Domain name – Domain name dispute resolution – Partnership agreement – Registered trademark – Shared rights in trademark – Legitimate right and interest in domain.

Complainant and Respondent had an agreement to develop life preserver products. Complainant filed for and received registered trademark for  RESQ DISC to be used with life preservers.  Respondent registered domain name in question resqdisc.com.   Complainant began to market a new life preserver product, and claimed that Respondent’s domain name resqdisc.com infringed upon Complainant’s trademark.

Held, Name Not Transferred to Complainant.

Complainant and Respondent were involved in a joint venture to market products under the RESQ DISC mark, so the parties share rights in the mark.  Federal registration does not terminate any prior rights to use a mark. Respondent had legitimate rights and interest in the registration and use of the registered trademark resqdisc.  Both Respondent and Complainant has right and legitimate interest in the registration and use of the name resqdisc  by virtue of commercial use of the name prior to notice of this dispute.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Panel Decision referred to
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Cabell, Panelist: -

1. Parties and Contested Domain Name 
Complainant: Save A Life 
Respondent: Hyde Engineering Group inc. 
Domain name: resqdisc.com 

2. Procedural History 
The electronic version of the Complaint form was filed on-line through eResolution's Website on April 24, 2000. The hardcopy of the Complaint Form was received on May 4, 2000. Payment was received on May 9, 2000.The choice of jurisdiction was received on June 1, 2000. 
Upon receiving all the required information, eResolution's clerk proceeded to: 
- Confirm the identity of the Registrar for the contested Domain Name; 
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent; 
- Verify if the contested Domain Name resolved to an active Web page; 
- Verify if the Complaint was administratively compliant. 
The inquiry leads the Clerk of eResolution to the following conclusions: the Registrar is Network Solutions, the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant. 
An e-mail was sent to the Registrar by eResolution Clerk's Office to obtain a copy of the Registration Agreement on May 11, 2000. The requested information was received June 7, 2000. 
The Clerk proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. 
The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on May 18, 2000. That date is the commencement date of the administrative proceeding. 
On May 18, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding. 
The Respondent submitted a response on June 8, 2000 via the eResolution Internet site. The response was one day late. The Respondent submitted a signed version of his response, along with his annexes, which was received on June 12, 2000. 
The Respondent has been advised that his response was late and that he may submit arguments to the Panel in conformity with article 10 (c) of ICANN Rules and article 14 (c) of eResolution Supplemental Rules. 
He has also been advised that the Panel will decide on the admissibility of the response. If the response is accepted, the annexes will be put online immediately after their acceptance by the panel and the response and the annexes shall be communicated to the Complainant. 
On June 21, 2000, the Clerk's Office contacted Ms. Diane Cabell, and requested that she act as panelist in this case. 
On June 22, 2000, Ms. Diane Cabell accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality. 
On June 22, 2000, the Clerk's Office forwarded a user name and a password to Ms. Diane Cabell, allowing her to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System. 
On June 22, 2000, the parties were notified that Ms. Diane Cabell had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 4, 2000. 
On June 29, Ms. Cabell notified the Clerk's Office that she would accept the Respondent's submission; notwithstanding it's arrival one day after the deadline. The Complainant asked the Clerk for an opportunity to reply to the Response. The Panelist denied this request and will assume that Complainant would deny all of the Respondent's claims. 

3. Factual Background 
On March 9, 1996, Mr. Robert Hyde (as Hyde Engineering) and the Complainant (Thomas Sytko for Save-A-Life) entered an agreement for the development of two life preserver products invented by Mr. Hyde and referred to as the "Save-a-Life Disc" and the "Fishbee." The parties were to share equally in the proceeds from this venture. (Respondent's Annex B) 
On March 18, 1996 Mr. Hyde filed a US patent application for a life saving disc. (Respondent's Annex D) 
In 1997, the Complainant and Mr. Hyde (as inventor) were featured in a news article about the "Save-A-Life" disc. The article announces that an improved version would soon be in distribution and would be called "RESQ." (Respondent's Annex A) Even if the 1996 partnership agreement were a fraudulent submission by Respondent, the news article appears genuine and quotes both parties enthusiastically praising their enterprise. 
On June 16, 1998, Complainant (as Save-A-Life) filed for a trademark registration for "RESQ DISC" for use with life preservers. 
On April 20, 1999, Mr. Hyde's patent (#5, 895, 299) for a life saving disc issued. (Respondent's Annex D) 
On 11 November 1999 the Respondent (Bill Cosner) registered the domain "resqdisc.com" which is the subject of this dispute. (Respondent's Annex C) Mr. Cosner's address is the same as that of Hyde Engineering, however there is no other connection in evidence between Mr. Cosner and either Mr. Hyde or any of Mr. Hyde's businesses. (Respondent's Annexes C and E) The panelist will assume that Mr. Cosner is Mr. Hyde's representative. All references herein to the "Respondent" therefore presume such an agency. 
On 25 November 1999, Mr. Hyde transferred his patent to Hyde Engineering. (Respondent's Annex E) 
On 14 December 1999, Complainant was granted a registration (#2,302,066) on the USPTO's Supplemental Register for the mark "RESQ DISC" for use with life preservers. The registration declares a date of first use of January 1, 1998. (Complainant's Annex A) 
On 16 April 2000, Complainant e-mailed Respondent alleging that Mr. Hyde had breached the contract regarding the original "Save A Life" product, that Complainant was marketing a new life preserver, different from the Respondent's, and that that the Respondent's domain and website infringed Complainant's mark and copyrights. Complainant requested that Respondent cease using the term. (Complainant's Annex, Page 3) This reference a breached contract supports the Respondent's claim of a joint enterprise. 
The Respondent's web site at www.resqdisc.com prominently features the term "Frisbuoy ResQdisc" for its life preserver item. 
On 24 April 2000, this complaint was filed. 

4. Parties' Contentions 
Complainant simply places its trademark registration before the panel and alleges that the Respondent's actual/constructive knowledge of it makes Respondent's use of the same name for a similar product both illegitimate and in bad faith. The claim of bad faith is based on two arguments: (1) that Respondent copied some of Complainant's literature for its site and (2) « Had they not known we were registered, why would they call their product Frisbuoy Rescue Disc and use our name as their domain name. » Such claims may or may not provide evidence of trademark infringement, but they do not prove, per se, bad faith or lack of right in the domain name. These latter elements are required to be proven in a UDRP proceeding. (Policy Section 4) 
Respondent provides evidence that the parties have/had a long-standing business partnership to market products under the « ResQ Disc » label, and therefore each has a right in the name, something that Respondent claims that the Complainant's trademark application failed to reveal and which calls into question the validity of that registration. Although it seems apparent that this relationship has deteriorated or terminated, both parties continue to market some variant of the product. 

5. Discussion and Findings 
I find that the parties were engaged in a joint venture intended to market products under the « RESQ DISC » mark. Although there is no evidence indicating whether this was actually accomplished, there no evidence that it did not. The record therefore supports a finding that both parties consequently have rights in the mark based on their partnership. There is no evidence that the partnership was not in effect at the time the domain name was registered or that the parties transfered exclusive control of the mark to one or the other. 
These rights arose before the domain was registered, so the date of the federal registration is irrelevant to Respondent's defense. The 1997 news article supplied by Respondent establishes the defense cited in the Policy Section 4(c)(i) : 
« before any notice to you of the dispute, your use of, or 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. » 
The mark's registration date is also irrelevant to Complainant's claim because a federal registration does not automatically terminate prior use rights in the word. See 3 McCarthy on Trademarks and Unfair Competition, Sec. 19:3 (4th ed.). 
I find that the Respondent, as agent for Mr. Hyde and/or his companies, had both right and legitimate interest in the registration and use of the name « resqdisc » by virtue of commercial use of the name prior to notice of this dispute.

6. Conclusions 
Since Complainant has failed to prove one of the necessary elements of the case (lack of right or legitimate interest in the name), the Complaint fails entirely. [UDRP Policy 4(a]. This panelist declines to order the transfer or cancellation of the domain name « resqdisc.com. »