Claim Number: FA1006001330046
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <surfside-animal-hospital.com>, <surfside-animal-hospital.net>, <surfsideanimalhospital.com>, <surfsideanimalhospital.net>, <surfsideah.com>, <surfsideah.net>, <surfsidevethospital.com>, <surfsidevethospital.net>, <surfsideveterinaryhospital.com>, and <surfsideveterinaryhospital.net>, registered with Network Solutions, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2010.
On June 16, 2010, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <surfside-animal-hospital.com>, <surfside-animal-hospital.net>, <surfsideanimalhospital.com>, <surfsideanimalhospital.net>, <surfsideah.com>, <surfsideah.net>, <surfsidevethospital.com>, <surfsidevethospital.net>, <surfsideveterinaryhospital.com>, and <surfsideveterinaryhospital.net> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com. Also on June 18, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A Response was received on July 12, 2010 which the Forum found to be deficient as non-compliant with Supplemental Rule 5(a) as it was received after the July 9, 2010 deadline for its submission.
On July 19, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant made Additional Submissions on July 20, 2010.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant alleges trademark rights in the words SURFSIDE ANIMAL HOSPITAL and submits that the disputed domain names are at least confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and is using the disputed domain names in bad faith.
Respondent emailed an out-of-time Response to the Forum which was adjudged not to be in compliance with ICANN Rule 5(a). For reasons which emerge, the Panel has exercised its discretion to consider the Response.
The Response does not substantially address either the Complaint or the Policy. For the purposes of reaching a Decision, the Panel has extracted and set out hereunder the noteworthy passages from the Response:
…I agreed to immediately release and transfer the disputed Domain Names
After receiving papers from the attorney for Surfside Animal Hospital APC, I attempted to cancel my ownership of the disputed Domain Names. I learned, from Network Solutions, that the names were "locked" due to the complaint by Surfside Animal Hospital APC. Because of the locked status, nothing could be done, including cancellation, until the matter was resolved.
When I notified the attorney, for Surfside Animal Hospital APC that I would relinquish ownership of the disputed Domain Names and transfer them to Surfside Animal Hospital APC, I was sent a proposal in which it was requested that I pay $8673.48 to cover costs and losses suffered by Surfside Animal Hospital APC. I agreed to the proposal except for the payment. My counterproposal was declined by Surfside Animal Hospital APC. (As I cannot attach a document to this forwarded email, I will send you the proposal in a separate email).
Because of the complaint with Network Solutions has not been removed, I can do nothing further to resolve this.
C. Additional Submissions
Complainant made Additional Submissions which need not be summarized here but which are taken into account in reaching the Decision.
No significant findings of fact necessary in this case.
This case requires the Panel to consider three preliminary issues:
(i) Non-compliant Response
(iii) Other legal proceedings
Preliminary Issue: Non-compliant Response
Response was received after the deadline for its submission. The Panel has exercised its discretion to admit and consider the Response since in its view the lateness has not prejudiced Complainant and the Response has bearing on whether the Panel has a proper mandate to decide this matter by application of the UDRP or not.[i]
Preliminary Issue: Consent-to-transfer
An issue arises as to whether the Panel should decide this case under the UDRP given that Respondent has expressed a desire to resolve the dispute by transferring the disputed domain names to Complainant.
In the Disney Enterprises case,[ii] it was said that “where Respondent has agreed to comply with Complainant’s request [to transfer the domain name], the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”
By way of contrast, in the case of State Farm Mutual Automobile Insurance Co. v. Richard Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007), it was common ground between the parties that, prior to the filing of the complaint, the respondent had offered to transfer the disputed domain name to the complainant and the complainant had accepted that offer. Nonetheless, the complainant had taken a decision to press forward and file the complaint. Respondent in that case then wrote to the Forum stating in a letter that it “agreed with the complaint and agreed to release the Domain name.” That post-complaint correspondence was copied to the complainant, but the complainant did nothing to indicate whether it wished to abandon the complaint or not. In those circumstances, the panel there drew the inference that the complaint was maintained and so went on to decide the dispute under the terms of the Policy.
This Panel is of the view that an Order to transfer ownership of the domain names at issue requires, at the very least, an unconditional request on the part of the Respondent to do so. In its Additional Submissions, Complainant alleges “that Respondent has been less than forthright in his statement” that Respondent is ready and willing to transfer the disputed domain names to Complainant. Complainant states that:
is well aware that there are currently two active cases open against
Respondent. The UDRP Administrative proceeding, which is the subject of this
dispute as well as a Federal Circuit case pending in the Southern District
Court under case number 3:10-cv-01294-JLS –BLM.
Respondent indicated that he would like to discuss settlement of the
matters and accordingly, the parties agreed to discuss the possibility of
settlement of both the UDRP administrative hearing as well as the Federal
Circuit court case. During the course of
that discussion, a settlement offer was extended to Respondent, which was
rejected. There was no agreement by
Respondent to relinquish the domain names to their rightful owner,
In short, transfer appears to be conditional on Respondent’s demand for release from Complainant’s claim to $8,637.48 in attorney’s fees. Moreover, the Panel would expect that any final compromise also hinges on compromise of the court proceedings against Respondent.
Complainant has had more than adequate opportunity to approach the Forum indicating its possible willingness to accept the offer of transfer of the domain names. That has not happened. Accordingly, the Panel has decided that it is in this case appropriate to apply the UDRP analysis, subject only to consideration of the final preliminary matter regarding the legal proceedings between the parties.
Preliminary Issue: Other legal proceedings
It is a requirement of the Complaint for it to indicate whether other legal proceedings have been commenced or terminated in connection with or relating to any of the domain names.
Complainant states that
“contemporaneously with this action, Complainant is preparing for filing an
action for” cybersquatting, unfair competition, and false description in the
In an offer of settlement from Complainant to Respondent, Complainant’s attorney states “my client has given me the authority to extend an offer of settlement to settle both the UDRP administrative complaint as well as the civil action currently pending in the US District Court for the Southern District of California.” Neither Complainant nor Respondent has included a copy of the referenced civil action or given more detail about it. Nor is it clear that the UDRP Rules have traction since the language of the Complaint would suggest that those court proceedings were not “commenced or terminated” at the date the Complaint was filed.[iii]
The missing information regarding the nature and scope of the legal proceedings and the fact that, even if commenced in a court of competent jurisdiction, the proceedings appear to be outside the strict wording of the Rules, cause this Panel to decide that it should continue to apply the Policy and so make the formal analysis.
Paragraph 15(a) of the UDRP Rules instructs the 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.”
Policy ¶ 4(a) requires that Complainant must prove each of the following three elements to obtain an order that the domain names should be cancelled or transferred:
1. the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain names; and
3. the domain names have been registered and is being used in bad faith.
Policy ¶ 4(a)(i) requires a two-fold enquiry. First, a threshold investigation of whether Complainant has rights in the trademark SURFSIDE ANIMAL HOSPITAL, followed by an assessment of whether that trademark and the domain names are identical or confusingly similar.
Complainant does not own a registered trademark;[iv] however governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i) if common law rights established through use and reputation are proven.[v]
Complainant alleges it has used the SURFSIDE ANIMAL HOSPITAL mark in association with its veterinary services and all filings and business licenses associated with these services since May 18, 2009. Complainant also claims that it has invested substantially in marketing the SURFSIDE ANIMAL HOSPITAL mark.
Those claims are not in any way supported by evidence. There is no evidence whatsoever of reputation in, or public recognition of, the trademark, something consistently demanded in formative decisions under this Policy. The trademark is essentially descriptive. Even with extensive, well documented proof of use, Complainant might have struggled to show common law rights acquired over a period of barely more than one year. Based simply on the material before it, it is impossible for the Panel to attribute common law rights in the trademark to Complainant.[vi]
For these reasons, Complainant has not surmounted the first hurdle in proving its case and had failed to show rights in a trademark under Policy ¶ 4(a)(i).
No findings required.[vii]
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief is DENIED.
Debrett G. Lyons, Panelist
Dated: July 28, 2010
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[i] See Disney Enterprises., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005).
[iii] Compare with eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made.”).
[iv] Complainant has filed for trademark registrations with the United States Patent and Trademark Office (“USPTO”), but Complainant does not yet hold a trademark registration for its SURFSIDE ANIMAL HOSPITAL mark.
[v] See, e.g., 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 British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”.).
[vi] See EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007); see also Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005).
[vii] See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).