P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com


Genetics & IVF Institute
COMPLAINANT

vs.

E.Z.O.F.
RESPONDENT

DECISION
FILE NO.: FA0003000094356

The above entitled matter came on for an administrative hearing on May 18, 2000 before a panel of three arbitrators on the Complaint of Genetics & IVF Institute ("Complainant"), represented by Paul Devinsky, Esq., McDermott, Will & Emery, 600 13th Street NW, Washington, D.C. 20005, against Etian Zviely and Oded Fisher, d/b/a E.Z.O.F. (collectively "Respondent"), represented by Matt. J. Railo, Esq., Mitchell Silberberg & Knupp LLP, 11377 West Olympic Boulevard, Los Angeles, CA 90064. Upon the written submitted record including the Complaint, the Response to Complaint, Complainant’s Rebuttal to Respondent’s Reply to the Complaint, Respondent’s Response to the Rebuttal and the Further Statements of each party (requested by the panel), the following DECISION is rendered:

 

PROCEDURAL FINDINGS

U.S. Trademark Registration 2,049,707

Trademark: MICROSORT

U.S. Patent and Trademark Office

Trademark Registrant: Genetics & IVF Institute, a Virginia corporation

Date of Registration: August 7, 1998

Domain Name: microsort.com

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: E.Z.O.F

Date of Domain Name Registration: March 30, 1998

 

Domain Name: micro-sort.com

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: E.Z.O.F.

Date of Domain Name Registration: November 4, 1998

Date Complaint Filed: March 23, 2000

Date Response to Complaint Filed: April 17, 2000. Filing was timely.

After reviewing the complaint, and determining it to be in administrative compliance, the National Arbitration Forum ("Forum") forwarded the Complaint to the Respondent on March 27, 2000 in compliance with Rule 2(a) and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), the Forum immediately notified Network Solutions that the administrative proceeding had commenced. The Complainant elected to have this administrative proceeding conducted by a three-arbitrator panel and paid the appropriate fee for same. The Complaint, the Response, Complainant’s Rebuttal to Respondent’s Reply to Complaint and the Objection of Respondent to Consideration by the Panel of the Rebuttal, Respondent’s Response to the Rebuttal as well as the Further Statements of each party requested by the panel pursuant to Rule 12, were docketed and forwarded to each of the undersigned arbitrators for decision.

 

FINDINGS OF FACT

    1. Neither the Complainant nor the Respondent contests the jurisdiction of the Forum or the undersigned arbitrators to resolve this controversy.

    2. Complainant is the Genetics and IVF Institute, a Virginia corporation with its principal place of business at 3020 Javier Road, Fairfax, VA 22301. Respondent E.Z.O.F is an entity used for the purpose of domain name registrations by Etian Zviely and Oded Fisher and has 18034 Ventura Blvd. 225, Encino, CA 91316 as its registered address.

    3. Complainant has been in the business of in vitro fertilization and providing a means of sex selection for human babies since 1984 and is the exclusive licensee of the "microsort" sperm sorting and separation process. Many examples of publicity concerning the longstanding use of this process were attached to the Complaint.

    4. Respondent registered "microsort.com" as a domain on March 30 of 1998 and, upon discovery of this fact, counsel for Complainant sent a series of "cease and desist" letters to Respondent enclosing copies of its trademark registration information and demanding cancellation or transfer of said domain name.

    5. On September 16, 1998, Complainant filed a complaint with NSI regarding microsort.com and on September 29, 1998, NSI placed the domain name on "hold" pending resolution of the disputed use. Respondent then registered micro-sort.com on November 4, 1998, and Complainant has demanded that Respondent also cease and desist from use of such domain name as being essentially identical or at least confusingly similar to its trademark. The panel concurs that microsort.com and micro-sort.com are identical or confusingly similar to Complainant’s trademark.

    6. Respondent claims it had plans to use the microsort.com site in connection with and "internet-based site for sorting search results" but was stymied by the "hold" placed on the site six months after registering the domain. It is unclear whether Respondent pursued such plans with the micro-sort.com site. The panel finds that Respondent has not shown any rights or legitimate interests in respect to either microsort.com or micro-sort.com.

    7. Complainant has offered evidence that Respondent or its alias has registered several hundred domain names, many with obvious pornographic implications and many with slight misspellings of famous trademarks. Note, for example, that "microsort.com" is a mere slip of the left index finger from "microsoft.com."

    8. Respondent defends, in chief, on the theory that its initial registration of microsort.com was in good faith, because it was unaware of Complainant’s prior use and federal trademark registration of "MICROSORT." Of course, micro-sort.com was registered months after Respondent was well aware of the trademark. Because of this ignorance at the time of the microsort.com registration, and Respondent’s interpretation of Paragraph 4b. of the Policy, to the effect that bad faith must be shown by Complainant both at the time of registration AND in the use of the domain name, Respondent claims the right to prevail. The panel disagrees.

    9. The panel finds that, from a totality of the circumstances in this case, Respondent has both registered and used the domain names microsort.com and micro-sort.com in bad faith. Paragraph 4b. of the Policy provides examples of bad faith "without limitation." Given the facts here, the panel is satisfied that the bad faith element has been satisfied.

    10. The panel commends the excellent and creative legal work demonstrated by counsel for both Complainant and Respondent in this proceeding.

 

CONCLUSION

The undersigned arbitrators certify that they have acted independently and have no known conflict of interest to serve on the arbitral panel in this proceeding. Having been duly selected, and being impartial, the undersigned make the following conclusions:

    1. The domain names "microsort.com" and "micro-sort.com" are identical or confusingly similar to Complainant’s trademark, "MICROSORT."

    2. Respondent has no rights or legitimate interests in respect of either of the registered domain names at issue.

    3. Respondent has registered and is using microsort.com and micro-sort.com in bad faith.

 

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Domain Resolution Policy, it is decided as follows:

THE UNDERSIGNED DIRECT THAT THE DOMAIN NAMES "MICROSORT.COM" AND "MICRO-SORT.COM," REGISTERED BY RESPONDENT E.Z.O.F, BE FORTHWITH TRANSFERRED TO COMPLAINANT GENETICS & IVF INSTITUTE.

Signed this 19th May, 2000

 

___________________________

Hon. Richard DiSalle, Chairman

Rose Schmidt Hasley & DiSalle, P.C.

900 Oliver Building,

Pittsburgh, PA 15222

 

____________________________

Roderick M. Thompson, Esq.

Farella Braun & Martel, LLP

Russ Building, 30th Floor

235 Montgomery Street

San Francisco, CA 94104

 

_____________________________

James A. Carmody, Esq.

Attorney & Arbitrator

5718 Westheimer, Suite 1010

Houston, TX 77057