D & C Natural Products,
Inc. d/b/a "Dr. Tima
Claim Number: FA0908001276980
Complainant is D & C Natural Products, Inc. d/b/a "Dr.
Tima Beverage Co." (“Complainant”), represented by Robert J.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drtima.com>, registered with Go Daddy.
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.
Hon. Charles A. Kuechenmeister (Retired)
Complainant submitted a Complaint to the National Arbitration Forum
On August 3, 2009, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <drtima.com> domain name is registered with Go Daddy and that the Respondent is the current registrant of the name. Go Daddy has verified that Respondent is bound by the Go Daddy 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”).
A timely Response was received and determined to be complete on
The forum received an Additional Submission from Complainant on September 1, 2009. This Additional Submission was timely received and was considered by the Panel.
On September 4, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Charles A. Kuechenmeister (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant, D & C
Natural Products, Inc., is a
2. According to the Trademark/Service Mark Application filed by Complainant on or about July 20, 2009 with the United States Patent and Trademark Office (USPTO), a copy of which is attached to the Complaint as Exhibit 4, Complainant has used the mark DR. TIMA HONEY ALL NATURAL SODA (the “DR. TIMA Mark”) in commerce since 1998 to identify its non-alcoholic fruit beverages, in International Class 032.
3. The domain name in
dispute, drtima.com (the “Domain
Name”) is virtually identical to the DR TIMA Mark.
4. The Respondent is a business entity organized by one Elie “Jason” Parker. He is shown on the Registrar’s information as the administrative and technical contact of the Respondent.
5. Prior to its current registration with Respondent, the Domain Name was registered to Complainant. On or about May 6, 2009, Mr. Parker, who was then the CEO of Complainant, changed the registration of the Domain Name to himself, and then to Respondent.
6. The action of Mr. Parker in transferring the registration of the Domain Name was without the knowledge or approval of the shareholders or a majority of the directors of Complainant. Complainant never authorized this transfer, and Mr. Parker, as an officer of Complainant at the time, had a fiduciary obligation not to permit the transfer to occur.
7. On or about May 13, 2009, prior to learning of the transfer of the Domain Name, the Complainant terminated Mr. Parker as an officer of the corporation for reasons not related to such transfer.
8. Respondent does not use the Domain Name in connection with any business of its own.
9. Each page of the
website associated with the Domain Name designates Dr. Tima
10. Respondent has registered and is using the Domain Name in bad faith.
1. The Domain Name is not in dispute.
2. The current Registrar information was listed as Aeronetics, LLC (Respondent) as a security measure during litigation by Jason Parker to hold on to the Domain Name. Jason Parker was not terminated as CEO of Complainant. He still serves in that capacity.
3. Complainant is under legal dispute in Los Angeles Superior Court pending dissolution. Respondent is the firm licensed to manage the Complainant.
C. Additional Submissions
1. Respondent effectively conceded that the Domain name is identical to the DR. TIMA Mark.
2. Respondent failed to submit any evidence that it has any right or legitimate interest in respect of the Domain Name.
3. Complainant never licensed Respondent to operate Complainant or to take control of the Domain Name.
4. Respondent is not known by the name “Dr. Tima,” nor is there any evidence that Respondent has applied for trademark rights to that name.
5. Respondent has submitted no evidence that it uses the Domain Name in connection with any business activities of its own.
DISCUSSION AND FINDINGS
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.
Scope of Ruling
As can be inferred from the parties’ contentions set forth above, this dispute over the Domain Name grows out of a larger dispute between several individuals over control of the Complainant corporation. Indeed, much energy that might better have been expended dealing with Policy requirements and guidelines as regards the Domain Name was spent asserting and defending individuals’ claims and counterclaims with respect to control of the business affairs of Complainant. Resolution of these claims is, of course, beyond the scope of the Uniform Domain Name Dispute Resolution Policy; the Panel is without jurisdiction to decide these issues. The Panel has endeavored to address the matters within the scope of these proceedings, i.e., whether the Domain Name should be transferred to Complainant, without making any assumptions about possible outcomes with respect to the business and commercial disputes among the individuals involved. The Panel’s discussion and findings address only and are based solely upon the evidence relating to the parties’ claims relating to the Domain Name.
The Complainant does not need to
register the DR. TIMA mark with a federal trademark authority in order to
establish rights in the mark under Policy ¶ 4(a)(i). See
Complainant has established common
law rights in the DR. TIMA mark under Policy ¶ 4(a)(i). As set forth in the trademark application for
the DR. TIMA HONEY ALL NATURAL SODA mark submitted with the Complaint (Exhibit
4), Complainant has used the DR. TIMA HONEY ALL NATURAL SODA mark to identify
its beverage products since at least at early as 1998. Copies of beverage bottle labels using the
DR. TIMA mark also submitted with the Complaint (Exhibit 3) corroborate Complainant’s
claim of common law trademark right in that name. The Complainant has thus established its
rights in the DR. TIMA mark under Policy ¶ 4(a)(i). See
Further, the <drtima.com> domain name is identical to Complainant’s DR.
TIMA Mark under Policy ¶ 4(a)(i). The
Domain Name differs from the DR. TIMA Mark by omitting the period and space
from the mark and adding the generic top-level domain (“gTLD”) “.com.” These alterations are irrelevant. The Domain Name is identical to Complainant’s DR. TIMA mark under Policy ¶
4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum
The Domain Name is identical or confusingly similar to the DR. TIMA Mark, in which the Complainant has substantial and demonstrated rights.
If a complainant makes a prima
facie case that the respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent
to show it does have rights or legitimate interests. See Hanna-
Complainant asserts and the evidence
demonstrates that Respondent is not commonly known by the Domain Name under
Policy ¶ 4(c)(ii) since the WHOIS information identifies Respondent as “Aeronetics, LLC” and Respondent is not known
as “Dr. Tima
Respondent has not offered any evidence that it is known by the name Dr. Tima or any variation of that name. Further, Respondent has not shown any other indicia of right or legitimate interest in the Domain Name under Policy ¶ 4(c). There is no evidence or even an indication that it is using the Domain Name in connection with a bona fide offering of goods and services, or making a legitimate noncommercial or fair use of it in its own name.
and Use in
The Domain Name currently resolves to a website that advertises Complainant’s products and describes Complainant’s company background and mission statement. At the bottom of each web page is a note that the contents are copyrighted by Complainant. There are no links to competing businesses. Respondent’s name does not appear on any page submitted to the Panel but Mr. Parker is shown as the contact for press inquiries. The contact information given for Complainant is that of the Respondent and Mr. Parker (Exhibit 6 to Complaint). There is no evidence of any offer by Respondent or Mr. Parker to sell the Domain Name to Complainant or to any other entity, nor is there evidence that Respondent registered the Domain Name to disrupt the business of a competitor or that it is using the Domain Name to attract internet users to the website for the commercial gain of Respondent. From the statements of Respondent’s principal, Mr. Parker, it can be inferred that Respondent registered the Domain Name in its name in order to prevent Complainant from reflecting its DR. TIMA Mark in its own domain name, but there is no evidence that this conduct occurred more than the single time involved in this case; there appears to be no pattern of such conduct as referred to in Policy ¶ 4(b)(ii).
Accordingly, the Complainant has failed to demonstrate Respondent’s bad
faith registration and use based upon the circumstances set forth in Policy ¶
4(b). That is not, however, the end of
the inquiry. It is well settled that the Panel may consider the totality of
the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and it is not
limited to the factors enumerated in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web,
In reviewing the totality of circumstances present here, the Panel
notes that this is not a case where a party outside the complainant’s
organization created and registered a domain name containing the complainant’s trademark. The Domain Name was originally registered to
Complainant. While a corporate officer
of Complainant, Mr. Parker transferred the registration of the Domain Name
first to himself and then to Respondent, which is a limited liability company
owned and controlled by him. While
Respondent asserts that other justification existed for such action, it is
undisputed that this transfer was not authorized by Complainant’s board of
directors, and there is no evidence of any value or other consideration given
The Panel turns next to the question of whether Respondent’s use of the Domain Name may also be deemed in bad faith: Its current use, described in detail above, may not be actively contrary to the commercial interests of Complainant or advantageous to those of Respondent. Nevertheless, as registered owner of the Domain Name, Respondent has control of the website resolving from it, and Respondent has the power to change the content thereof at any time. Complainant, the owner of the DR. TIMA Mark, has no ability to control that content. Further, there remains the persistent and overriding fact that the Domain Name belonged to the Complainant and was wrongfully taken from it. Respondent cannot obtain ownership of an asset coming into its possession by wrongful means. Its continued assertion of ownership thereof is wrongful as against Complainant, and constitutes bad faith within the meaning of Policy ¶ 4(a)(iii).
Accordingly, the Panel finds and determines that Respondent has registered and is using the Domain Name in bad faith.
In making these findings the Panel does not presume to interfere in the resolution of larger disputes relating to control of the business and affairs of Complaint corporation. Like any other asset of that company, the Domain Name in the hands of Complainant will be available to whichever individuals ultimately prevail with respect to those issues. In the meantime, the Domain Name rightfully belongs to Complainant, not Respondent.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <drtima.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Charles A. Kuechenmeister (Ret.)
Dated: September 18, 2009
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