national arbitration forum




Edelgard & Horst Liebl v. Drug-Aware Ltd

Claim Number: FA1106001395617



Complainant is Edelgard & Horst Liebl (“Complainant”), represented by David S. Safran, Virginia, USA.  Respondent is Drug-Aware Ltd (“Respondent”), represented by Jess M. Collen of COLLEN IP, Intellectual Property Law, P.C., New York, USA.



The domain names at issue are <> and <>, registered with Tucows, Inc.



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.


Flip Petillion as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2011; the National Arbitration Forum received payment on June 27, 2011.


On June 27, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <> and <> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the names.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).


On June 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to,  Also on June 28, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.


A timely Response was received and determined to be complete on July 18, 2011.


On July 20, 2011 Complainant filed an Additional Submission. Respondent responded to this Additional Submission on July 25, 2011. The Additional Submissions were received by the National Arbitration Forum on July 26, 2011.


On July 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.




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



A. Complainant


Complainant asserts Respondent’s <> and <> domain names to be virtually identical or confusingly similar to its DERMAROLLER mark. Complainant further contends that Respondent has no rights or legitimate interests in the domain names.  Finally, Complainant contends that Respondent registered and is using the domain names in bad faith, as Respondent has registered and is using the domain names primarily for the purpose of disrupting the business of Complainant and for creating confusion in the marketplace by selling competing products at a website using domain names that are confusingly similar to Complainant’s trademark.


B. Respondent


Respondent argues that the proceedings must be terminated or suspended because the validity of Complainant’s DERMAROLLER mark is challenged in Court proceedings. According to Respondent, Complainant has no valid rights in the term “DERMAROLLER”, which Respondent considers to be descriptive. Respondent argues to use the disputed domain names in connection with the bona fide sale of goods, commonly denominated derma-rollers. Respondent further asserts neither to have registered nor to use the disputed domain names in bad faith.


Finally, Respondent submits that Complainant’s request for relief should be denied as an instance of reverse domain-name hijacking, since Complainant would have issued its Complaint as a retaliation for the current challenges to its DERMAROLLER mark.


C. Additional Submissions




In its Additional Submission, Complainant submits that the administrative proceedings should not be terminated or suspended. According to Complainant, the proceedings to which Respondent refers have no direct bearing on the administrative proceedings and are unlikely to result in a decision for years from now.


Complainant also contends that the term “DERMAROLLER” is not descriptive of the goods for which “DERMAROLLER” is registered as a trademark. Complainant asserts that it would also have common law rights in addition to its registered rights as Complainant has been using its DERMAROLLER mark for at least eight years. According to Complainant, Respondent uses the disputed domain names to mislead consumers. Finally, Complainant considers Respondent’s claim of reverse domain-name hijacking to be absurd, as Complainant is convinced about the validity of its trademark rights.




Respondent replied to this Additional Submission and argues that its request for termination or suspension is justified, as Complainant’s filing of a Complaint during the pendency of two other proceedings would unfairly place Respondent at risk of losing domain names which Respondent has put to substantial good faith use.


Respondent further argues that Complainant’s “DERMAROLLER” mark is descriptive of the goods and services it is used for. Respondent also contends that Complainant’s claim that Respondent would be misleading consumers with false claims of FDA is unfounded and irrelevant for the present proceedings. Finally, Respondent reiterates its claim of reverse domain-name hijacking.



1.    Complainant is the holder of the following trademark registrations:


-        U.S. Reg. No. 3,407,957 – DERMAROLLER, registered on April 8, 2008;


2.    Prior to the filing of the Complaint by Complainant, Complainant’s trademark rights in the “DERMAROLLER” mark have been challenged in two separate proceedings, one of which involves Respondent. Both proceedings are presently ongoing.


3.    Respondent, Drug Aware Ltd., registered the domain names <> and <> on May 6, 2008 and November 23, 2008 respectively. 


4.    Respondent uses the domain names to promote a cosmetic product it refers to as “derma-roller”.



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."


Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  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.


Respondent claims that there is ongoing litigation involving Complainant’s United States trademark registration of the DERMAROLLER mark.  Respondent submits the court filing of the Defendant in the matter indicating that it was filed on May 5, 2011(See Respondent’s Exhibit A).  The central claim of the case appears to be a challenge regarding the validity of Complainant’s trademark registration for the DERMAROLLER mark.  The validity of Complainant’s trademark is challenged based on the alleged descriptiveness and lack of secondary meaning of the trademark.


Based on these proceedings, Respondent requests the termination or suspension of the administrative proceedings.


Despite the fact that these proceedings are ancillary to the present administrative proceedings, Complainant did not identify the existence of these proceedings in its Complaint.


The Rules, ¶ 3 (b)(xi) provide that Complainant must identify in its Complaint any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain names that are the subject of the complaint. The fact that Complainant omitted to identify the existence of the proceedings in relation to the validity of Complainant’s trademark rights, makes the Complaint incomplete. For this reason alone, the Complaint could be denied.


Moreover, the Rules, ¶ 18(a) provide:


“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”


In situations where concurrent court proceedings are pending, some panels have chosen to proceed with the administrative proceedings. See e.g., Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (choosing to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues and that the court proceedings were filed by the respondent on the same day the response in these proceedings was filed). Alternatively, other panels have chosen not to proceed with the administrative hearing because of the pending litigation.  See e.g., AmeriPlan Corp. v. Gilbert FA105737 (Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.”  Therefore, a panel should not rule on a decision when there is a court proceeding pending because “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”).  Hence, there is some margin of appreciation for the panels, which allows them for instance not to take into account the existence of proceedings that are unrelated or that have been initiated in an attempt to avoid or to stall the administrative proceedings.


In any event, the present proceedings must be considered summary proceedings that were never intended to serve as a vehicle for adjudication of traditional trademark disputes. See Family Watchdog LLC v. Lester Schweiss, No. D2008-0183 (WIPO April 23, 2008). The domain name dispute in this case is ancillary to the trademark dispute that was already initiated prior to the filing of the Complaint in the present proceedings. According to the Panel, a trademark dispute is more appropriately decided by traditional means, as they turn on questions of law beyond the Policy. See Family Watchdog LLC v. Lester Schweiss, No. D2008-0183 (WIPO April 23, 2008); Clinomics Biosciences, Inc. v. Simplicty Software, Inc., No. D2001-0823 (WIPO August 28, 2001). Accordingly, and since the Court determination in the matter presented by the Respondent may bear directly on the validity of any award granted by the Panel, the Panel believes that the appropriate course in this case is for the Panel to terminate this administrative proceeding pursuant to the Rules, ¶ 18(a), without expressing a view as to the respective merits and without prejudice to any filing of a future complaint under the Policy that may be thought appropriate after the referred-to court proceedings have concluded. See Aussie Car Loans Pty Ltd v. Wilson Accountants Pty Ltd, No. D2008-1477 (WIPO December 9, 2008).



For all foregoing reasons, the Complaint is denied.



Flip Petillion, Panelist

Dated:  August 8, 2011




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