Matchmaker International Development
Corporation v. Matchmaker
International, Lou Paravate and Denise Paravate
Claim Number: FA0309000198893
PARTIES
Complainant
is Matchmaker International Development
Corporation ("MIDC"), Rocky River, OH (“Complainant”) represented
by Philip I. Frankel, of Bond, Schoeneck & King, PLLC, One
Lincoln Center, Syracuse, NY 13202-1355.
Respondent is Matchmaker
International, Lou Paravate and Denise Paravate, Pensacola, FL
(“Respondent”) represented by Ari Goldberger,
of ESQwire.com Law Firm, 35 Cameo
Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED
DOMAIN NAMES
The
domain names at issue are <matchmakerinternational.cc>
registered with TLDs, Inc. d/b/a SRSplus and <matchmakerinternational.net> registered with Go Daddy Software, Inc.
PANEL
Each
of 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.
Honorable
Robert T. Pfeuffer (Ret.) as Panel Chairperson, and Houston Putnam Lowry
(Chartered Arbitrator) and Rodney C. Kyle as Co-Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 30, 2003; the Forum received a hard copy of the
Complaint on October 6, 2003.
As
of October 3, 2003, both TLDs Inc. d/b/a SRSplus and Go Daddy Software, Inc.
have confirmed by e-mail to the Forum that the domain names <matchmakerinternational.cc> and <matchmakerinternational.net> are
registered with TLDs Inc. d/b/a SRSplus and Go Daddy Software, Inc.
respectively and that the Respondent is the current registrant of the
names. TLDs Inc. d/b/a SRSplus and Go
Daddy Software, Inc. have verified that Respondent is bound by the TLDs Inc.
d/b/a SRSplus and Go Daddy Software, Inc. registration agreements 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
October 14, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 3, 2003 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@matchmakerinternational.cc and postmaster@matchmakerinternational.net
by e-mail.
A timely Response was received and
determined to be complete on November 3, 2003.
A
timely Additional Submission from Complainant was received and determined to be
complete on November 10, 2003.
A timely Additional Submission from Respondent was
received and determined to be complete on November 17, 2003.
On November 19, 2003, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the Forum appointed Honorable
Robert T. Pfeuffer (Ret.) as Panel Chairperson, and Houston Putnam Lowry
(Chartered Arbitrator) and Rodney C. Kyle as Co-Panelists. Panelist Rodney C. Kyle authored the majority decision.
RELIEF SOUGHT
Complainant
requests that the registrations of the domain names at issue be transferred
from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Basically,
in the Complaint, Complainant makes three main sets of contentions, including
to submit evidence contended to support aspects of them.
FIRST MAIN SET
In
the first main set of contentions, Complainant basically makes contentions by
way of four points.
The
first point is that Complainant is a New York corporation, operating since
1983, that provides personal dating services through its licensed and
franchised facilities located in various states across the United States.
The
second point has three sub-points and is that the mark MATCHMAKER INTERNATIONAL
(with a heart shaped “a” design as part of the words “MatchMaker
International”) is a service mark (i) registered by the U.S. Patent &
Trademark Office (“PTO”) on July 25, 1989 under Registration No. 1,549,618 for
personal dating services (i.e. arranging dates for others) and by the Canadian
Intellectual Property Office on May 24, 1996 under Registration No. TMA457626—
all of which is evidenced by Complaint Exhibit 1; (ii) used in conjunction with
a franchise program that utilizes the mark as part, and indeed as a
foundational and integral part, of its franchise system; (iii) as to which, on
April 13, 1995, Respondent’s Lanham Act, 15 U.S.C., Section
15 Affidavit was accepted by the PTO, acknowledging Respondent’s uncontestable
right to the use of that mark for those services.
The
third point has two sub-points, each sub-point being to the effect that a
respective one of the domain names at issue is registered to Respondent: (i)
the domain <matchmakerinternational.cc>
has, as the Registrant and Administrative Contact, Lou Paravate of “Matchmaker
International” (as evidenced by the copies of the domain name registration
records that are Complaint Exhibit 4) and, although the full name of the latter
entity is not specified, it can be inferred to be “Matchmaker International of
Florida, Inc.” of principal address 5700 N. Davis Hwy., Pensacola, Florida
32503 and having Mr. Paravate is an owner and principal (as evidenced by the
copies of the Florida Secretary of State, Division of Corporations, records of
incorporation that are Complaint Exhibit 2); and (ii) the domain <matchmakerinternational.net>
has, as the Registrant, “Matchmaker International” and, as the Administrative
Contact, Denise Paravate, and, on the same basis as set out in point “(i)” of
this paragraph and because of the domain’s filing address and direct link to
the domain <matchmakerinternational.cc>,
the owner of the domain <matchmakerinternational.net>
can be inferred to be “Matchmaker International of Florida, Inc.”
The
fourth point is that each of the domain names at issue is identical to
Complainant’s MATCHMAKER INTERNATIONAL mark, as per MatchMaker Int’l Dev. Corp. v. Kaiser Dev. Corp. Inc., FA 146933
(Nat. Arb. Forum May 9, 2003) and cases cited therein on that point.
SECOND MAIN SET
In
the second main set of contentions, Complainant basically contends by way of
two points that Respondent has no “rights or legitimate interests” in respect
of each of the domain names at issue.
The
first point has seven sub-points and is to the effect that Respondent Lou
Paravate and Respondent Matchmaker International of Florida, Inc. have a
limited license from Complainant, to use of the mark MATCHMAKER INTERNATIONAL,
pursuant only to a Stipulation of Settlement dated October 6, 1994 (the
“Settlement”), evidenced by the copy of the Settlement document that is
Complaint Exhibit 3. The sub-points are as follows: Respondent Lou Paravate and
Respondent Matchmaker International of Florida, Inc. (i) rights and privileges
as to using the mark MATCHMAKER INTERNATIONAL are limited by, and derive only
from, the Settlement (which is mute as to the use of the Internet and domain
name rights because the web was not contemplated at the time of the Settlement)
and there has never been any specific authorization for them to use the mark as
a domain name so they do not have a right or privilege to register either of
the domain names at issue; (ii) in Section 1 of the Settlement, agree and
acknowledge that Complainant is the sole and absolute owner of the MATCHMAKER
INTERNATIONAL mark, that they have no right, title or interest in the
MATCHMAKER INTERNATIONAL mark, and that they do not own, directly or
indirectly, any or all of the legal interests in and to the MATCHMAKER
INTERNATIONAL mark; (iii) use of the mark does not inure to their benefit and
they have no right to the mark except in the sense of having the privilege to
use the mark as provided in the Settlement— as per MatchMaker Int’l Dev. Corp.
v. Kaiser Dev. Corp., citing Nikon,
Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) and 2 T.J.
McCarthy on Trademarks and Unfair Competition, § 18:52 (4th Ed.
2000); (iv) by Section 20 of the Settlement, are limited in their privilege of
use of the mark to the A.D.I. Territories (i.e. “Area of Dominant Influence”
territories, which refers to the area covered by a television broadcast signal)
of Chattanooga, Mobile, Pensacola, and Savannah, subject to other non-related
terms contained in the Settlement, whereas their use of the mark on the web
effectively establishes a world wide use and therefore exceeds the geographical
scope provided in the Settlement and violates the Settlement; (v) by Section 31
of the Settlement, have the understanding (and as per Complainant’s intent)
that Complainant has no plans to sell or otherwise divest itself of its mark
and maintains its exclusive ownership in the mark; (vi) do not own a state or
U.S. trademark registration in the words “Matchmaker International”; and (vii)
have steadfastly been objected to by Complainant as to their use of the domain <matchmakerinternational.cc>, so
Complainant never would have granted its consent for such use of either of the
domain names at issue.
The
second point is that Respondent filed for the domain name registration of each
of the domain names at issue, as evidenced by the copies of the domain name
registration records that are Complaint Exhibit 4, and that Respondent’s
registration and use of each of the domain names at issue was without
authorization and contrary to the Settlement.
THIRD MAIN SET
In
the third main set of contentions, Complainant basically contends by way of
four points that Respondent registered, and is using, each of the domain names
at issue in bad faith.
The
first point has two sub-points and is that Respondent, by disrupting and, more
particularly (as per the second through fourth points), by intentionally
interfering with, Complainant’s business practices, is guilty of bad faith: (i)
Complainant’s licensees and franchisees exist throughout the United States, and
as a result Complainant seeks to have one central location to market the
franchise and to direct customers’ inquiries to their local franchise
operation; and (ii) Respondent’s registration of the domain names at issue has
prevented Complainant from using its registered mark in those domains to
provide information about its company, its services, and its franchisees, and
therefore disrupts Complainant’s business practices.
The
second point is that Respondent has hijacked Complainant’s mark and franchise
marketing system: each of the domain names at issue establish a link to the <matchmakertinternational.cc>
home page outlining its five franchise locations and are used only for the
benefit of Respondent and not for other licensees, franchisees or the franchise
system as a whole (e.g. if a customer in Florida logs on to the site and sees
that the five locations are not nearby, the customer may assume that it is only
linked to those offices and that there are no other offices in Florida, Alabama
or Tennessee, which would be untrue and is an attack on the entire franchise as
a whole since it prevents Complainant from directing inquiries to all its local
franchisees).
The
third point is that, as set forth above regarding absence of Respondent “rights
or legitimate interests” in respect of each of the domain names at issue,
whether by contract or otherwise Respondent has no right or privilege to
register or use either of the domain names at issue, and includes the following
four sub-points: (i) Respondent never sought prior approval for the use of the
MATCHMAKER INTERNATIONAL mark as a domain name, nor was such permission ever
granted by Complainant; (ii) it is obvious that Respondent’s use of the domain
names at issue to advertise its services virtually everywhere in the world is a
breach of the territorial limitations that are set forth in the Settlement;
(iii) Respondent’s use of the mark to promote Respondent’s locations and
foreclose Complainant’s ability to market itself to the public at large and to
advertise and promote all its locations as a franchise was done intentionally;
and (iv) such use and hijacking by Respondent is evidence of bad faith, because
Respondent knew it had a limited privilege to use the mark MATCHMAKER
INTERNATIONAL and ignored the limitations on that privilege when it registered
each of the domain names at issue.
The
fourth point has three sub-points, and is to the effect that Respondent’s
refusal to relinquish the domain names at issue is also evidence of bad faith,
in that (i) Respondent Lou Paravate and Respondent Matchmaker International of
Florida, Inc. were demanded of by Complainant, through Complainant’s attorneys,
to transfer the registration of the domain name <matchmakerinternational.cc> to Complainant, as evidenced by
a copy of a letter dated August 14, 2003 that is Complaint Exhibit 5; (ii)
Respondent Lou Paravate and Respondent Matchmaker International of Florida,
Inc. refused to transfer the registration of that domain name to Complainant;
(iii) it is clear that Respondent registration of each of the domain names at
issue was primarily for the purpose of disrupting the business of Complainant
and to attempt to attract customers to Respondent in contravention of the
Settlement.
B. Respondent
Basically,
in the Response, Respondent makes three main sets of contentions, including to
submit evidence contended to support aspects of them.
FIRST MAIN SET
In
response to Complainant’s first main set of contentions, Respondent does not
dispute this element of the Complaint.
SECOND MAIN SET
In
response to Complainant’s second main set of contentions, Respondent contends
that, in respect of each domain name, Respondent has a legitimate interest
based on paragraphs 4(c)(i) and 4(c)(ii) of the Policy.
As for Policy ¶ 4(c)(i), Respondent contends by the way of
four points.
The
first point has four sub-points and is that (i) Respondent is authorized by the
Settlement to engage in operating five businesses in four states; (ii)
Respondent engages in operating those business in those states; (iii) such
operation includes the registration, and use, by Respondent, of the domain
names at issue; and (iv) such registration and use is authorized by the
Settlement’s paragraph 20 and results, as per Mark Travel Corp. v. ATHS, FA 154644 (Nat. Arb. Forum May 29, 2003)
and like cases on that point, in a legitimate interest within Policy ¶ 4(c)(i).
The
second point has two sub-points and is that (i) Complainant contends that the
Settlement does not provide for Respondent’s use of the domain names at issue;
and (ii) Complainant’s contention in that regard is wrong in that, (a) for the
purposes of this proceeding, a registrant’s right to use a domain name arises
not from contractual rights with another party but, rather, under the Policy,
and that, in this case the Policy permits use of a domain name for the bona
fide offering of services and (b) the Settlement does not prohibit use of the
MATCHMAKER INTERNATIONAL mark in a domain name and instead broadly states that
Respondent “will be permitted the use of the [MATCHMAKER INTERNATIONAL] Service
Mark.”
The
third point has two sub-points and is that (i) Complainant contends that
Respondent’s Internet use of each of the domain names at issue establishes a
worldwide usage of each of the domain names at issue and therefore violates the
Settlement by exceeding the geographic scope of the Settlement; and (ii)
Complainant’s contention in that regard is wrong in that, (a) accessibility of
a website to users located all over the world does not mean that a website
publisher is promoting the site to the entire world, any more than a business
that can receive phone calls or mail from the rest of world is promoting its
business outside of its local markets, (b) if it is true that the fact that a
domain name can be accessed from a geographic region means the publisher is
doing business there, then Complainant, too, would be violating the Settlement,
since Complainant is prohibited thereunder from operating Matchmaker International
businesses “in competition with any MatchMaker International facility operated
by Mr. Paravate,” as evidenced by Settlement paragraph 16 and (c) taking
Complainant’s argument to the extreme, Complainant would be prohibited from
marketing a dating service on the Internet under any name, as it would compete
with Respondent’s business, since any website operated by Complainant could be
accessed from within Mr. Paravate’s protected territories.
The
fourth point has two sub-points and is that (i) Complainant contends that Matchmaker Int’l Dev. Corp. v. Kaiser Dev.
Corp., FA 146933 (Nat. Arb. Forum May 9, 2003) stands for the proposition
that Respondent has no right or privilege to the mark other than the privilege
to use the mark as provided in the Settlement; and (ii) Complainant’s
contention in that regard is wrong in that the decision dealt with a franchise
agreement rather than a settlement agreement and so has no relevance.
As
for Policy ¶ 4(c)(ii), Respondent contends by way of three points that Respondent
has been commonly known by its corporate name: (i) as evidenced by Complaint
Exhibit 2 as well as the affidavit of Louis A. Paravate that is Response
Exhibit 1, a USA Today article dated October 25, 1988 that is Response Exhibit
2, a U.S. registered trademark for the term MATCHMAKER INTERNATIONAL filed June
9, 1983 (U.S. Registration No. 1304462) but which is no longer active and of
which Louis A. Paravate was the first owner as evidenced by a U.S. Patent and
Trademark Office (“PTO”) Trademark Electronic Search System report that is
Response Exhibit 3; (ii) the domain names at issue are both registered to
Respondent; and (iii) Complaint’s naming of Respondent in the style of cause of
this proceeding.
THIRD MAIN SET
In
response to Complainant’s third main set of contentions, Respondent contends by
way of four points that, in respect of each domain name, Respondent did not
register, and is not using, the domain name at issue in bad faith.
The
first point has two sub-points and is that (i) Complainant contends that
Complainant has been prevented from using its registered mark as a domain to
provide information about its company; and (ii) Complainant’s contention in
that regard is wrong in that, (a) Complainant owns <matchmakerinternational.com>, so it may not avail itself of this argument, as per Mark Travel Corp., supra to the effect
that “Complainant is not being blocked from using its trademarks as a domain
name because it has eight domain names incorporating its marks” including the
.com version and (b) even if Complainant were prevented from using its mark,
that is irrelevant since it is Respondent’s intent to prevent Complainant from
using its trademark, along with evidence of a pattern of such activity, that
establishes bad faith under paragraph 4 (b)(ii) of the Policy and, as per Mark Travel Corp., supra, there is
no evidence of an intent or pattern here on the part of Respondent.
The
second point has two sub-points and is that (i) Complainant contends that
Respondent’s website is used solely for Respondent’s benefit; and (ii)
Complainant’s contention in that regard is wrong in that, it is irrelevant
since (a) there is no obligation on Respondent’s part to promote other
franchises owned by Complainant, (b) Respondent is not required, as suggested in
the Complaint, to seek Complainant’s approval to use domain names incorporating
Respondent’s own business name, so (c) neither does Respondent’s failure to
seek such approval, nor does Respondent’s failure to surrender the domain names
at issue to Complainant, constitute bad faith.
The
third point is that there is no evidence that Respondent registered each of the
domain names at issue to disrupt Complainant’s business.
The fourth point is that there is no evidence that
Respondent has intentionally attempted to attract users to its website by
creating a likelihood of confusion with Complainant’s mark, the Respondent
clearly identifies each of its own offices on its web page designated
“Locations,” and the page has a prominent statement instructing users to
“please visit www.matchmakerinternational.com for other locations” as evidenced
by the web page print-out that is Response Exhibit 5.
C. Additional Submissions
Neither Party’s Additional Submission
appears to permissibly provide anything
pertinent that, in view of the Complaint
and the Response, was not already apparent to
the Panel as being at issue in this
proceeding or as being the responsibility of the Panel.
FINDINGS
The majority of the Panel (hereinafter
“the majority”) finds
(i) each
of the domain names at issue is registered to Respondent, there are U.S.
uncontestable service mark registration 1,549,618 and Canadian trademark
registration TMA457626 each as to MATCHMAKER INTERNATIONAL with a design, and
in which Complainant has rights, and each of the domain names at issue is
identical thereto;
(ii)
Respondent
has no rights or legitimate interests in respect of either of the domain names
at issue; and
(iii)
each of the
domain names at issue has been registered and is being used in bad faith.
As to points “(ii)” and “(iii)” of the
immediately preceding paragraph, Co-Panelist Lowry dissents (hereinafter “the
dissent”).
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 and 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:
(i)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(ii)
the Respondent
has no rights or legitimate interests in respect of the domain name; and
(iii)
the domain
name has been registered and is being used in bad faith.
In
view especially of Rule 15(a), the Panel notes four rules and principles of law that it especially deems applicable to
ascertaining whether each of those three elements has been proven. First, that
Both
[dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By
judicial admission (what is not disputed); 2. By judicial notice, or knowledge
(what is known or easily knowable); 3. By judicial perception (what is
ascertained directly through the senses; cf. “real evidence”); 4. By judicial
inference (what is ascertained by reasoning from facts already ascertained by
one or more of the four methods here outlined).[i]
Second,
especially as to mode “3”, that Rule 10(d) provides that “The Panel shall
determine the admissibility, relevance, materiality and weight of the
evidence.” Third, as to construing and applying Rule 10(d), especially as to
whether mode “1” rather than mode “3” applies: a complainant's pleading of fact
that is not disputed (or, phrased differently, not “put in issue”) by a
respondent against whom it is contended, is an admission by that respondent,[ii]
so evidence tendered as being rationally probative of (i.e. as being “relevant
to”) establishing that fact becomes immaterial, and hence inadmissible, as to
establishing that fact.[iii]
Fourth, as to whether mode “2” rather than either of mode “1” or mode “3”
applies, a canvassing of law and commentary shows that
It
was not desirable, nor indeed possible, to foreclose the trier’s use of
background information but should the matter noticed be in the forefront of the
controversy, should the fact be determinative, the law protected the adversary
by insisting that the matter be so commonly known, and hence indisputable, that
its notice could not prejudice the opponent.[iv]
and
that “The party who has the burden of proof on the issue may have to call on
the trier to judicially notice the fact when it comes time to analyze the
question.”[v]
The third of the four rules and
principles of law set out in the immediately preceding paragraph hereof is
applicable to the Parties’ contentions on this topic: the Panel finds that
Respondent admits Complainant’s first main set of contentions.
In view of the immediately preceding
paragraph, the Panel finds that on this topic Complaint Exhibits 1, 2, and 4
are immaterial and that Policy ¶ 4(a)(i) is proven: each of the domain names at
issue is registered to Respondent, there are U.S. uncontestable service mark
registration 1,549,618 and Canadian trademark registration TMA457626 each as to
MATCHMAKER INTERNATIONAL with a design, and in which Complainant has rights,
and each of said domain names is identical thereto.
This part of this discussion is basically
as to Policy ¶ 4(c)(i) and 4(c)(ii), and the context in which this part of this
discussion occurs includes Policy ¶ 4(c) and decisions such as Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000).
Policy ¶ 4(c) is basically directed from
a domain name registrar to a domain name registrant and prospective mandatory
administrative proceeding respondent, and includes that
When you receive a complaint, you should
refer to [Rule 5] in determining how your response should be prepared. Any of
the following circumstances, in particular but without limitation, if found by
the Panel to be proved based on its evaluation of all evidence presented, shall
demonstrate your rights or legitimate interests to the domain name for purposes
of [Policy paragraph] 4(a)(ii):
(i) before any notice to you of the
dispute, your use of, or demonstrable preparations to use, the domain name or a
name corresponding to the domain name in connection with a bona fide offering
of goods or services; or
(ii) you (as an individual, business, or
other organization) have been commonly known by the domain name, even if you
have acquired no trademark or service mark rights; or
(iii) you are 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.
(See footnote 2 hereof for some
provisions of Rule 5.)
Policy ¶ 4(c)(iii) is not contended for
in this proceeding.
As for Policy ¶¶ 4(c)(i) and (ii), they
are contended for by Respondent as part of Respondent contending against, and
therefore putting in issue, Complainant’s second main set of contentions.
Respondent does so through Respondent’s second main set of contentions.
However, as the Panel finds in the following paragraphs, neither Policy ¶
4(c)(i) nor Policy ¶ 4(c)(ii) avails Respondent.
The fourth of Respondent’s points as to
Policy ¶ 4(c)(i) basically takes issue with Complainant’s contention that Matchmaker Int’l Dev. Corp. v. Kaiser Dev.
Corp., FA 146933 (Nat. Arb. Forum May 9, 2003) is relevant to this case,
and does so by contending this case deals with a settlement agreement whereas
that decision dealt with a franchise agreement. Respondent’s contention is
therefore to the effect that what is dispositive of the applicability or
inapplicability of that decision is the merely formal difference between the
titles that appear on or are applied to such types of agreement documents, i.e.
“franchise” versus “settlement”. In accordance with the Policy and the Rules,
and with potentially applicable principles from or in Matchmaker Int’l Dev. Corp. v. Kaiser Dev. Corp., that contention
will not dissuade this Panel from dealing with the substance of the Settlement.
The second of Respondent’s points as to
Policy ¶ 4(c)(i) basically takes issue with Complainant’s contention that the
Settlement evidences Respondent’s duties to not register and not use each of
the domain names at issue. Said contended duties are contended against by
Respondent, alternatively, as being absent either in principle (i.e. that the
Settlement is a contract and Respondent’s duties arise not by contract between
Respondent and Complainant but instead arise under the Policy, and in turn that
Respondent’s registration and use of each of the domain names at issue is part
of bona fide offering of services under the Policy and so are therefore within
the scope of privileges conferred by or under the Policy) or as being absent in
this particular case (i.e. that the Settlement does not create Respondent
duties to not register and not use each of the domain names at issue and
instead, from the Settlement, Respondent has privileges to use Complainant’s
mark, including to use that mark in registering each domain name and using each
domain name). Each Respondent contention, i.e. the contention on the basis of
principle and the contention on the basis of particulars, is wrong, each for
its own reasons.
As for the contention on the basis of
principle, Respondent, and the dissent, basically do not indicate from whence
this Panel is to attribute “rights or legitimate interests” within the meaning
of Policy ¶ 4(a)(ii). A factor in their
approach may well be to apply a widely disseminated, incorrectly quoted,
version of Rules paragraph 15(a), in which, unlike the correctly quoted passage
set out above, the second of the four occurrences therein of the word “and” is
missing. In any event, this Panel is basically a law-applying body
rather than a law-making body and it is from applying law to facts ascertained
in accordance with law that this Panel discerns first what Respondent legal
interests exist in this case and then which if any of them are within the scope
of Policy ¶ 4(c). Two points are associated therewith.
First,
other than Complainant, persons in at least the U.S. (such as Respondent) have
duties from U.S. trademark law that include but are not limited to duties to
(i) not register a domain name that includes the text of the mark covered by
Complainant’s U.S. registered trademark; and (ii) not use that domain name in
association with services specified in the trademark registration. (See e.g.
PACCAR Inc. v. TeleScan Technologies,
L.L.C., 319 F.3d 243 (6th Cir. 2003) available at
<http://pacer.ca6.uscourts.gov/cgi-bin/getopn.pl?OPINION=03a0040p.06>.)
Those duties are confirmed by, and are part of the context of, the Policy, in
at least two ways. First, Policy ¶ 2 for the “.net” domain name at issue is
directed from a domain name registrar to a prospective domain name
registrant-respondent and is as follows:
By applying to register a domain name, or by asking us to
maintain or renew a domain name registration, you hereby represent and warrant
to us that (a) the statements that you made in your Registration Agreement are
complete and accurate; (b) to your
knowledge, the registration of the domain name will not infringe upon or
otherwise violate the rights of any third party; (c) you are not
registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name
in violation of any applicable laws or regulations. It is your responsibility
to determine whether your domain name registration infringes or violates
someone else’s rights.
(Emphasis added; Policy ¶ 4.1 for the
“.cc” domain name at issue is basically to the same effect.) Second, the Policy
“is less about legislation than about the efficient
application of existing law in a multijurisdictional and cross-territorial
space.” (Emphasis added; Second WIPO Report, “The Recognition Of Rights And
The Use Of Names In The Internet Domain Name System -- Report of the Second
WIPO Internet Domain Name Process”, 3 September 2001, and available on-line at
<http://wipo2.wipo.int/process2/report/html/report.html#1>, paragraph 66,
as to the First WIPO Report process of proposing the Policy.)
Second, MatchMaker Int’l Dev. Corp. v. Kaiser Dev. Corp., supra, includes the above-cited
summaries of law from Nikon, Inc. v.
Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) and 2 T.J. McCarthy,
McCarthy on Trademarks and Unfair Competition, § 18:52 (4th Ed. 2000):
[T]here
are administrative panel decisions under the Policy that are opposite in effect
to the apparently over-generalized propositions contended for by Respondent.
For example, Allen-Edmonds Shoe Corp.
v. Takin’ Care of Business,
D2002-0799 (WIPO Oct. 10, 2002), includes, with underlining added herein, that
even
where a reseller is an authorized reseller, without a specific agreement
between the parties, the reseller does not have the right to use the licensor’s
trademark as a domain name. Nikon, Inc. v. Technilab, Inc., D2000-1774
(WIPO Feb. 26, 2001); 2 T.J. McCarthy, McCarthy on Trademarks and Unfair
Competition, § 18:52 (4th Ed. 2000) (“licensee’s use [of a mark] inures to the
benefit of the licensor-owner of the mark and the licensee acquires no
ownership rights in the mark itself.”). Thus, even if Respondent is acting on
behalf of an “authorized” dealer (indeed, even if Respondent were itself an
authorized dealer), its use of Complainant’s mark would not be legitimate absent
a specific agreement between Complainant and Respondent to the contrary.
There is no evidence of such an agreement here. The Panel finds that
Complainant has shown that Respondent has no legitimate interest in the domain
name.
Similarly, see Heel Quik! Inc. v. Goldman, FA 92527 (Nat. Arb. Forum March 1,
2000) holding that use of a domain name was subject to the terms of a license
agreement and that any use in violation of the agreement would not be bona fide
use within the meaning of the Policy.
As for the contention on the basis of particulars, this
Panel turns initially to the first and third of Respondent’s points as to Policy
¶ 4(c)(i) and to the particular provisions of the Settlement, to discern what
if any privileges the Settlement defines (i.e. what is their scope as to
territory and activity) and whether Respondent’s registration and use of each
of the domain names at issue within the scope of those privileges.
To a limited extent, Respondent’s
trademark law duties have been overcome by the Settlement’s including a license
from Complainant (i.e. permission from Complainant to Respondent for Respondent
to do what it would otherwise be unlawful for Respondent to do); the license is
to the corporate Respondent and to Mr. Paravate, and, as far as this case is
concerned, only to them. The result is that Respondent’s legal interests
regarding Complainant’s mark includes privileges (sometimes referred to in some
legal discourse as liberties) although not Respondent’s rights per se. Outside
the scope of those privileges, or otherwise in the absence of those privileges
(such as in the case of Ms. Paravate who has no license from Complainant
whatsoever), Respondent still has those duties from trademark law and that are
confirmed by, and are part of the context of, the Policy.
The first and third of Respondent’s
points as to Policy ¶ 4(c)(i) are wrong because they confuse transmission with
reception, and more particularly confuse actual transmission with mere
reception capability, and also because they confuse having facilities at
particular geographic locations (and merely advertising within the particular
A.D.I.s) with doing business on the Internet. (For example, if the Panel were
to take the approach of pointing to the impossibility of Respondent preventing
Internet users from outside Respondent’s license area from accessing a
Respondent website then the Panel would basically be blaming Complainant for
Respondent’s unlawful behavior of registering and using the domain names at
issue. For the Panel to do so would conflict with rather than accord with
applicable law and with the Policy.) Respondent’s privileges conferred by the Settlement
are instead exactly as contended for above in the first point of Complainant’s
second main set of contentions, i.e. sub-point “ii” (regarding section 1),
sub-point “iv” (regarding section 20, which section provides that Respondent
has a geographically limited privilege to use materials currently in use, but
of course neither of the domain names at issue was currently in use), and
sub-point “v” (regarding section 31).
More
particularly, Respondent’s behavior is not within Policy ¶ 4(c)(i). To the extent
of behaving outside the restrictions, and therefore outside the scope of the
license, Respondent is offering unlicensed services, and therefore other than “bona fide” services, so Respondent’s
behavior is not within and does not confer “rights or legitimate interests” as
that expression is used in Policy ¶ 4(a)(ii); see e.g. Heel Quik!, Inc. v. Goldman, supra.[vi]
Also
more particularly, Respondent’s behavior is not within Policy ¶ 4(c)(ii). By
way of four steps it is clear that via Policy ¶ 4(c)(ii) Respondent’s behavior
is also not within and does not confer “rights or legitimate interests” as that
expression is used in Policy ¶ 4(a)(ii). First, the expression “domain name” is
used in Policy ¶ 4(c)(ii) and is to be contrasted with and is narrower than the
Policy ¶ 4(c)(i) expression “domain name or a name corresponding to the domain
name”. Second, it is already clear from the above that Respondent’s behavior of
registering and using of each of the domain names at issue is unlawful. Third,
Policy ¶ 4(c)(ii) is to be construed as being to the effect that neither a
respondent licensee’s lawful local use of a complainant’s mark nor a respondent
licensee’s unlawful registration and unlawful use of contested domain names
results in that respondent being “commonly known” by the contested domain
names; see e.g. Heel Quik!, Inc.
v. Goldman, supra.[vii]
In any event, in this proceeding, there is not even any evidence of Respondent
being known by either “domain name” at issue, on either basis. Instead, as is
more fully described in Appendix “A” hereof, (i) the evidence shows that
Respondent has merely obtained a Florida corporate name and obtained a Florida
occupational license; and (ii) when it comes to proving that Respondent is commonly known by either of the domain names at issue, the corporate name and the
occupational license are each as readily
obtainable as domain name registrations
(e.g. by a simple form and, at least for renewals, on-line) and as irrelevant as domain name registrations
are per se (i.e. not only is lawful
use in trade not required or conferred, but not even any use is required or
conferred). Fourth, as a result, Respondent’s behavior of registering each of
the domain names at issue and using each of the domain names at issue, and of
having a corporate name and an occupational license, does not, and indeed
cannot, result in Respondent having “been commonly known by the domain name” at
issue within the meaning of that expression in Policy ¶ 4(c)(ii).
The Panel also notes decisions such as Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) which includes that when, as in this case, “the complainant has made a prima facie showing, the burden of
production shifts to the respondent to show by providing concrete evidence that
it has rights to or legitimate interests in the domain name at issue” (emphasis
in original). To similar effect see e.g. Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002)
and Twentieth Century Fox Film Corp. v.
Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002). Benstein is especially of note for it includes, as in this case,
that a respondent’s “unsupported, self-serving allegations alone are
insufficient to establish that Respondent has rights or legitimate interests in
respect to the domain name at issue”.
Specifically, on Policy ¶ 4(c)(i), Mr. Paravate’s affidavit
that is Response Exhibit 1 appears, at most, to merely contend that Respondent
has privileges to register and use each of the domain names at issue and has
behaved within the scope of those privileges. His affidavit therefore does not
appear to even be relevant on that aspect of this topic, for how can such
declarations by him be rationally probative of the presence of such privileges
and of such behavior, rather than merely being rationally probative of, for
example, his view that such privileges exist and his view that Respondent’s
behavior was within the scope of those privileges? His evidence would at best
be subjective evidence of what the parties to that agreement agreed. The Panel
is willing, however, to consider his affidavit as relevant on this topic.
Similar considerations apply to the letter (from Complainant’s counsel to
Respondent) that is Complaint Exhibit 5 as they do to the declaration, and the
Panel is, likewise, willing to consider the letter as relevant on this topic.
As is inferable from the above, the Panel finds the affidavit and the letter of
far less weight than the Settlement.
As for Policy ¶ 4(c)(ii), especially in
view of the Settlement (e.g. sections 1, 20 and 31) and the effect of the
Settlement, neither the affidavit nor Response Exhibit 2 (i.e. a USA Today
article dated October 25, 1988) or Response Exhibit 3 (i.e. U.S. registered
trademark 1304462 for MATCHMAKER INTERNATIONAL filed June 9, 1983 but which is
no longer active and of which Louis A. Paravate was the first owner) or
Response Exhibit 4 (i.e. Respondent’s corporate documents, as contrasted with
documents as to e.g. present lawful use in trade) is even relevant. Similarly,
as to Respondent’s contentions regarding each of the domain names at issue
being registered to Respondent and regarding Complaint’s naming of Respondent
in the style of cause of this proceeding, each contention is irrelevant: domain
name registrations that are the very subject-matter of the dispute do not
confer Policy ¶ 4(c) “rights or legitimate interests”, and Complainant’s naming
of Respondent basically had to account for at least the Forum’s view of the
interaction between how domain name registrars keep records and the style of cause
requirements of the Policy.
In view of all of the above, the Panel
finds that the burden of production shifted to Respondent but that on this
topic Respondent has not met it. Accordingly, the Panel finds Respondent has
“no rights or legitimate interests in respect of the domain name” within the
meaning of that expression as it occurs in Policy ¶ 4(a)(ii).
In view of the immediately preceding
paragraph hereof, the Panel finds that Policy ¶ 4(a)(ii) is proven regarding
each domain name at issue.
The majority should add four further sets
of comments.
First, the minority characterizes the
above resolution of this aspect of this dispute (between a complainant owner
of, inter alia, a U.S. trademark
registration, and respondent in the U.S.) as being to the effect that ownership of a trademark anywhere provides
sufficient basis for prevailing under the Policy. However, that is neither the
purpose nor the effect of the majority’s decision or reasons. Instead, neither
expressly nor implicitly does the Policy require
a complainant to have trademark rights corresponding to more than one
geographical area in order for that complainant’s complaint to succeed. Indeed,
to require a global or otherwise
multi-area scope of complainant trademark rights (as contrasted with
complainant rights under the Policy) would be contrary to the Policy, since the
Second WIPO Report, supra, instead is
“about the efficient application of existing law in a multijurisdictional and
cross-territorial space.”
Second, though the minority characterizes the above as
being other than good public policy and as not required by the Policy, the
majority considers such characterizations as mistaken, basically in three
respects. First, as mentioned above, this Panel
is basically a law-applying body rather than a law-making body, and good public
policy is already expressed by the court in PACCAR
Inc. v. TeleScan Techs., L.L.C., supra;
for the Panel to rule otherwise than it has would basically be making law
rather than applying law, and the Panel’s decision would conflict with rather
than accord with applicable law and with the Policy. Second, the
characterizations beg the question by assuming,
contrary to PACCAR Inc. v. TeleScan
Techs., L.L.C., supra, that
Respondent had and has authority to (i) register a domain name that includes
the text of the mark covered by Complainant’s U.S. registered trademark; and
(ii) use that domain name in association with services specified in the
trademark registration. Third, the characterizations’ assumptions are also contrary
to the facts of this case, including the Settlement and that the Settlement
exists in the context of trademark law which (as referred to in 2 T.J.
McCarthy, McCarthy on Trademarks and Unfair Competition, § 18:52 (4th Ed. 2000)
supra) includes that a trademark
“licensee’s use [of a mark] inures to the benefit of the licensor-owner of the
mark.” The pre-existing rule that the benefit inures to Complainant still
exists, and does not have to be expressed or repeated or elaborated upon in the
Settlement in order to still exist and apply to the Parties. To instead read in
an implied provision to the effect that the rule does not exist or does not
apply to the Parties (as the minority would do), and that instead Complainant
authorized Respondent in the way contended for by the minority, would be to
read into the Settlement a provision which is contrary to that rule of law and
which is not indicated as being implied by the Settlement.
Third, the minority characterizes the
time between Respondent registration of the domain names at issue and the
commencement of this proceeding as warranting a delay-based defense such as
estoppel. However, this being an adversarial rather than inquisitorial
proceeding, it is not open to the Panel to make what amounts to a Respondent
contention of such as defense, especially without Complainant having an
opportunity to respond thereto. Moreover, there appear to be conflicting views,
expressed in and applied by administrative panel decisions under the Policy, as
to whether various doctrines, such as the doctrine of estoppel, or such as
general or other doctrines from the law of equity, can be applied in
administrative panel decision-making under the Policy. In any event, a doctrine
such as estoppel is unavailable in this case because there appears to be no
evidence that Complainant was engaged in any conduct inducing or allowing
Respondent to proceed such as would warrant the Panel to apply the doctrine to
Complainant.
Fourth, though the minority characterizes
the registration and use of the domain names at issue as not causing confusion
(and instead as accurately disclosing the relationship between Complainant and
Respondent) and as in fact driving traffic to Complainant’s website, such
considerations are more appropriately dealt with in connection with bad-faith
use and bad-faith registration, and that is where the majority deals with them.
The context in which this part of this
discussion occurs includes Policy ¶ 4(b).
Policy ¶ 4(b) is basically directed from
a domain name registrar to a domain name registrant and prospective mandatory
administrative proceeding respondent, and includes that
For the purposes of [Policy paragraph]
4(a)(iii), the following circumstances, in particular but without limitation,
if found by the Panel to be present, shall be evidence of the registration and
use of a domain name in bad faith:
(i) 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; or
(ii) you have registered the domain name
in order to prevent the owner of the trademark or service mark from reflecting
the mark in a corresponding domain name, provided that you have engaged in a
pattern of such conduct; or
(iii) you have registered the domain name
primarily for the purpose of disrupting the business of a competitor; or
(iv)
by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or other on-line location, by
creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation, or endorsement of your web site or location
or of a product or service on your web site or location.
As for each of Policy ¶¶ 4(b)(i), (ii)
and (iii), they basically define respective types of bad-faith registration and
provide that if any one of such types of registration has been ascertained by a
panel then bad-faith use is in turn evidenced via application of the respective
one of those three provisions.
As for Policy ¶ 4(b)(iv), it basically
defines a type of bad-faith use and provides that if such type of use is
ascertained by a panel then bad-faith registration is in turn evidenced via
application of that provision.
In this proceeding, Policy ¶ 4(b)(i)
appears to not be contended for but Policy ¶¶ 4(b)(ii), (iii) and (iv) do
appear to be contended for by Complainant; in view of the Panel’s disposition
of ¶¶ 4(b)(iii) and (iv) issues, the Panel need not address ¶ 4(b)(ii) issues.
As for Policy ¶ 4(b)(iii), the above
discussion of the Settlement indicates the circumstances cannot be other than
within that provision: the Settlement is so clear and Respondent’s behavior so
clearly outside of the privileges conferred by it and so clearly within the
duties imposed by it, and by trademark law, that Respondent must have known
that Respondent’s registration and use of each of the domain names at issue
would disrupt competitor business, and indeed must have been done primarily for
that purpose. Similarly, see Heel
Quik! Inc. v. Goldman, supra
(holding that the registration of a domain name in violation of a license
agreement is evidence that the domain name was registered and used in bad
faith); and Gorstew Ltd. v. Carribean
Tours & Cruises, FA 94927 (Nat. Arb. Forum July 28, 2000) (finding that
Respondent’s use of the disputed domain name to sell
the services of Complainant or to attract customers to Complainant,
presumably for which Respondents would be paid a fee, is classic trademark
infringement, even if the result of same is that some revenue flows to
Complainant, the owner of the marks).
Furthermore,
as to Policy ¶ 4(b)(iv), in Response Exhibit 5 in what appears to be a copy of
the <matchmakerinternational.cc> website
there is high-lighted a direction that Respondent apparently makes to
Complainant’s <matchmakerinternational.com>
website. That direction appears to basically be contended by Respondent to be a
disclaimer. If it is a disclaimer, it is not very clear and is instead quite
susceptible of being ignored or misunderstood, and, in any event, there is the
matter of initial interest confusion. Specifically, entry of Complainant's mark
will result in visits not only to Complainant's website but also to
Respondent's website which resolves through the domain names at issue. See
e.g. Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000),
which is extensively cited and applied for the proposition that even
Respondent's
use of a disclaimer on its web site is insufficient to avoid a finding of bad
faith. First, the disclaimer may be
ignored or misunderstood by Internet users.
Second, a disclaimer does nothing to dispel initial interest confusion
that is inevitable from Respondent's actions.
Such confusion is a basis for finding a violation of Complainant's
rights.
Similarly
see e.g. Prudential Ins. Co.
v. Prudential Mortgage Loans, FA
103880, (Nat. Arb. Forum Mar. 20, 2002), which includes that the “fact that the
Internet user ultimately discovers that a site is not that of Complainant, or
that Respondent disclaims any association with Complainant, does not cure the
fault”.
In view of the immediately preceding
seven paragraphs hereof, the Panel finds that Policy ¶ 4(a)(iii) is proven as
to each domain name at issue.
DECISION
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 <matchmakerinternational.cc> and <matchmakerinternational.net>
domain names be TRANSFERRED from
Respondent to Complainant.
Honorable Robert T. Pfeuffer, (Ret.), Panel Chairperson
Dated: 12 December 2003
Rodney C. Kyle, Panelist
Dated: 12 December 2003
DISSENT OF: Houston
Putnam Lowry
I must respectfully dissent from the
majority’s decision.
Under ICANN Dispute Resolution Policy ¶ 4(c), the
following is a partial list of how one might prove rights to a domain name:
(i) before any
notice to you of the dispute, your use of, or demonstrable preparations to use,
the domain name or a name corresponding to the domain name in connection with a
bona fide offering of goods or services; or
(ii) you (as an
individual, business, or other organization) have been commonly known by the
domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are
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.
There is
some confusion about who registered what domain name in this
case. Matchmaker
International (presumably of Florida)
registered <matchmakerinternational.net>
according to the WHOIS print-out provided to the Panel. Since this is a documents only
proceeding, that information should be authoritative and controlling. Administrative and technical contacts do not
show ownership of the domain name.
The majority’s
contention there was no proof Matchmaker International of Florida, Inc. is
commonly known to the public by its corporate name does not withstand
scrutiny. Merely having a corporate
name suggests the corporation is known by that name (or some diminutive
thereof). It should be noted
Respondents’ original response said “…Respondent [sic] has been commonly known
by its corporate name Matchmaker International of Florida,
Inc. and Matchmaker International of Pensacola, Inc.” Complainant failed to rebut this sworn evidence. Similar evidence was submitted in
Respondents’ additional submission on page 2.
There is no doubt
Matchmaker International of Florida, Inc. is commonly known by “Matchmaker
International.” There was no
contrary evidence submitted to the Panel.
At that point, the inquiry should stop and Complainant must lose (at
least regarding the <matchmakerinternational.net> domain name).
Instead, the
majority makes an inquiry into whether or not Matchmaker International of
Florida, Inc. has rights to use its own name (called “trade name rights”),
despite the fact the Policy ¶ 4(c)(ii) specifically provides even if a Respondent has acquired no
trademark or service mark rights, the Respondent has a right to use the domain name when it
includes its name. While a court may certainly undertake such
an inquiry and will give the matter a full evidentiary hearing applying the
proper law (which would include trademark law), that is far beyond the “quick
and dirty” purview of a UDRP documents only proceeding. The majority confuses a UDRP proceeding with
trademark litigation. This is the first
error made by the majority.
Lou Paravate
personally
registered
<matchmakerinternational.cc>. The “settlement
agreement” that gave Matchmaker International of Florida
rights also gave rights to Lou Paravate personally. This settlement document is very interesting for several
reasons:
1.
There is no limitation (other than a geographical limitation) on how
Respondents may use the MatchMaker servicemark. It presumably can be applied to any good or service.
2.
Respondents have no continuing financial obligation to Complainant
regarding the servicemark (meaning Respondents do not have to pay a periodic
licensing fee).
3.
No procedure is made for canceling Respondents’ rights to use the
servicemark.
4.
The right to use the servicemark was granted indefinitely.
5.
The right to use the servicemark as a domain name is not discussed, even
though the document was executed in 1994.
Needless
to say, this is an extraordinary document that only exists because it was in
settlement of prior litigation between the parties. It was undoubtedly heavily negotiated.
Respondents have rights and
legitimate interests in the domain name because they are authorized to use
Complainant’s marks within certain geographical areas. The Internet is particularly noteworthy
because it does not have geographical boundaries as it is commonly implemented.
The question
is whether or not a geographical limitation in an authorization to use a servicemark
can be used to prevent an otherwise authorized user of a
registered servicemark from
registering a domain name incorporating those
marks. If so, Complainant must
win. If not, Respondents must
prevail. The majority appears to
believe once a servicemark (even if in only one country) is registered it
should be enough to allow the owner (assuming no conflicting registrations, of
course) the right to recover any domain name registered in the nearly 300 top
level domains. With all due respect,
such a result is not good public policy and is not required by the UDRP. This is the majority’s second error.
It should be
noted the oldest domain name, <matchmakerinternational.cc>, was
registered April 3, 2000
and has been used since that date (some 1,275 days before the Complaint was
filed). Lou Paravate
did not receive any notice for more than three years that his <matchmakerinternational.cc> website was
infringing on Complainant’s servicemark.
Complainant finally gave notice on August 14, 2003 that it objected to
the registration of the <matchmakerinternational.cc>
domain
name (1,228 days after the domain was registered).
The website had a
link to Complainant’s website indicating additional locations were available
there. How does this cause
confusion? In fact, it drives traffic
to Complainant’s website. This meets,
in the minority’s view, the requirements of Policy ¶ 4(c)(i) that before any
notice to Respondent owner of <matchmakerinternational.cc>
of
the dispute, its use of, or demonstrable preparations to use, the domain name
or a name corresponding to the domain name in connection with a bona fide
offering of goods or services. The
services in question were bona fide in the sense they were really
delivered and were even within the scope of what was allowed under the
settlement agreement.
As an
authorized user of the servicemark, Respondent uses the domain name in connection
with a bona fide offering of goods and services. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001). According to the authorization in question in this
case, Respondents may use Complainant’s trademark in its domain name
if Respondent is
1)
actually
selling goods or services (but need not be the same goods or services
Complainant sells because that requirement does not appear in the
authorization);
2)
selling only
the
goods and services authorized on the
website in question (there was no limitation in the authorization in
this regard);
3)
accurately
disclosing the relationship between Complainant and Respondent (meaning
Respondent is not causing confusion by suggesting Respondent is the owner of
the trademark); and
4)
not
attempting to corner the market in all domain names incorporating Complainant’s
mark and thereby prevent Complainant from reflecting its mark in its own domain
name); see also Weber-Stephen Prod. Co. v. Armitage Hardware,
D2000-0187 (WIPO May 11, 2000) (finding that Respondent, as an authorized
dealer of Complainant’s WEBER GRILL products, had rights and legitimate
interests in <webergrills.com>, <webergrill.com>,
<weber-grills.com>, <webergrillsource.com>,
<webergrillstore.com>, <webergrillshowroom.com>,
<webergrills-ah.com> and <webgrills.com> because it was using the
domain names in order to make a bona fide offering of Complainant’s goods and
services).
Respondents meet
all of these requirements. Respondents
have registered only two domain names, which has not prevented Complainant from
registering the <matchmakerinternational.com> domain
name. Respondents have not prevented
Complainant from registering and using its own servicemark as a domain
name.
While it is
uncontested Complainant owns the servicemark at issue, ownership of a mark
is not a mechanical test under the UDRP to
determine who prevails. A
respondent need only show some
rights, not that ownership of the mark is contested. While Respondents have some
rights, it is conceded they do not
have any ownership interest in the registered servicemark
(although Complainant gave away so many rights in the settlement agreement
Respondents may well be unregistered co-owners in the servicemark, but that is
a for a court to determine).
This part of
this discussion is basically as to Policy paragraph 4(c)(i) and 4(c)(ii), and
the context in which this part of this discussion occurs includes Policy
paragraph 4(c) and decisions such as Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000).
Policy
paragraph 4(c) is basically directed from a domain name registrar to a domain
name registrant and prospective mandatory administrative proceeding respondent,
and includes that
When you
receive a complaint, you should refer to [Rule 5] in determining how your response
should be prepared. Any of the following circumstances, in particular but
without limitation, if found by the Panel to be proved based on its evaluation
of all evidence presented, shall demonstrate your rights or legitimate
interests to the domain name for purposes of [Policy paragraph] 4(a)(ii):
(i) before
any notice to you of the dispute, your use of, or demonstrable preparations to
use, the domain name or a name corresponding to the domain name in connection
with a bona fide offering of goods or services; or
(ii) you (as
an individual, business, or other organization) have been commonly known by the
domain name, even if you have acquired no trademark or service mark rights; or
(iii) you
are 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.
(See
footnote 2 hereof for some provisions of Rule 5.)
Policy
paragraph 4(c)(iii) is not contended for in this proceeding.
As for
Policy paragraphs 4(c)(i) and 4(c)(ii), they are contended for by Respondent as
part of Respondent contending against, and therefore putting in issue,
Complainant’s second main set of contentions. Respondent does so through
Respondent’s second main set of contentions. However, as the Panel finds in the
following paragraphs, neither Policy paragraph 4(c)(i) nor Policy paragraph
4(c)(ii) avails Respondent.
The fourth
of Respondent points as to Policy paragraph 4(c)(i) basically takes issue with
Complainant’s contention that Matchmaker International Development Corp. v.
Kaiser Development Corp., Inc., No. 146933
(NAF May 9, 2003) is relevant to this case, and does so by contending this case
deals with a settlement agreement whereas that decision dealt with a franchise
agreement. The Respondent contention is therefore to the effect that what is
dispositive of the applicability or inapplicability of that decision is the
merely formal difference between the titles that appear on or are applied to
such types of agreement documents, i.e. “franchise” versus “settlement”. In
accordance with the Policy and the Rules, and with potentially applicable
principles from or in Matchmaker International Development Corp. v.
Kaiser Development Corp., Inc., that
contention will not dissuade this Panel from dealing with the substance of the
Settlement.
The second
of Respondent points as to Policy paragraph 4(c)(i) basically takes issue with
Complainant’s contention that the Settlement evidences Respondent duties to not
register and not use each of the domain names at issue. Said contended duties
are contended against by Respondent, alternatively, as being absent either in
principle (i.e. that the Settlement is a contract and Respondent duties arise
not by contract between Respondent and Complainant but instead arise under the
Policy, and in turn that Respondent’s registration and use of each of the
domain names at issue is part of bona fide offering of services under the
Policy and so are therefore within the scope of privileges conferred by or
under the Policy) or as being absent in this particular case (i.e. that the
Settlement does not create Respondent duties to not register and not use each
of the domain names at issue and instead, from the Settlement, Respondent has
privileges to use Complainant’s mark, including to use that mark in registering
each domain name and using each domain name). Each Respondent contention, i.e.
the contention on the basis of principle and the contention on the basis of
particulars, is wrong, each for its own reasons.
As for the
contention on the basis of principle, Respondent does not indicate from whence
this Panel is to attribute “rights or legitimate interests” within the meaning
of Policy paragraph 4(a)(ii). This Panel is basically a law-applying body
rather than a law-making body and it is from applying law to facts ascertained
in accordance with law that this Panel discerns first what Respondent legal
interests exist in this case and then which if any of them are within the scope
of Policy paragraph 4(c). MatchMaker International Development Corp. v.
Kaiser Development Corp. Inc., supra, includes the above cited summaries of law from Nikon, Inc.
and Nikon Corporation v. Technilab, Inc., WIPO Case
No. D2000-1774 (February 26, 2001) and 2 T.J. McCarthy, McCarthy on Trademarks
and Unfair Competition, § 18:52 (4th Ed. 2000):
[T]here are administrative panel decisions under
the Policy that are opposite in effect to the apparently over-generalized
propositions contended for by Respondent. For example, Allen-Edmonds
Shoe Corporation v. Takin’ Care
of Business, WIPO Case
No. D2002-0799, 10 October 2002, includes, with underlining added herein, that
even where a reseller is an authorized reseller, without a specific agreement between the parties, the reseller does not have
the right to use the licensor’s trademark as a domain name. Nikon, Inc. and
Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (February 26,
2001); 2 T.J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 18:52
(4th Ed. 2000) (“licensee’s use [of a mark] inures to the benefit of the
licensor-owner of the mark and the licensee acquires no ownership rights in the
mark itself.”). Thus, even if Respondent is acting on behalf of an “authorized”
dealer (indeed, even if Respondent were itself an authorized dealer), its use
of Complainant’s mark would not be legitimate absent a specific agreement between Complainant and Respondent to the
contrary. There is no evidence of such an agreement here. The Panel finds that
Complainant has shown that Respondent has no legitimate interest in the domain
name.
Similarly,
see Heel Quik!
Inc. v. Goldman, FA 92527
(Nat. Arb. Forum March 1, 2000) holding that use of a domain name was subject
to the terms of a license agreement and that any use in violation of the
agreement would not be bona fide use within the meaning of the Policy.
As for the
contention on the basis of particulars, this Panel turns to the first and third
of Respondent points as to Policy paragraph 4(c)(i) and to the particular
provisions of the Settlement, to discern what if any privileges the Settlement
defines (i.e. what is their scope as to territory and activity) and whether
Respondent registration and use of each of the domain names at issue within the
scope of those privileges. The first and third of Respondent’s points as to
Policy paragraph 4(c)(i) are wrong because they confuse transmission with
reception, and more particularly confuse actual transmission with mere
reception capability, and also because they confuse having facilities at
particular geographic locations with doing business on the internet generally
rather than merely within the particular A.D.I.s. Respondent’s privileges
conferred by the Settlement are instead exactly as contended for above in the
first point of Complainant’s second
main set of contentions, i.e. sub-point “ii” (regarding section 1), sub-point
“iv” (regarding section 20, which section provides that Respondent has a
geographically limited privilege to use materials currently in use, but of
course neither of the domain names at issue was currently in use), and
sub-point “v” (regarding section 31).
The Panel
also notes decisions such as Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) which includes that when, as in this case, “the
complainant has made a prima facie showing,
the burden of production shifts to the respondent to show by providing concrete
evidence that it has rights to or legitimate interests in the domain name at
issue” (emphasis in original). To similar effect see e.g. Gene Logic
Inc. v. Bock, FA 103042
(Nat. Arb. Forum Mar. 4, 2002) and Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002). Benstein is especially of note for it includes, as in this
case, that a respondent’s “unsupported, self-serving allegations alone are
insufficient to establish that Respondent has rights or legitimate interests in
respect to the domain name at issue”.
Specifically,
on Policy paragraph 4(c)(i), Mr. Paravate’s affidavit that is Response Exhibit
1 appears, at most, to merely contend that Respondent has privileges to
register and use each of the domain names at issue and has behaved within the
scope of those privileges. His affidavit therefore does not appear to even be
relevant on that aspect of this topic, for how can such declarations by him be
rationally probative of the presence of such privileges and of such behavior,
rather than merely being rationally probative of, for example, his view that
such privileges exist and his view that Respondent behavior was within the
scope of those privileges? His evidence would at best be subjective evidence of
what the parties to that agreement agreed. The Panel is willing, however, to
consider his affidavit as relevant on this topic. Similar considerations apply
to the letter (from Complainant’s counsel to Respondent) that is Complaint
Exhibit 5 as they do to the declaration, and the Panel is, likewise, willing to
consider the letter as relevant on this topic. As is inferable from the above,
the Panel finds the affidavit and the letter of far less weight than the
Settlement.
As for
Policy paragraph 4(c)(ii), especially in view of the Settlement (e.g. sections
1, 20 and 31) and the effect of the Settlement, neither the affidavit nor
Response Exhibit 2 (i.e. a USA Today article dated 25 October 1988) or Response
Exhibit 3 (i.e. U.S. registered trademark 1304462 for MATCHMAKER INTERNATIONAL
filed 9 June 1983 but which is no longer active and of which Louis A. Paravate
was the first owner) or Response Exhibit 4 (i.e. Respondent corporate
documents, as contrasted with documents as to e.g. present lawful use in trade)
is even relevant. Similarly, as to Respondent’s contentions regarding each of
the domain names at issue being registered to Respondent and regarding
Complaint’s naming of Respondent in the style of cause of this proceeding, each
contention is irrelevant: domain name registrations that are the very
subject-matter of the dispute do not confer Policy 4(c) “rights or legitimate
interests”, and Complainant’s naming of Respondent had to account for the
interaction between how domain name registrars keep records and the style of
cause requirements of the Policy.
In view of
all of the above, the Panel finds that the burden of production shifted to
Respondent but that on this topic Respondent has not met it. Accordingly, the
Panel finds Respondent has “no rights or legitimate interests in respect of the
domain name” within the meaning of that expression as it occurs in Policy
paragraph 4(a)(ii).
In view of
the immediately preceding paragraph hereof, the Panel finds that Policy
paragraph 4(a)(ii) is proven regarding each domain name at issue.
Under ICANN
Uniform Domain Name Dispute Resolution Policy ¶ 4(b), the
following non-exclusive factors indicate registration and use of a domain name
in bad faith:
(i)
circumstances indicating that respondent has registered or 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 respondent’s documented out-of-pocket costs directly
related to the domain name; or
(ii) respondent
has registered the domain name in order to prevent the owner of the trademark
or service mark from reflecting the mark in a corresponding domain name,
provided that respondent engaged in a pattern of such conduct; or
(iii)
respondent has registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv) by
using the domain name, respondent has intentionally attempted to attract, for
commercial gain, Internet users to respondent’s web site or other on-line location,
by creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation, or endorsement of respondent’s web site or
location or of a product or service on respondent’s web site or location.
"Bad faith" is defined in Black's Law
Dictionary 7th edition at page 134 as: "1. Dishonesty of belief or
purpose..". In Halsey v. Brotherhood, (1881), 19
Ch. D. 386 Lord Coleridge L.C.J. in determining whether there was evidence of mala
fides stated that the task of the Court was to consider "whether there
is anything to show that what the defendant stated was stated without
reasonable and probable cause".
It is very
difficult to prove a negative. It
is also difficult to prove a party’s intention in a document-only proceeding. Respondents did not
register or use the domain names in bad faith because they have used them
for legitimate business purposes. The
advertised services were rendered.
Respondents have enough business to support five physical
locations.
Respondents’ domain
names will not cause Internet users to mistakenly believe that the Matchmaker
International services generally are limited to Respondents’ territory
because the attached website states, "for other locations please visit
<matchmakerinternational.com>."
Further, use of the websites does not violate the geographic limitation
of the settlement agreement because the domain names, like phone numbers, are
accessible to the international community but do not constitute world-wide
promotion. See Mule Lighting, Inc.
v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith
where Respondent has an active website that has been in use for two years and
where there was no intent to cause confusion with Complainant's website and
business); see also DJF Assocs., Inc. v. AIB Communications, FA 95612
(Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a
legitimate interest in the domain name because Respondent selected the name in
good faith for its website, and was offering services under the domain name
prior to the initiation of the dispute); see also Chestnutt v. Tumminelli,
D2000-1758 (WIPO Feb. 2, 2001) (finding no bad faith registration or use of the
domain name <racegirl.com> where no evidence was presented that
Respondent intended to divert business from Complainant or for any other
purpose prohibited by UDRP Rules); see also Anticybersquatting Consumer
Protection Act, 15 U.S.C. §1125(d)(1)(B)(ii): "[b]ad faith intent … shall
not be found in any case in which the court determines that the person believed
and had reasonable grounds to believe that the use of the domain name was a
fair use or otherwise lawful."
For all of the
foregoing reasons, I would have found in favor of Respondents.
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There is a world
of difference between, on the one hand, merely having a corporate name (which
basically is a matter between a corporation and the state agency that
incorporated it) or having an occupational license document or domain name
registration record (which basically is a matter between the recipient of that license
or of that registrant, and the entity that confers the license or keeps the
registry), and, on the other hand, being commonly known by a domain name (e.g.
being known to the public at large by that domain name, or e.g. having trade
name rights enforceable against the public at large); and in this case there is
no evidence of Respondent being commonly known by either of the domain names at
issue and there is not even evidence of Respondent being commonly known to the
public by its corporate name.
As for the
corporation database record copy that is Complaint Exhibit 2, at
<sunbiz.org>, under “Legal Opinions,” and in turn under “Florida
Statutes”, there is Title XXXVI, chapter 607, section 607.0202 , subsection
(1), clause (a). That clause is as to the corporate name of a corporation
incorporated in Florida, such as the corporate Respondent. The clause is
that “(1) The articles of incorporation
must set forth (a) A corporate name for the corporation that satisfies the
requirements of s. 607.0401”. Section 607.0401 includes subsection (5) which is
as follows (with emphasis added): “The name of the corporation as filed with
the Department of State shall be for public notice only and shall not alone create any presumption of ownership beyond that which
is created under the common law.”
(There is no evidence in this proceeding that when dealing with a
prospective Florida corporation name the Florida Department of State, Division
of Corporations, officials engage in more or other than the common practice of
merely checking the name against only that state’s corporations names and only
for identicality rather than similarity.) For similar law, practice, and effect
as to business name registrations, and therefore as to such registrations per se not conferring or evidencing
Policy ¶ 4(c) “rights or legitimate interests”, see. e.g. Gavagai Tech. Inc. v. Gavagai, FA 135611
(Nat. Arb. Forum February 3, 2003) (in
and associated with endnote 12 thereof).
Occupational License
As for the occupational
license document that is part of Response Exhibit 4, it indicates that the
Escambia County Tax Collector mailed to “Matchmaker International of Florida” a
“Specialized Services” occupational license for 2003-2004 and designating the
owner of that license as “Matchmaker Intl of Florida”. It cannot, per se, avail Respondent. (Moreover, the
Escambia County Tax Collector has records available on-line at
<http://ectc.co.escambia.fl.us> indicating, via “Occupational Licenses”
and a form “TC Form 2001 (Rev 7/01),” that the requirement for obtaining that
license was “to fill out a simple application” and that renewals of the license
can be done on-line, but the license evidenced by Response Exhibit 4 appears to
have been issued contrary to the requirements of the “TC Form 2001 (Rev 7/01)”
form and Florida law. Specifically, the license was issued in other than the
legal name of any of the Respondents, and if a person carrying on business in
Florida uses any name for their business other than their legal name then
Florida Statutes 865.09 requires them to file a fictitious name with the
Florida Department of State, Fictitious Name Filing System, available on-line
through <sunvbiz.org>. There is no evidence in this proceeding of records
under that filing system indicating any fictitious name in any way
corresponding to the corporate Respondent or to either of the individual
Respondents.) For similar law, practice, and effect as to business licenses and
tax registration certificates, and therefore as to neither such licenses nor
such certificates per se conferring
or evidencing Policy ¶ 4(c) “rights or legitimate interests”, see. e.g. Thrifty, Inc. v. FrugalAutoSales.com, Inc.,
FA 190516 (Nat. Arb. Forum October 13,
2003).
[i] W.N. Hohfeld, "Some Fundamental
Legal Conceptions as Applied in Judicial Reasoning", (1913-14) 23 Yale
L. J. 16, at 27, footnote 23. Emphasis in original.
[ii] See e.g. Rules 5(b)(i), 5(b)(ix),
and 14(b). Rule 5(b)(i) includes that "The response shall … [r]espond
specifically to the statements and allegations contained in the complaint and
include any and all bases for the Respondent (domain-name holder) to retain
registration and use of the disputed domain name", Rule 5(b)(ix) includes
that "The response shall … [a]nnex any documentary or other evidence upon
which the Respondent relies" , and Rule 14(b) includes that "If a
Party, in the absence of exceptional circumstances, does not comply with any
provision of, or requirement under, these Rules … the Panel shall draw such
inferences therefrom as it considers appropriate." Rule 5(b)(i) and Rule
5(b)(ix) are each clearly a "provision of, or requirement under, these
Rules" within the meaning of that expression as it appears in Rule 14(b).
[iii] The mode "1"
referred to in the passage cited in endnote 1 above, together with Delisle, Evidence
Principles and Problems, (1984), Carswell, Toronto, at 5:
The concept of relevancy is simply dictated by our
own present insistence on a rational method of fact-finding.
However, not only must the evidence tendered be
rationally probative of the fact
sought to be established; the fact sought to be
established must concern a matter in issue between the parties, i.e. it must be
material. …
The law of evidence then
principally consists of the study of canons of exclusion, rules regarding
admissibility, which deny receipt into evidence of information which is
rationally probative of a matter in issue between the parties.
Therefore,
evidence which is immaterial, or is material but irrelevant, is inadmissible,
and even evidence which is material and relevant may still be inadmissible in
view of further inadmissibility rules of the law of evidence.
[iv] Delisle, endnote 3 above, at
94.
[v] Delisle, endnote 3 above, at
91.
[vi] That decision includes the
following:
The Respondent has used, and made preparations to
use, the domain name in connection with an offering of its goods and services.
However, such use has been a restricted use subject to the terms of a License
Agreement. Any use in violation of the License Agreement cannot be a bona fide
use within the meaning of the Policy.
[vii] That decision includes the
following:
Although the Respondents may have been known locally
by the domain name, such was as licensee or franchisee of an international
franchiser and does not constitute common knowledge of the domain name. Local
knowledge of a franchisee with a license to use the franchise name locally does
not necessarily show common knowledge of the domain name as the knowledge is
limited by the terms of the license.
and
The Respondents have not obtained any rights to the
world-wide accessible web sites from the local advertising provisions of the
License Agreement.
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