[Indexed as Marc S. Bragg, Esquire v. Dennis Condon, Better Image, Inc.]
[Indexed as PLASTICDOCSHOP.COM et al.]
The National Arbitration Forum
Domain Name Dispute Administrative Panel Decision
File Number: 92528
Commenced: 24 January, 2000
Judgment: 2 March, 2000
Presiding Panelist: Charles K. McCotter, Jr.
Domain name Domain name dispute resolution policy U.S. Service mark U.S. Trademark Identical Confusingly similar Bad faith registration Bad faith use.
Complainant was registrant of State of California service mark and had a pending application for United States trademark and/or service mark for DOCSHOP. Respondent registered the domain names PLASTICDOCSHOP.COM and COSMETICDOCSHOP.COM. Respondent and Complainant are in a directly competitive business.
Held, Name Transferred to Complainant.
The domain names PLASTICDOCSHOP.COM and COSMETICDOCSHOP.COM are legally identical to Complainants registered trademark DOCSHOP and are confusingly similar to a service mark in which the Complainant has rights. Respondents have not shown that they are commonly known by the domain names. Respondents are not making a legitimate non-commercial or fair use of the domain names.
Respondents actions with respect to the registration of the domain names also evidence bad faith use. Respondents have intentionally attempted to attract, for commercial gain, Internet users to their web site by creating likelihood of confusion with the Complainants mark as to the source, sponsorship, affiliation, or endorsement of Respondents web site location.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Registration Agreements referred to
Network Solutions Inc., effective April 1, 1999
Panel Decision referred to
--
McCotter, Jr., Panelist: -
Complainant:
Marc S. Bragg, Esquire
5699 La Jolla Blvd.
La Jolla, CA 92037
email: [email protected] File Number: 92528
(610) 587-8524 (Telephone)
(858) 362-8567 (Facsimile) Filing Date: 1/24/00
Respondent:
Dennis Condon,
Better Image, Inc.,
104 West Anapamu Street, Suite G
Santa Barbara, CA 93101
email: [email protected]
(805) 963-0400 (Telephone)
DOMAIN NAME DISPUTE ADMINISTRATIVE PANEL DECISION
Domain Name(s): plasticdocshop.com, cosmeticdocshop.com
Domain Name Registrar: Network Solutions
Date of domain name registration: 4/1/99
Date Complaint was sent to Respondent in accordance with Rule 2(a):
1/24/2000
Response Due Date: 2/16/2000
PROCEDURAL FINDINGS
1. The Complainant filed its complaint with the National Arbitration
Forum on Network Solutions. After reviewing the Complaint for administrative
compliance, The Forum transferred the Complaint to the Respondent 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
the above Registrar, ICANN and the Complainant that the administrative
proceeding had commenced.
2. The Respondent registered the domain names with Network Solutions,
Inc., the entity that is the Registrar of the domain names. By registering
its domain names with Network Solutions, the Respondent agreed to resolve
any dispute regarding its domain names through ICANNs Uniform Domain Name
Dispute Resolution Policy.
3. The complaint is based on the following trademark or service marks:
docshop registered December 9, 1999.
4. The above-captioned matter came on for an administrative hearing
on March 2, 2000 before the undersigned on the Complaint of Einstein Medical,
Inc., hereafter "Complainant", against Dennis Condon, Better Image, Inc.,
hereafter "Respondents". Complainant is represented by Marc S. Bragg, Esquire
of Bialecki & Bragg, P.C., 111 E. Cypress St., Kennett Square, PA 19348.
The Respondent has not responded and is in default. This matter is submitted
for decision in accordance with ICANNs Uniform Domain Name Dispute Resolution
Policy (the "Policy") and Rules (the "Rules"). Upon the written submitted
record, and the following findings and conclusions, I find for the Complainant.
FINDINGS OF FACT
5. The Complainant, Einstein Medical, Inc., is an Internet and World
Wide Web advertising and marketing firm that has been in the business of
providing a unique Internet directory service named "DocShop" and associated
web-site development services to twenty-two (22) specialties within the
medical profession for the past three (3) years. Two (2) of the medical
specialties that Complainant has offered since 1998, and continues to offer
through its Internet directory service are to cosmetic and plastic surgeons.
6. The Complainants primary business encompasses the creation of "DocShop",
a Medical Internet Directory Listing service utilizing proprietary software,
and developing, employing and refining keyword, advertising and marketing
strategies, and domain name assets to deploy that software and service
across the Internet and World-Wide Web. Complainant provides a medical
directory listing and finding service that services, the plastic and cosmetic
surgery industry.
7. The Complainant also employs designers and graphic artists for creating
the latest in web-site design, in both its use of graphics and creativity,
and in terms of functionality.
8. Crucial assets for an Internet development, marketing and advertising
company in this quickly emerging market are its ability to control the
use of its trade names, trade marks, proprietary and confidential marketing,
and advertising strategies, and to otherwise prevent blurring of its valuable
marks or misappropriation of its property, especially, use of those marks
as part of or within domain names.
9. The Respondents have appropriated Complainants marks for the purpose
of trading off Complainants brand awareness and directing Internet users
to a website that is directly competitive and in the identical industry
as Complainant, both on and off the Internet.
10. Along with the domain names incorporating the mark "docshop", Complainant
registered two (2) domain names at "plasticsdocshop.com" and "cosmeticsdocshop.com"
in June, 1998. Complainants registration of the above two (2) domain names
was nearly fifteen (15) months before Respondents registered the two (2)
identical domain names in dispute, "plasticdocshop.com" and "cosmeticdoschop.com"
11. The only difference between Complainants original registrations
in June of 1998, and Respondents registration in April, 1999, is Respondents
deletion of the "s" from the words "plastics" and "cosmetics".
12. Complainant has applied for a federal trademark and/or service
mark for "docshop" which application is currently pending. On December
9, 1999, the Complainant registered the service mark for "DocShop" with
the State of California.
13. Complainant had advised Respondents about its confidential strategies
just a short time before Respondents domain name registration of April,
1999.
14. Respondents filed their registrations knowing that the use of Complainants
mark within the two (2) domain names would infringe on Complainants investment
in building brand awareness in the mark "docshop".
15. Respondents conduct in registering these two (2) domain names
was for the purpose of preventing Complainant, the owner of the "docshop"
mark, from reflecting the mark in its own corresponding domain name, as
it had already done with the words "plastics" and "cosmetics."
16. Being in a directly competitive business, Respondents registered
these domain names for the purpose of disrupting Complainants business
and getting users to believe that their website was associated, affiliated,
supported, or operated in connection with Complainants DocShop.
17. By registering these two (2) domain names, Respondents have intentionally
attempted to attract, for commercial gain and at Complainants expense
and loss, Internet users to Respondents website and have created a likelihood
of confusion with respect to Complainants mark as to its source, affiliation
or sponsorship of Respondents website.
18. Respondents have no association, presence, brand awareness, right
or legitimate interest in connection with their use of the mark "docshop."
CONCLUSIONS
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following:
1. that the domain names registered by the Respondents are identical
or confusingly
similar to a trademark or service mark in which the Complainant has
rights; and
2. that the Respondents have no legitimate interests in respect of
the domain names; and,
3. the domains have been registered and used in bad faith.
The Complainant has shown each of the above.
1. The registered domain names "plasticdocshop.com" and "cosmeticdocshop.com"
ARE identical or confusingly similar to a trademark or service mark in
which the Complainant has rights.
The domain names "plasticdocshop.com" and "cosmeticdocshop.com" are
identical to Complainants registered trademark "DocShop" and are confusingly
similar to a service mark in which the Complainant has rights.
2. The Respondents DO NOT have rights or legitimate interests in respect
of the domain-names "plasticdocshop.com" and "cosmeticdocshop.com"
The Respondents use of the domain names is not bona fide. The Respondents
have not
been commonly known by the domain names. The Respondents are not making
a legitimate non-commercial or fair use of the domain names. Therefore,
the Respondents do not have rights or legitimate interests in respect to
the domain names.
3. The domain names SHOULD be considered as having been registered and
being used in bad faith.
The Respondents actions with respect to the registration of the domain
names evidence
bad faith. By using the domain names, the Respondents have intentionally
attempted to attract, for commercial gain, Internet users to their web
site by creating a likelihood of confusion with the Complainants mark
as to the source, sponsorship, affiliation, or endorsement of Respondents
web site location.
Summary
In summary, the Complainant has shown that (1) the registered domain
names "plasticdocshop.com" and "cosmeticdocshop.com" are identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondents do not have rights or legitimate interests in respect
to the domain names "plasticdocshop.com" and "cosmeticdocshop.com"; and
(3) the domain names should be considered as having been registered in
bad faith.
DECISION
I certify that I have acted independently and have no known conflict
of interest to serve as the arbitrator in this proceeding. Having been
duly selected and being impartial, I enter the following decision:
Based upon the above findings and conclusions, and pursuant to Rule
4(i), I find in favor of the Complainant and direct that the domain names
"plasticdocshop.com" and "cosmeticdocshop.com" registered by Respondents
be transferred to Complainant, Einstein Medical, Inc. This 2nd day of March,
2000.
Charles K. McCotter, Jr.
Arbitrator
Domain Name Transferred