DECISION

JAJ, L.L.C. v. Arturo Motti

Claim Number: FA0103000096878

PARTIES

Complainant is JAJ, L.L.C., New York, NY, USA ("Complainant") represented by Fritz L. Schweitzer III, of Schweitzer Cornman Gross & Bondell LLP. Respondent is Arturo Motti, Milano, II, Italy ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is "dreamcream.com" registered with Network Solutions, Inc.

PANEL

On April 19, 2001, pursuant to Complainantís request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 21, 2001; the Forum received a hard copy of the Complaint on March 22, 2001.

On March 22, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "dreamcream.com" is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 2001 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 Respondentís registration as technical, administrative and billing contacts, and to postmaster@dreamcream.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forumís Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIESí CONTENTIONS

A. Complainant

B. Respondent

There was no response filed by the Respondent.

FINDINGS

The Complainant is a company formed by Dr. Jed C. Kaminetsky, M.D., a board-certified urologist, who is a pioneer in the treatment of female sexual dysfunction. Dr. Kaminetsky has developed a revolutionary topical preparation, marketed under the name "Dream Cream", which has shown markedly enhanced sensation in females suffering from sexual dysfunction.

The Complainant has a family of Dream Cream marks. The prescription preparation is marketed under the mark DREAM CREAM. In addition, there is an over-the-counter version of the product for sale over the Internet, which is marketed under a variation of the mark, DREAM CREAM No. 3. A U.S. trademark application, for another variation of the mark, DR. KíS DREAM CREAM, was filed on April 14, 2000 for a "pharmaceutical preparation, namely, a topical vasodilator for treatment of female sexual dysfunction", stating a first date of use in interstate commerce of May 31, 1999. The Complainant actively uses the Dream Cream mark with respect to its product. Therefore, the Complainant holds common law trademark rights in the Dream Cream mark.

The Dream Cream product received extensive media coverage after its initial release in May 1999.

The Respondent, Arturo Motti, registered the domain name "dreamcream.com" with Network Solutions, Inc. (NSI) on October 14, 1999, after the creation and initial marketing of Dream Cream, and after the product received extensive media coverage. No use of the domain name has been made in the 15 months since its registration.

On August 23, 2000, a representative of Dr. Kaminetsky, Loretta M. Gastwirth, contacted the Respondent by email, requesting that the Respondent contact her. Negotiations over ownership of the domain name ensued. During negotiations to transfer the domain name, the Respondent stated to Ms. Gastwirth that he had no interest in using the domain name and rejected the $1,500 offered by the Complainant for transfer of the domain name.

The Respondent stated that he would be willing to exchange the domain name for another name which interested him, namely "eday.com," if Complainantís representative could obtain "eday.com" from the registrant of that domain name. The registrant of "eday.com" was unwilling to sell the domain name. Subsequently, Complainant again offered the Respondent $1,500 for the domain name "dreamcream.com," which the Respondent refused.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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.

Identical and/or Confusingly Similar

As set forth above, the Complainantís use of the Dream Cream marks pre-date the registration of the domain name by the Respondent. The Complainant has been using the Dream Cream mark in connection with its product since May 1999. The Panel determines that the Complainant has common law rights in the Dream Cream mark and in the Dr. Kís Dream Cream mark. MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the UDRP "does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names" and applying the UDRP to "unregistered trademarks and service marks").

The Complainantís pending trademark registration is also evidence of the Complainantís rights in the mark. Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-0040 (WIPO Mar. 23, 2000) (finding that the domain name was identical or confusingly similar to the complainantís pending service mark application).

The domain name "dreamcream.com" is identical to the Complainantís common law Dream Cream marks. Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name TERMQUOTE.COM is identical to Complainantís TERMQUOTE mark); Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the Complainantís "Asprey & Garrard" and "Miss Asprey" marks).

Therefore, the first element of Policy 4(a) is satisfied.

Rights or Legitimate Interests

The Respondent has not submitted any statement indicating a legitimate claim to the domain name "dreamcream.com." Indeed, as set forth above, the Respondent has admitted that he had no desire to use the domain name, and he stated that his reason for registering the domain was that he "liked" the name. Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the Respondent failed to submit a response to the Complaint and had made no use of the domain name in question).

Further, Respondent cannot establish rights and legitimate interests under any part of Policy 4(c). He has no trademark rights in the name "Dream Cream" and does not have any interests in the name, either commercial or otherwise. Instead, the Respondent registered the domain name after the Complainant had been using the mark in connection with its products and had received widespread media attention in connection with its mark. Therefore, the Respondent is not commonly known by the "dreamcream.com" term.

Policy 4(c)(ii). Broadcom Corp. v Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name nor using the domain name in connection with a legitimate or fair use).

Further, prior to this dispute, the Respondent has not made any 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 nor is not making any legitimate noncommercial or fair use of the domain name. Policy ∂∂ 4(c)(i), (iii). Indeed, no use of the domain name has been made in the 15 months since its registration. The Respondentís willingness to transfer the domain name for another domain name or excessive monetary consideration is further evidence of no bona fide or fair intentions to use the domain name. J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

Therefore, the second element of Policy 4(a) is satisfied.

Registration and Use in Bad Faith

As admitted by the Respondent in a conversation with the Complainantís agent, at the time of registration the Respondent did not have any intention of using the domain name "dreamcream.com." In addition, no use of the domain name has been made in the 15 months since registration.

Rather, the evidence proposes that the domain name was registered primarily for the purpose of monetary gain. Indeed, the Respondent stated that he was willing to transfer the domain name (which he had no intention of using), but only if presented with an "adequate offer" or in exchange for the domain name "eday.com" (which the Complainant did not own). The Panel deems that the Respondent sought the "eday.com" domain name for its confusing similarity to the on-line auction giant "ebay.com." Ownership of such a confusingly similar domain name would be certain to be rather lucrative in todayís cybersquatting and "mouse-trapping" Internet culture.

Further, while the Respondentís costs in registering the domain name were probably below $200, he rejected the Complainantís offer of $1,500 for the domain name. Thus, based on the totality of circumstances, the Panel finds that the registration and use of the domain name by the Respondent was primarily for monetary gain, and is therefore evidence of bad faith under Policy 4(b)(i). Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the "totality of circumstances"); Cruzeiro Licenciamentos Ltda v. Sallen and Sallen Enterprises, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name ownerís conduct creates the impression that the name is for sale); Southern Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (finding that the Respondent violated Policy ∂ 4(b)(i), by indicating to Complainant that he would "consider a cash offer", invited Complainant to "submit an opening cash or stock offer", and failed to reply to Complainantís offer).

Therefore, the third element of Policy 4(a) is satisfied.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "dreamcream.com" be transferred from the Respondent to the Complainant.

 

James P. Buchele, Panelist

Dated: April 23, 2001

 

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