Surfside
Claim Number: FA1006001330046
PARTIES
Complainant is
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <surfside-animal-hospital.com>, <surfside-animal-hospital.net>, <surfsideanimalhospital.com>, <surfsideanimalhospital.net>, <surfsideah.com>, <surfsideah.net>, <surfsidevethospital.com>, <surfsidevethospital.net>, <surfsideveterinaryhospital.com>,
and <surfsideveterinaryhospital.net>,
registered with Network Solutions, LLC.
PANEL
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.
Debrett G. Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 15, 2010.
On June 16, 2010, Network Solutions, LLC confirmed by e-mail to
the National Arbitration Forum that the <surfside-animal-hospital.com>, <surfside-animal-hospital.net>, <surfsideanimalhospital.com>, <surfsideanimalhospital.net>, <surfsideah.com>, <surfsideah.net>, <surfsidevethospital.com>, <surfsidevethospital.net>, <surfsideveterinaryhospital.com>,
and <surfsideveterinaryhospital.net>
domain names are registered with Network
Solutions, LLC and that Respondent is the current registrant of the
name. Network
Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On June 18, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of July 8, 2010 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 postmaster@surfside-animal-hospital.com, postmaster@surfside-animal-hospital.net, postmaster@surfsideanimalhospital.com, postmaster@surfsideanimalhospital.net, postmaster@surfsideah.com, postmaster@surfsideah.net, postmaster@surfsidevethospital.com, postmaster@surfsidevethospital.net, postmaster@surfsideveterinaryhospital.com, and postmaster@surfsideveterinaryhospital.net. Also on June
18, 2010, 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 Response was received on July 12, 2010
which the Forum found to be deficient as non-compliant with Supplemental Rule
5(a) as it was received after the July 9, 2010 deadline for its submission.
On July 19, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant made Additional Submissions on July 20, 2010.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant alleges trademark rights in the
words SURFSIDE ANIMAL HOSPITAL and submits that the disputed domain names are at
least confusingly similar to the trademark.
Complainant alleges that Respondent has no
rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent
registered and is using the disputed domain names in bad faith.
B. Respondent
Respondent emailed an out-of-time Response to the Forum which was adjudged not to be in compliance with ICANN Rule 5(a). For reasons which emerge, the Panel has exercised its discretion to consider the Response.
The Response does not substantially address either the Complaint or the Policy. For the purposes of reaching a Decision, the Panel has extracted and set out hereunder the noteworthy passages from the Response:
…I agreed to immediately release and transfer the disputed Domain Names
to
...
After receiving papers from the attorney for Surfside Animal Hospital
APC, I attempted to cancel my ownership of the disputed Domain Names. I
learned, from Network Solutions, that the names were "locked" due to
the complaint by Surfside Animal Hospital APC. Because of the
locked status, nothing could be done, including cancellation, until the
matter was resolved.
When I notified the attorney, for Surfside Animal Hospital APC that I
would relinquish ownership of the disputed Domain Names and transfer them to
Surfside Animal Hospital APC, I was sent a proposal in which it was requested
that I pay $8673.48 to cover costs and losses suffered by Surfside Animal Hospital
APC. I agreed to the proposal except for the payment. My
counterproposal was declined by Surfside Animal Hospital APC. (As I
cannot attach a document to this forwarded email, I will send you the proposal
in a separate email).
Because of the complaint with Network Solutions has not been
removed, I can do nothing further to resolve this.
C. Additional Submissions
Complainant made Additional Submissions which need not be summarized
here but which are taken into account in reaching the Decision.
FINDINGS
No significant findings of fact necessary in this
case.
DISCUSSION
This case requires the Panel to consider three
preliminary issues:
(i)
Non-compliant Response
(ii)
Consent-to-transfer
(iii)
Other legal proceedings
Preliminary
Issue: Non-compliant Response
Response was received after
the deadline for its submission. The
Panel has exercised its discretion to admit and consider the Response since in
its view the lateness has not prejudiced Complainant and the Response has
bearing on whether the Panel has a proper mandate to decide this matter by
application of the UDRP or not.[i]
Preliminary Issue: Consent-to-transfer
An issue
arises as to whether the Panel should decide this case under the UDRP given
that Respondent has expressed a desire to resolve the dispute by transferring
the disputed domain names to Complainant.
In the Disney
Enterprises case,[ii] it was
said that “where Respondent has agreed to comply with Complainant’s request [to
transfer the domain name], the Panel felt it to be
expedient and judicial to forego the traditional UDRP analysis and order the
transfer of the domain names.”
By way of contrast, in the case of State Farm Mutual Automobile
Insurance Co. v. Richard Pompilio,
FA 1092410 (Nat. Arb. Forum Nov. 20, 2007), it was common ground
between the parties that, prior to the filing of the complaint, the respondent
had offered to transfer the disputed domain name to the complainant and the complainant
had accepted that offer. Nonetheless, the
complainant had taken a decision to press forward and file the complaint. Respondent in that case then wrote to the
Forum stating in a letter that it “agreed with the complaint and agreed to
release the Domain name.” That post-complaint correspondence was copied to the complainant,
but the complainant did nothing to indicate whether it wished to abandon the
complaint or not. In those
circumstances, the panel there drew the inference that the complaint was
maintained and so went on to decide the dispute under the terms of the Policy.
This
Panel is of the view that an Order to transfer ownership of the domain names at
issue requires, at the very least, an unconditional request on the part of the
Respondent to do so. In its Additional
Submissions, Complainant alleges “that Respondent has been less than forthright
in his statement” that Respondent is ready and willing to transfer the disputed
domain names to Complainant. Complainant
states that:
Respondent
is well aware that there are currently two active cases open against
Respondent. The UDRP Administrative proceeding, which is the subject of this
dispute as well as a Federal Circuit case pending in the Southern District
Court under case number 3:10-cv-01294-JLS –BLM.
Respondent indicated that he would like to discuss settlement of the
matters and accordingly, the parties agreed to discuss the possibility of
settlement of both the UDRP administrative hearing as well as the Federal
Circuit court case. During the course of
that discussion, a settlement offer was extended to Respondent, which was
rejected. There was no agreement by
Respondent to relinquish the domain names to their rightful owner,
In
short, transfer appears to be conditional on Respondent’s demand for release
from Complainant’s claim to $8,637.48 in
attorney’s fees. Moreover, the Panel
would expect that any final compromise also hinges on compromise of the court
proceedings against Respondent.
Complainant has had more than adequate opportunity to
approach the Forum indicating its possible willingness to accept the offer of
transfer of the domain names. That has
not happened. Accordingly, the Panel has
decided that it is in this case appropriate to apply the UDRP analysis, subject
only to consideration of the final preliminary matter regarding the legal
proceedings between the parties.
Preliminary Issue: Other legal proceedings
It is a requirement of
the Complaint for it to indicate whether other legal proceedings have been
commenced or terminated in connection with or relating to any of the domain
names.
Complainant states that
“contemporaneously with this action, Complainant is preparing for filing an
action for” cybersquatting, unfair competition, and false description in the
In an offer of
settlement from Complainant to Respondent, Complainant’s attorney states “my
client has given me the authority to extend an offer of settlement to settle
both the UDRP administrative complaint as well as the civil action currently
pending in the US District Court for the Southern District of California.” Neither Complainant nor Respondent has
included a copy of the referenced civil action or given more detail about it. Nor is it clear that the UDRP Rules have
traction since the language of the Complaint would suggest that those court
proceedings were not “commenced or terminated” at the date the Complaint was
filed.[iii]
The missing information
regarding the nature and scope of the legal proceedings and the fact that, even
if commenced in a court of competent jurisdiction, the proceedings appear to be
outside the strict wording of the Rules, cause this Panel to decide that it
should continue to apply the Policy and so make the formal analysis.
Paragraph 15(a) of the UDRP Rules instructs the
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.”
Policy ¶ 4(a) requires that Complainant must prove each of the
following three elements to obtain an order that the domain names should be
cancelled or transferred:
1. the domain names registered by Respondent are
identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
2. Respondent has no rights or legitimate
interests in respect of the domain names; and
3. the domain names have been registered and is
being used in bad faith.
Policy ¶ 4(a)(i) requires a two-fold
enquiry. First, a threshold
investigation of whether Complainant has rights in the trademark SURFSIDE
ANIMAL HOSPITAL, followed by an assessment of whether that trademark and the
domain names are identical or confusingly similar.
Complainant does
not own a registered trademark;[iv]
however governmental trademark registration is not necessary to establish
rights under Policy ¶ 4(a)(i) if common law rights
established through use and reputation are proven.[v]
Complainant alleges
it has used the SURFSIDE ANIMAL HOSPITAL mark in association with its
veterinary services and all filings and business licenses associated with these
services since May 18, 2009. Complainant
also claims that it has invested substantially in marketing the SURFSIDE ANIMAL
HOSPITAL mark.
Those claims are not in any way supported by
evidence. There is no evidence
whatsoever of reputation in, or public recognition of, the trademark, something
consistently demanded in formative decisions under this Policy. The
trademark is essentially descriptive. Even
with extensive, well documented proof of use, Complainant might have struggled
to show common law rights acquired over a period of barely more than one
year. Based simply on the material
before it, it is impossible for the
Panel to attribute common law rights in the trademark to Complainant.[vi]
For these reasons, Complainant has not surmounted the first hurdle in
proving its case and had failed to show rights in a trademark under Policy ¶
4(a)(i).
No findings required.[vii]
DECISION
Having failed to establish at least one of the three elements required
under the ICANN Policy, the Panel concludes that relief is DENIED.
Debrett G. Lyons, Panelist
Dated: July 28, 2010
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National
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[i] See Disney
Enterprises., Inc. v. Morales,
FA 475191 (Nat. Arb. Forum June 24, 2005).
[ii] Ibid.
[iii] Compare with eProperty
Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum Jan. 3, 2007) (holding
that the panel could decide the dispute under Rule 18(a) of the Policy “since
the legal proceedings referred to by the parties appear to be concluded and
Orders made.”).
[iv] Complainant has filed for trademark
registrations with the United States Patent and Trademark Office (“USPTO”), but
Complainant does not yet hold a trademark registration for its SURFSIDE ANIMAL
HOSPITAL mark.
[v] See, e.g., Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶
4(a)(i) does not require a trademark registration if a complainant can
establish common law rights in its mark); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO
Mar. 23, 2000) (noting that the Policy “does not distinguish between registered
and unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”.).
[vi] See EU
Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb.
Forum Feb. 7, 2007); see also Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14,
2005).
[vii] See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).