Pierre Gaulin, Essiac
International , Inc., and Essiac Products Services, Inc. v. Specialty Bottle
Supply, Scott Eskenazi and Living Proof Health Products, All Canadian Health
Products, Inc., Faith Jennings and Sibername.com, Privacy Service
Claim Number: FA0905001265296
PARTIES
Complainant is Pierre Gaulin, Essiac International ,
Inc., and Essiac Products Services, Inc. (“Complainant”), represented by Lee
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <essiac.com>, <essiac.net>, <essiac.info>, and <essiac.org>. The <essiac.com> domain name is registered with Register.com, Inc. The <essiac.net> domain name is registered with Network Solutions, Inc. The <essiac.info>
and <essiac.org> domain
names are registered with SiberName.com,
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.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 28, 2009; the
National Arbitration Forum received a hard copy of the Complaint on May 28, 2009.
On May 28, 2009, Register.com, Inc., confirmed by e-mail to the
National Arbitration Forum that the <essiac.com> domain name is
registered with Register.com, Inc. and
that the Respondent 1 is the current registrant of the name. Register.com,
Inc. has verified that Respondent 1 is bound by the Register.com, 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 May 28, 2009, Network Solutions, Inc., confirmed by e-mail to
the National Arbitration Forum that the <essiac.net> domain name is
registered with Network Solutions, Inc.
and that the Respondent 2 is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent 2 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 May 28, 2009, SiberName.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <essiac.info> and <essiac.org>
domain names are registered with SiberName.com,
Inc. and that the Respondent 2 is the current registrant of the
name. SiberName.com,
Inc. has verified that Respondent 2 is bound by the SiberName.com, 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 10, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 30, 2009 by which Respondents 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@essiac.com, postmaster@essiac.net, postmaster@essiac.info,
and postmaster@essiac.org by
e-mail.
A timely Response from Respondent 2 was received and determined to be
complete on June 29, 2009.
A timely Response from Respondent 1 was received and determined to be
complete on June 30, 2009.
An Additional Submission was received from Complainant on July 6, 2009 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On July 8. 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondents to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Trademark ESSIAC has been owned by Complainant Essiac Product
Services, Inc. since 1990. Complainant
has used the mark since 1977 as a common law trademark. The United States Patent and Trademark
Registration Number for ESSIAC is: 1,625,600. The domain names: <essiac.com>,
<essiac-resperin.com>, <essiac.net>,
<essiac.org>, <essiac.info>, <essiac.us>, are causing
consumer confusion and dilution to the mark and the domain name registrants and
owners are free-riding on the trademark owner’s good will. Complainant states that the multiple Respondents
are, in fact, one Respondent per Supplemental Rule 1(d). In this instance the Respondent’s names
are: Specialty Bottle Supply, Scott Eskenazi
and Living Health Products, Inc., All Canadian Health Products, Faith Jennings
and Sibername.com Privacy Service. They
are linked using “and.” Additionally,
the following individuals and companies benefit from use of <essiac.com>: Thomas Maloney and Susan Laurie and Kevin
Maloney and Essiac Canada International Essiac Products and Services, Inc. and
Altramed H.P., Inc. The multiple
Respondents shall be treated as one because all financially benefit from sales
derived from their use of the Complainant’s registered trademark in the subject
domain names. They are part of a
contrived web of individuals and companies all directly connected to each
other. Each Respondent benefits
financially from use of the listed domain names which are directly derived from
Complainant’s registered trademark.
Respondent has no rights or legitimate interests in respect of the
domain names that are subject of the complaint because they are identical to
Complainant’s registered trademark, which the Complainant has used since 1977
and registered with the USPTO since 1990. The trademark is for class 5 food
supplements. When an internet user
performs a google search on Essiac, 43 pages come up, all of which are directly
or indirectly connected with the Respondents.
This is an egregious bad faith use of the trademark owner’s registered
mark via the subject domain names. Respondent
is not making a legitimate noncommercial or fair use of the domain name,
without intent for commercial gain to misleadingly divert consumers or to
tarnish the trademark or service mark at issue. The longevity of the Complainant’s name and
registration of the mark and the continuing notices to the Respondents clearly
indicate that the domain name was registered in bad faith and is being used in
bad faith.
B. Respondent
Response of Scott Eskenazi and Specialty Bottle Supply.
“I an attaching a supplemental response clarifying that we have no
relationship to the other respondents in this proceeding and no knowledge
regarding the other domain names at issue in this proceeding. We consent to the transfer of the domain name
<essiac.com> to the
complainant.”
Response of Altramed, Canadian Health Products and Faith
Altramed, Canadian Health Products and Living Proof Health Products are
all distributors of the products manufactured in
Altramed, Canadian Health Products and Living Proof Health Products are all
connected to Cdn Essiac Products.
However, Altramed and Canadian Health Products are not connected in any
way to Specialty Bottle or Scott Eskenazi.
Similarly, Respondent contends that neither Living Proof Health Products
nor Cdn Essiac Products is connected in any way to Specialty Bottle Supply or
Scott Eskenazi.
C. Additional Submissions.
Complainant’s Additional Submission.
Complainant contends that the Respondents, Altramed, Canadian Health
Products, and Faith Jennings, and Mr. Eskenazi are the only parties served to
file a response. Living Health Health
Products and Privacy Services have not responded. Complainant therefore asks for a default
transfer of <essiac.net> and <essiac.info> respectively. Complainant argues that certain assignments
and transfers alleged in the Response of the Responent are not effective and
should be disregarded.
FINDINGS
1.
Complainant
has filed the Complaint against two completely distinct domain holders.
2.
The
Panel elects to proceed to decision on the disputed domain names, <essiac.net>, <essiac.info> and <essiac.org>, the domain names
owned by the Cdn Essiac Products company.
3.
The
Panel dismisses the Complaint against Scott Eskanazi and Specialty Bottle
Supply the owner of the domain name <essiac.com>.
4.
The
Complainant’s trademark and the disputed domain names at issue are identical or
confusingly similar.
5.
Complainant
fails to prove that Respondent is without rights to and legitimate interests in
the disputed domain names.
6.
Complainant
fails to prove that Respondent registered or used the disputed domain names in
bad faith.
7.
The
Panel finds that the Response of Cdn Essaic Products is a sufficient Response
to all parties named as Respondents in this case as it relates to <essiac.net>, <essiac.info> and
<essiac.org>. There is no default on the part of any
Respondent.
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.
Multiple Respondents
The Panel must first consider whether these proceedings have been
properly instituted. UDRP ¶ 3 (c) provides that a complaint may relate to more
than one domain name, provided that the domain names are registered by the same
domain name holder. Under the National
Arbitration Forum’s Supplemental Rule 1(d), the holder of a Domain Name
Registration is defined as the single person or entity as verified by the
registrar. Complainant contends that the
multiple respondents should be treated as one respondent because all of the
respondents financially benefit from the sales derived from their use of
Complainant’s registered mark in the disputed domain names. However, since the commencement of this case,
two different respondents have come forward asserting ownership of the disputed
domain names. Respondent Specialty
Bottle Supply, Scott Eskenazi has asserted that it has no relationship with
Respondent Living Proof Health Products, All Canadian Health Products, Inc.,
Faith Jennings. These entities deny any relationship with Specialty Bottle
Supply, Scott Eskanazi. Complainant does
not refute these allegations in its Additional Submission.
Under NAF Supplemental Rule 4(f)(ii), the
Panel finds there is insufficient evidence linking all of the disputed domain
names to a single registrant. The owner
of the domain name <essiac.com>
has no relationship with the owners of the remaining domain names.
This Complaint against Specialty Bottle Supply, Scott Eskanazi must be
dismissed. The case against the
remaining domain name holders will proceed.
Complainant has established rights in the
ESSIAC mark through its trademark registration with the United States Patent
and Trademark Office.( Reg. No. 1,625,600) issued December 4, 1990), pursuant to Policy ¶
4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0210 (WIPO Mar. 5,
2002) which held that Panel decisions have held that registration of a mark is
prima facie evidence of validity, which creates a rebuttable presumption that
the mark is inherently distinctive. See also
Complainant contends that the disputed domain
names are confusingly similar to the ESSAIC mark. The disputed domain names contain the ESSAIC
mark in its entirety, and merely add various generic top-level domains (“gTLDs”). The addition of any gTLD is irrelevant in
distinguishing a disputed domain name from an established mark. See Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27, 2007) which concluded that the affixation of a
gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See
also Rollerblade, Incl. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding
that the top level of the domain name such as “.net” or “.com” does not affect
the domain name for the purpose of determining whether it is identical or
confusingly similar.
Respondents contend that Complainant has no
rights in the ESSIAC mark because Complainant purports to have received the
formula for the products marketed under the ESSIAC mark through an assignment
from the original owner in 1978.
Respondent alleges that Respondent received its rights in the
aforementioned formula, and accordingly the ESSIAC mark, through an assignment
from the original owner in 1977.
The validity of such assignments are beyond
the realm of decision in a UDRP proceeding and must be left to determination in
courts with jurisdiction over the matter, where the validity of such documents
can be examined in proper form.
For the purposes of Policy ¶ 4 (a)(i), the
Panel finds that Complainant’s registration of the ESSAIC mark with the United States Patent and
Trademark Office, satisfies the requirements of the Policy.
Complainant must first make a prima facie
case that Respondents lack rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii), then the burden shifts to the Respondents
to show that they do have rights or legitimate interests in the disputed domain
names. See Hanna-Barbera Prods., Inc v.
Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Complainant contends that the Respondents
have been misleading consumers by marketing counterfeit products under
Complainant’s trademark at the websites that resolve from the disputed domain
names, and that this is evidence that the Respondents lack all rights and
legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Complainant
further argues that Respondent’s contention that it received trademark rights
to the ESSIAC mark in 1977 through an assignment is incorrect by alleging that
no trademark rights were assigned.
Complainant contends that the Respondent has no rights in the ESSIAC
mark because the alleged assignment in 1977 never actually occurred.
The issue Complainant fails to address is the
fact that Respondent has had a trademark registration in the ESSIAC mark with
the Canadian Intellectual Property Office since August 1, 1980, in addition to
trademark rights in the ESSIAC mark in forty other countries. Respondent is a Canadian company. It has every right to rely on its Canadian
registration. There is no dispute about
the fact that Respondent has been commonly known by the name ESSIAC since May
29, 1995 (Essiac Products, Inc. (Cdn Essiac Products)), a corporation
constituted on January 23, 1995 under the Canada Business Corporations
Act. This is sufficient to establish
rights and legitimate interests in the ESSIAC domain names under Policy 4(c)(ii). There is no
dispute about the fact that before any notice of the dispute, Respondent used
the domain names at issue in connection with a bona fide offering of goods. See Policy ¶ 4(a)(i). Thus, Respondent has illustrated its rights
and legitimate interests in the domain name responding to the Complaint. See
Kelly v. Osoft Consulting Ltd. D2003-0221 (WIPO Apr. 30, 2003) finding that
the respondent had concurrent rights and legitimate interests in the
<mygaydar> domain name where, at the time the administrative proceedings
was commenced, both parties had “homonymous trademark rights in the GAYDAR mark
through their respective use of the mark
in the
Complainant fails to prove that Respondent
has no rights or legitimate in respect of the domain name as required under
Policy ¶ 4(a)(iii).
The Panel finds that Respondent has rights
and legitimate interests in the <essiac.net>,
<essiac.info>, and <essiac.org> domain names
pursuant to Policy ¶ 4(a)(ii). The issue of bad faith registration and use is
moot once the panel has found that Respondent has rights and legitimate
interests in the domain names. Thus, it
is unnecessary to address the issue of bad faith. See
Lockheed Martin Corp. v. Shunkworx Curstom Cycle, D2004-0824 (WIPO Jan. 18,
2005): Vanguard Group Inc. v. Investors
Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007).
DECISION
It is the decision of this Panel that the
Complaint is dismissed against Specialty Bottle Supply, Scott Eskenazi, without
the ordinary UDRP analysis based upon an improper joinder of Respondents.
It is the decision of this Panel that the Complaint
against the remaining Respondents is dismissed upon failure of Complainant to
prove the elements required under the Policy.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 20, 2009
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