Tees.com, LLC v. Emphasys Technologies,
Inc.
Claim Number: FA0310000206362
PARTIES
Complainant
is Tees.com, LLC (“Complainant”),
represented by Ira Y. Lam, of Cleary, Gottlein, Steen & Hamilton One Liberty Plaza, New York,
NY 10006. Respondent is Emphasys Technologies, Inc. (“Respondent”) represented by Darren L. Dittrich, P.O. Box 795923, Dallas, TX 75379.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <tees.com>,
registered with Tucows, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
David
P. Miranda, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 30, 2003; the Forum received a hard copy of the
Complaint on .
On
October 31, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <tees.com> is registered
with Tucows, Inc. and that the Respondent is the current registrant of the
name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
November 11, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 1, 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@tees.com by e-mail.
A
timely Response was received and determined to be complete on December 1, 2003.
On
December 8, 2003, an additional submission was filed by the Complainant. The additional submission is not filed in
compliance with the NAF’s Supplemental Rule 7.
Nevertheless, the additional submission of Complainant was reviewed and
considered by the panel.
On December 10, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed David P.
Miranda, Esq. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name <tees.com> be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends the
trademark relating to the domain name on which this complaint is based is
TEES.COM, which is the same as the domain name used by Tees.com, LLC, a limited
liability company registered in New York State on 8/24/99. The TEES.COM trademark and the Tees.com, LLC company
name are identical to the domain name that is under dispute.
The trademark, TEES.COM,
has been used in commerce by Complainant Tees.com, LLC since October 1,
1999. Tees.com, LLC retails specialty
t-shirts using that trademark through the tees.com website and the two Tees.com
stores located in New York City.
Complainant filed a
trademark application for Tees.com with the United States Patent and Trademark
Office (“USPTO”) in 1999, but it was abandoned. A new application was filed in February 2003 with the USPTO and
is “currently awaiting final registration.”
Complainant contends the Respondent, Emphasys
Technologies, Inc. (Emphasys), should be considered as having no legitimate
interest in the <tees.com> domain
name. While Emphasys’ initial purchase
of the domain name was legitimate, its current possession of the domain name is
not.
The domain name should be considered as having been
held in bad faith, evidenced not only by Emphasys’ refusal to honor the
contract terms which transferred the ownership of the domain name to Tees.com,
LLC, but also by its current demand of valuable consideration far in excess of
Emphasys’ documented out-of pocket costs directly related to the domain
name. All reasonable expenses that
Emphasys has incurred in relation to the domain name have already been paid
fully by Tees.com, LLC as detailed under the terms of an agreement entered into
between Emphasys and Tees.com, LLC.
B.
Respondent
Respondent
concedes that the domain name in question is identical to Complainant’s
business name and to an abandoned service mark application of the
Complainant. Respondent alleges that at
the time of its registration of the domain name, Complainant was not yet doing
business under the name tees.com and Complainant had no trademark rights at the
time. The registration of the domain
name was intended for use with respect to a golf related web development
project.
Respondent
contends that it registered the <tees.com> domain name in good
faith. Respondent legitimately
registered the domain name for use in a golf-related web development project in
September 1999, as the Complainant admits.
Even though the Complainant contacted Respondent numerous times over the
following months in an attempt to acquire the domain name, the domain was never
sold to the Complainant. There was no
prior business being conducted by Complainant using the domain <tees.com>. Respondent registered the domain to enter
into a new business, not disrupt another business. Respondent had no knowledge of a New York-based Tees.com, LLC,
allegedly registered only weeks before.
Respondent
contends that shortly after its registration of the domain name, Respondent was
contacted by Complainant and entered into an agreement with Complainant dated
December 1, 1999 with respect to the use and development of a business
utilizing the domain name. Respondent
contends that Complainant is in breach of this agreement.
C.
Additional Submissions
Complainant’s
additional submissions contend that Respondent has acted in bad faith by
failing to comply with an agreement between the parties.
FINDINGS
The panel finds that the domain name <tees.com>
is identical to the Complainant’s business name.
Complainant alleges that it has
established rights in the TEES.COM mark through application for registration of the mark on February 24, 2003, through
use of the mark in commerce since October 1, 1999, and by the fact that it
registered as a limited liability company Tees.com, LLC on August 24,
1999. See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that
Complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist. Rights
in the mark can be established by pending trademark applications); see also S.A.
Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum March 13,
2003) (holding that Complainant established rights in the descriptive
RESTORATION GLASS mark through proof of secondary meaning associated with the
mark).
Complainant
does not have a federal registration to the mark TEES.COM. Its first federal application for the mark
was abandoned and its second application is currently pending. Although, Complainant contends that its
application is “currently awaiting final registration”, no proof has been
submitted showing that the U.S. Trademark Office is inclined to approve the
mark for registration or that such registration is imminent. In the absence of registration to the mark,
the applicant must establish common law trademark rights by demonstrating
sufficiently strong identification of its mark by the public, showing the mark
has acquired secondary meaning.
Complainant has provided virtually no proof upon which a finding of
secondary meaning could be based.
Although a Complainant in a proceeding such as this may establish common
law rights to a mark, the Complainant in this case has failed to do so. See generally NBA Prop., Inc. v.
Adirondack Software Corp., D2000-1211 (WIPO Dec. 8, 2000) (denying
Complaint because Complainant was not the owner of the trademarks); Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003)
(finding that Complainant did not establish the requisite trademark or common
law rights to grant Complainant the necessary standing for the Panel to
find in its favor as Complainant’s pending trademark application did not, in
and of itself, demonstrate trademark rights in the mark applied for); Diversified Mortgage, Inc. v. World Fin.
Partners, FA 118308
(Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear that its
“rules are intended only to protect trademarks, registered or common law, and
not mere trade names, due to the fact that trade names are not universally
protected as are trademarks”).
Complainant
further contends that Respondent was contractually required to transfer its
rights in the <tees.com> domain name to
Complainant as part of an agreement between the parties dated December 1,
1999. Since Respondent failed to
transfer the disputed domain name registration to Complainant, Complainant
argues that Respondent has no rights or legitimate interests in the disputed
domain name. Respondent contends
that it has not breached its contract with Complainant, and therefore was not
required to transfer the domain name registration to Complainant and thus has
rights and legitimate interests in the disputed domain name.
However,
Complainant admits in the Complaint that Respondent’s “initial purchase of the
domain name was legitimate.” (Com. §
5(b)). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc.,
D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent
registered the domain prior to Complainant’s use of the mark); see also Eddy’s (Nottingham) Ltd v. Smith,
D2000-0789 (WIPO Sept. 7, 2000) (finding no bad faith registration of the
domain name where Respondent registered the domain name in good faith, without
objection by Complainant, and in the interest of promoting Complainant’s
business); see also Reid v. Chao, FA 154587 (Nat. Arb. Forum May 29,
2003) (finding that Respondent could not have registered the disputed domain
name in bad faith where its registration came months before Complainant filed
its trademark application and no evidence of common-law rights in the mark were
submitted to the Panel); 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).
The
presence of an agreement between the parties does not preclude a determination
that the panel has jurisdiction over the dispute. See, Draw-Tite, Inc. v. Plattsburgh Spring, Inc.,
D2000-0017 (WIPO March 14, 2000). In
this case Complainant has failed to establish sufficient basis for its claims
to the domain name and against Respondent outside of the contract between the
parties. The interpretation of contract
rights is thus necessary in deciding this dispute between the parties, which is
beyond the scope of the UDRP and cannot be the basis for the transfer of the
disputed domain names. See Discover New England v. Avanti Group,
Inc. FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding the dispute outside
the scope of the UDRP because the dispute centered on the interpretation of contractual
language and whether or not a breach occurred); see also Thread.com, LLC v. Poploff, D2000-1470
(WIPO Jan. 5, 2001) (refusing to transfer the domain name and stating that the
ICANN Policy does not apply because attempting “to shoehorn what is essentially
a business dispute between former partners into a proceeding to adjudicate
cybersquatting is, at its core, misguided, if not a misuse of the Policy”); see
also Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000) (stating
that the Policy’s administrative procedure is “intended only for the relatively
narrow class of cases of ‘abusive registrations.’” Cases where registered
domain names are subject to legitimate disputes are relegated to the courts); see
also Clinomics Biosciences, Inc. v. Simplicity Software, Inc.,
D2001-0823 (WIPO Aug. 28, 2001) (Panel declining to rule on the merits after
finding that the dispute centered on whether Respondent could retain control of
a domain name as security for payment for web design work, a subject matter
within the law of liens, and outside the scope of the UDRP Policy).
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
The panel finds that the domain name <tees.com>
is identical, or confusingly similar to Complainant’s business name. However, Complainant has failed to offer
sufficient proof of trademark or service mark rights to the name and thus has
not satisfied the requirements of 4 (a)(i) of the policy.
The basis for the Complainant’s claim
that Respondent has no rights or legitimate interests in the mark is based
solely upon a contract that is in dispute between the parties, and thus the
Complainant has failed to satisfy this element of its claim.
The Complainant concedes that
Respondent’s registration was made in good faith and has failed to submit proof
that its claims of bad faith are based upon anything other than the contract in
dispute between the parties.
DECISION
By
virtue of the fact that Complainant has failed to establish the elements
required by ICANN Policy Rule 4 (a), the Panel concludes that the request for
relief be Denied.
Accordingly, it is Ordered that the <tees.com>
domain name remain with Respondent, Emphasys Technologies, Inc.
David P. Miranda, Esq., Panelist
Dated: December 27, 2003
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