business or marketing
plans. In light of the pleadings and totality of circumstances, Respondent’s
registration and use constitute bad faith.
Complainant
has established this element.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <celebritysmiles.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Prof. Darryl C. Wilson, Panelist
Dated: December 31, 2008
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