DECISION

 

MatchMaker International Development Corporation v. Kaiser Development Corporation Inc.

Claim Number: FA0302000146933

 

PARTIES

Complainant is MatchMaker International Development Corporation, Rocky River, OH ("Complainant"), represented by Philip I. Frankel of Bond Schoeneck & King PLLC.  Respondent is Kaiser Development Corporation Inc., Evansville, IN ("Respondent") represented by Ari Goldberger, of ESQwire.com Law Firm.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <matchmakerinternational.com>, registered with Tucows.

 

PANEL

The Panelists are the undersigned, Rodney C. Kyle, Chairperson; the Honorable Charles K. McCotter, Jr. (Ret.); and David E. Sorkin.

 

Each Panelist 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 February 26, 2003; the Forum received a hard copy of the Complaint on February 28, 2003.

 

On February 27, 2003, Tucows confirmed by e-mail to the Forum that the domain name <matchmakerinternational.com> is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 February 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 2003 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 Respondent’s registration as technical, administrative and billing contacts, and to postmaster@matchmakerinternational.com by e-mail.

 

A timely Response was received and determined to be complete on April 9, 2003.

 

On April 25, 2003, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Rodney C. Kyle, the Honorable Charles K. McCotter, Jr. (Ret.), and David E. Sorkin as Panelists.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Basically, Complainant makes three main contentions.

 

First, Complainant basically contends by way of four points that (i) Respondent is a corporation located in Evansville, Indiana and that it carries on business under the assumed name of "Matchmaker International", as evidenced by the copy of the Indiana Secretary of State corporations database printout that is Complaint Exhibit #3; (ii) since January 24, 2002 <matchmakerinternational.com> is registered to Respondent by the owner of Respondent, Mr. David Blair, as evidenced by the copy of the WHOIS search results printout that is Complaint Exhibit #2; (iii) Complainant owns U.S. uncontestable service mark registration 1549618 dated July 25, 1989 and Canadian trademark registration TMA457626 dated May 24, 1996 (each as to MATCHMAKER INTERNATIONAL with a heart shape as part of each "a" in "MatchMaker," in association with personal dating services, namely, arranging dates for others), as respectively evidenced by the copies of the TESS and CIPO printouts that are Complaint Exhibit #1; and (iv) said domain name is identical thereto.

 

Second, Complainant basically contends by way of five points that Respondent has no "rights or legitimate interests" in respect of <matchmakerinternational.com> in that (i) Complainant has operated since 1983 (including, it seems, to have used the mark from January 17, 1983 according to the copy of U.S. uncontestable service mark registration 1549618 in Complaint Exhibit #1); (ii) Respondent is a franchisee of Complainant, by a 1988 franchise agreement evidenced by the copy of the agreement documents that are Complaint Exhibit #4; (iii) Respondent has registered and is using said domain name; (iv) since becoming aware of Respondent's registration and use of said domain name, Complainant has steadfastly objected thereto (such as by letter, a copy of one of which dated August 12, 2002 is from Complainant's lawyer to Respondent owner Mr. David Blair and is Complaint Exhibit #5); and (v) neither by said franchise agreement, nor otherwise, does Respondent have a privilege to have registered, or have a privilege to use, said domain name.

 

Third, Complainant basically contends by way of five points that Respondent's registration and use of <matchmakerinternational.com> are in bad faith in that (i) Complainant has franchisees located in various states across and throughout the United States and has a web site comprising <matchmaker-international>; (ii) Respondent has registered, and is using, the domain name at issue; (iii) said use of the domain name at issue establishes a link to Respondent's home page which, by outlining Respondent's three franchise locations, is intentionally used by Respondent; (iv) said registration and use of the domain name at issue is done only for the benefit of Respondent and not for any of the other franchisees or for the franchise system as a whole, prevents Complainant from directing inquiries to Complainant's local franchisees, and attempts to attract customers to Respondent's own location; and (v) said registration and use is primarily for the purpose of disrupting Complainant's business (both directly and in the sense of disrupting the other franchisees) and to intentionally and misleadingly attract consumers, since Respondent owner Mr. David Blair knew of and ignored Respondent's duties (corresponding to the absences of privilege referred to in the immediately preceding paragraph) to not register and to not use the domain name, and since he repeatedly refused demands and communications to him that Respondent transfer the domain name to Complainant (which include a copy of a letter dated August 12, 2002 from Complainant's lawyer to Respondent owner Mr. David Blair, and which is Complaint Exhibit #5). 

 

B. Respondent

Respondent makes three main contentions.

 

First, in response to Complainant's first main set of contentions, Respondent basically contends that the domain name at issue is not identical to the marks that are the subjects of Complainant's two mark registrations, in that each of the mark registrations evidenced by Complaint Exhibit #1 includes a disclaimer of the word MATCHMAKER apart from the mark as shown, as highlighted in Response Exhibit #2.

 

Second, in response to Complainant's second main set of contentions, Respondent basically contends that (in view of the franchise agreement document copy that is Complaint Exhibit #4, and a copy of a declaration from Mr. David Blair which is Response Exhibit #1) Respondent has rights or legitimate interests in respect of the domain name at issue in that, by or under said franchise agreement, Respondent has a privilege to have registered, and has a privilege to use, said domain name.

 

Third, Respondent basically contends that Respondent has registered said domain name, and is using said domain name, but that (in view of the exhibits, and contended privileges, referred to in the immediately preceding paragraph hereof) such registration and use is not in bath faith.

 

FINDINGS

The Panel finds

(i)         the domain name at issue <matchmakerinternational.com> is registered to Respondent; there are U.S. uncontestable service mark registration 1549618 and Canadian trademark registration TMA457626 each as to MATCHMAKER INTERNATIONAL with a design, and in which Complainant has rights; and the domain name at issue is identical thereto;

(ii)        Respondent has no rights or legitimate interests in respect of the domain name at issue; and

(iii)       the domain name at issue has been registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i)                  the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)                the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)              the domain name has been registered and is being used in bad faith.

 

In view especially of Rule 15(a), the Panel notes four rules and principles of law that it especially deems applicable to ascertaining whether each of those three elements has been proven. First, that

Both [dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By judicial admission (what is not disputed); 2. By judicial notice, or knowledge (what is known or easily knowable); 3. By judicial perception (what is ascertained directly through the senses; cf. "real evidence"); 4. By judicial inference (what is ascertained by reasoning from facts already ascertained by one or more of the four methods here outlined).[1]

Second, especially as to mode "3", that Rule 10(d) provides that "The Panel shall determine the admissibility, relevance, materiality and weight of the evidence." Third, as to construing and applying Rule 10(d), especially as to whether mode "1" rather than mode "3" applies: a complainant’s pleading of fact that is not disputed (or, phrased differently, not "put in issue") by a respondent against whom it is contended, is an admission by that respondent,[2] so evidence tendered as being rationally probative of (i.e. as being "relevant to") establishing that fact becomes immaterial, and hence inadmissible, as to establishing that fact.[3] Fourth, as to whether mode "2" rather than either of mode "1" or mode"3" applies, a canvassing of law and commentary shows that 

It was not desirable, nor indeed possible, to foreclose the trier's use of background information but should the matter noticed be in the forefront of the controversy, should the fact be determinative, the law protected the adversary by insisting that the matter be so commonly known, and hence indisputable, that its notice could not prejudice the opponent.[4]

and that "The party who has the burden of proof on the issue may have to call on the trier to judicially notice the fact when it comes time to analyze the question."[5]

 

Identical or Confusingly Similar

As for Policy paragraph 4(a)(i), Respondent's contention basically does not take issue with the first three of Complainant's four contentions. Those three contentions are therefore admitted by Respondent, and on this topic Complaint Exhibits #2 and #3 are immaterial and therefore inadmissible, but Complaint Exhibit #1 and Response Exhibit #2 are material evidence. As well, Complaint Exhibit #1 and Response Exhibit #2 appear to be relevant and admissible, and to be entirely consistent with one another and to evidence what they purport to evidence: Complainant owns U.S. uncontestable service mark registration 1549618 dated July 25, 1989 and Canadian trademark registration TMA457626 dated May 24, 1996 (each as to MATCHMAKER INTERNATIONAL with a heart shape as part of each "a" in "MatchMaker," in association with personal dating services, namely, arranging dates for others) and each of the mark registrations evidenced by Complaint Exhibit #1 includes a disclaimer of the word MATCHMAKER apart from the mark as shown, as highlighted in Response Exhibit #2. As a result, the only real issue under Policy paragraph 4(a)(i) is the meaning of the word "identical" in that paragraph. 

 

To resolve that issue, the Panel notes that even if a service mark or trademark is words with a design, a domain name can still be identical thereto. See, e.g., Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, 13 April 2001, which includes that

graphic elements, such as the Sweeps design, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity. See EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036, section 6(b)(i) (finding that the domain name was identical to the trademark where the text of the name was identical and only the graphic elements which cannot be reproduced in the domain name were left out) 

(underlining added) and Park Place Entertainment Corporation v. Mike Gorman,

WIPO Case No. D2000-0699, 5 September 2000. Moreover, in Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) it was found that <hannoverre.com> was identical to HANNOVER RE; so too in this case: the domain name at issue is identical to the two registered marks "as spaces are impermissible in domain names and a generic top-level domain such as '.com' or '.net' is required in domain names."

 

In view of the two immediately preceding paragraphs, the Panel finds that Policy paragraph 4(a)(i) is proven: the domain name at issue <matchmakerinternational.com> is registered to Respondent, there are U.S. uncontestable service mark registration 1549618 and Canadian trademark registration TMA457626 each as to MATCHMAKER INTERNATIONAL with a design, and in which Complainant has rights, and said domain name is identical thereto.

 

Rights or Legitimate Interests

 

INTRODUCTORY AND EVIDENTIARY MATTERS

 

As for Policy paragraph 4(a)(ii), Respondent's contention basically does not take issue with the first four of Complainant's five contentions. Those four contentions are therefore admitted by Respondent, and on this topic the basic facts of the copy of the franchise agreement document are not in issue though the legal relations (i.e. whether as a result of those basic facts there are Policy paragraph 4(a)(ii) "rights and legitimate interests in respect of the domain name") most certainly are in issue. The Parties' contentions therefore result in the copy of the franchise agreement document, as well as the April 9, 2003 declaration of Respondent owner Mr. David Blair and Complainant's lawyer's August 12, 2002 letter to him, all being material evidence.

 

Even conflicting evidence is no bar to resolution of disputes that are submitted to a mandatory administrative proceeding under the Policy; see,e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO Jan. 29, 2001) citing both Electronic Commerce Media, Inc. v. Taos Mountain, FA 95344  (Nat. Arb. Forum Oct. 11, 2000) and Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). The Panel therefore has the task of determining the relevance and admissibility of each of Complaint Exhibits #4 and #5, and Response Exhibit #1, and, if they are admissible, the weight of each of them.

 

The copy of the franchise agreement document is clearly relevant on this topic: it especially appears to potentially provide facts which, when construed in view of applicable law, result in Complainant's contended absence of Respondent privileges or Respondent's contended presence of Respondent privileges, and in any event each Party's submission basically points to it. On the other hand, on this topic Mr. Blair's declaration appears to merely state, in paragraphs 1 through 3, various contentions that Respondent has such privileges and has behaved within the scope of those privileges. His declaration therefore does not appear to be relevant on this topic, for how can such declarations by him be rationally probative of the presence of such privileges and of such behavior, rather than merely being rationally probative of, for example, his view that such privileges exist and his view that Respondent's behavior was within the scope of those privileges? He apparently is not a party to the franchise agreement; nor is there any indication that he was involved in creating all or any aspect of the franchise agreement; even in either of those events, his evidence would at best be subjective evidence of what the parties to that agreement agreed. The Panel is willing, however, to consider his declaration as relevant on this topic. Similar considerations apply to the letter as to the declaration, and the Panel is, likewise, willing to consider the letter as relevant on this topic.   

 

The copy of the franchise agreement document clearly is admissible. Aside from the relevancy concerns expressed in the immediately preceding paragraph hereof, Mr. Blair's declaration and the letter also appear to be admissible.

 

As for weight, the October 1, 1988 franchise agreement document was made well before the dispute arose, and it is clearly to be accorded substantial weight on this topic, as needs be set out in subsequent paragraphs hereof due to the rather extensive nature of that document and the Parties submissions thereon. In contrast, Mr. Blair's approximately one-page, four-paragraph, April 9, 2002 declaration, though expressly stated to be "based on [his] own personal knowledge" as vice-president of Respondent, is also expressly stated as being submitted (and, it would seem, was made) in response to the Complaint. Moreover, though it is expressly stated as being an "affidavit" and though, in its closing line, immediately before what appears to be his signature, he apparently "certif[ies]" that the statements in the declaration are true, there is no indication that it is an affidavit or statutory declaration. Similar considerations apply to the approximately one-page letter as to the declaration. Therefore, it appears that for the Panel to ascertain whether Respondent has Policy paragraph 4(a)(ii) "rights or legitimate interests," the Panel should look to the franchise agreement document and to what are contended to be or are actually applicable decisions, and should give lesser weight to the declaration and the letter.

 

THE FRANCHISE AGREEMENT

 

Complainant

Complainant cautions that the franchise agreement document "is mute as to the use of the internet and domain name rights because the web was in its infancy at the time of the original agreement". However, Complainant then basically points to provisions of the document that Complainant contends created some actual duties and some potential privileges (as part of what are sometimes referred to as conditional or restricted or limited licenses) regarding mark use, within both the then existing state of technology as well as the present state of technology: sections 1.04, 1.05, 1.07, 1.08, 7.06, and 7.12.

 

Section 1.04 includes that the mark licensed by that agreement (which mark appears to have become the subject of Complainant's U.S. uncontestable service mark registration 1549618) is "the exclusive property of [Complainant], and all use by [Respondent] shall inure to the benefit of [Complainant]" as well as that "No right, title nor interest in or to [that mark] is granted, nor shall any such right, title, or interest at any time inure to [Respondent] other than the right to use [the mark] pursuant to the provisions of this Agreement." A question then arises: what legal interests of Respondent are there to use the mark pursuant to the provisions of the franchise agreement?

 

Section 1.05 provides some of the answer to that question, first, by expressly excluding from those interests, Respondent privileges to "directly [or] indirectly contest or aid in contesting the validity or ownership of [the mark]." Instead, in that section the agreement document includes the expression "shall not" and thereby expressly replaces such privileges by duties to not behave in that way. (A question then arises: does Respondent's registration and use of the mark as a domain name indirectly aid in contesting the validity or ownership of the mark? It appears to provide an opportunity for a third party to do so and although there is potentially such a third party there is no evidence in this proceeding that there is actually such a third party at present.) Section 1.05 continues to answer the section 1.04 question by providing that "[Respondent] agrees not to interfere with, in any manner, nor attempt to prohibit the use of [the mark] by any other existing or future owner/franchisee or other licensee of [Complainant] in any territory except [Respondent's] exclusive territory" (emphasis added), which territory is defined, by schedule to that agreement, as being some listed counties of each of Indiana, Illinois, Kentucky, Tennessee, and Missouri. Section 1.05 is clear: whatever privileges Respondent might have had (in relation to Complainant) to interfere with or prohibit the use of the mark by such persons in such places, those privileges were replaced by actual duties (to Complainant) that Respondent not behave that way. In that regard, the Panel notes that domain name registrations have global effect and are exclusionary or interfering or prohibitory in that if a person has a domain name registration all other persons are excluded from it or interfered with or prohibited as to the use of it, such that if the domain name includes a mark then those other persons are excluded from or interfered with as to or prohibited as to at least that use of that mark. Respondent has a duty to Complainant, by the franchise agreement, to not behave that way, but by registering the domain name <matchmakerinternational.com> Respondent has behaved contrary to that duty. Such a duty is not a "right or legitimate interest" within the meaning of that expression as it occurs in Policy paragraph 4(a)(ii); nor are Respondent’s legal interests regarding the domain name registration, per se, such interests.

 

Section 1.07 also provides some of the answer to the question of what legal interests Respondent has to use the mark pursuant to the provisions of the franchise agreement, by including four points. First, that "[Respondent] shall prominently display and maintain in first class condition, signs, bearing [the mark] of such nature, form, color, number, location, illumination and size as may reasonably be required by [Complainant]". Second, that "[Respondent] shall use [the mark] licensed by this Agreement only in association with the letters 'SM', or other such symbol as [Complainant] may designate wherever [the mark] may be used, such as in signs, advertising or promotional materials, price lists and the like." Third, that "[Respondent] shall not use his own name or any other name, word or symbol not previously approved in writing by [Complainant] in association with [the mark]." Fourth, that "Respondent] shall use [the mark] only in association with the preparation, sale, or distribution of goods and/or services specifically approved in advance by [Complainant] and for no other purpose." In view of those four points, section 1.07 is clear that it is not intended to confer a privilege to use of the mark as part of a domain name (rather than on a sign, and the like, whereon the letters "SM" would also be required to appear--in any event, domain names are not analogous to signs[6]). Moreover, even if section 1.07 were intended to do so, the privilege would be potential rather than actual in that for such use to be permitted by section 1.07 there would have to have been prior approval, to Respondent, in writing by Complainant. In this proceeding there is no indication of such prior approval. Instead, contrary to section 1.07, Respondent has registered as a domain name, and is using as a domain name, Complainant's mark in association with the name or word or symbol ".com" in the domain name <matchmakerinternational.com>. Respondent's section 1.07 legal interests to use the mark pursuant to the provisions of the franchise agreement are clearly expressed as potential privileges, bounded by actual duties; and it is equally clear that Respondent has behaved contrary to those duties and that by doing so Respondent has not thereby obtained "rights or legitimate interests in respect of the domain name" within the meaning of that expression as it occurs in Policy paragraph 4(a)(ii).

 

Section 1.08, also, provides some of the answer to the question of what legal interests Respondent has to use the mark pursuant to the provisions of the franchise agreement, by including that goodwill associated with use of the mark shall inure to Complainant's benefit as well as that "[Respondent] acknowledges that valuable goodwill is attached to [the mark] … and that [Respondent] will use the same only in the manner prescribed by [Complainant]". By section 1.08, if Respondent's potential privilege to use the mark is to become actual there must be manner of use conditions prescribed by Complainant, yet there is basically no evidence in this proceeding that such prescription includes that Respondent may incorporate the mark into a domain name <matchmakerinternational.com> or that Respondent may use that domain name. Contrary to the franchise agreement, Respondent has done the former and is doing the latter, but, in view of the part of section 1.08 as to the benefit of such use inuring to Complainant, by that registration and use Respondent does not thereby acquire Policy paragraph 4(a)(ii) "rights or legitimate interests" in respect of the domain name.

 

Section 7.06 provides some of the answer to the question of what legal interests Respondent has to use the mark pursuant to the provisions of the franchise agreement, by including that "If [Respondent] desires to use any advertising or promotional material that was not obtained by or through [Complainant], [Respondent] must submit any such proposed material to [Complainant] prior to their use and shall not use same until [Complainant] has approved the same in writing." From the above discussion of section 1.07 (especially as to the franchise agreement requirement for using the letters "SM") the franchise agreement's occurrences of the expression "advertising or promotional material" clearly does not include domain names. Even if it did include domain names then, to comply with section 1.07, the domain name would have had to include the service mark designation "SM," which the domain name at issue does not include. Furthermore, section 7.06 makes clear that, even if the domain name <matchmakerinternational.com> is advertising or promotional material, Respondent's adding ".com" to Complainant's mark and then registering the result as a domain name makes both the character string and the registration something that, as stated in section 7.06 "was not obtained by or through [Complainant]," and therefore resulted in Respondent having a duty to not use the character string (e.g. to obtain a domain name registration) and to not use the domain name registration (i) unless, as stated in section 7.06, Respondent had submitted "any such proposed material to [Complainant] prior to their use"; and (ii) until, as stated in section 7.06, "Complainant] has approved the same in writing." There is no evidence in this proceeding that Respondent had submitted an actual (or, more appropriately, a prospective) domain name to Complainant prior to any Respondent use of the character string or of the registration, let alone any evidence that in writing Complainant has approved either the character string or the domain name registration. The franchise agreement is therefore basically persuasive evidence that Respondent had, and has, an actual duty to not obtain domain name registration of <matchmakerinternational.com>, and to not use that expression as a domain name, and that Respondent did not, and does not, have a privilege to behave to the contrary. That duty is not within the meaning of the Policy paragraph 4(a)(ii) expression "rights or legitimate interests in respect of the domain name."

 

Section 7.12(b) also provides some of the answer to the question of what legal interests Respondent has to use the mark pursuant to the provisions of the franchise agreement, by being as follows, with emphasis added:

[Respondent] is prohibited from purchasing or otherwise acquiring and utilizing telephone numbers issued beyond the geographic limitations of the purchased operating territory of [Respondent], to include but not be limited [to] such telephone access features as are commonly known as "800" system numbers and "call forwarding"; moreover, [Respondent] is prohibited from advertising in any and all commercial telephone listings, to include those listings as are commonly known as "Yellow Pages" and "White Pages", where such listings service geographic areas other than the purchased operating territory of [Respondent]; it is the intention of the parties hereto that the business operations of [Respondent] and all public business advertising will be limited to servicing the purchased operating territory as is herein defined in order that the operations of [Respondent] not encroach upon the operating territory of any other MatchMaker Owner or facility. [Complainant] may, from time-to-time determine that a waiver of this provision in specific instances would be in the best interests of the MatchMaker System; such waiver must be in writing and the granting of a waiver shall apply but to a specific instance and can[not] be relied upon as any assurance to [Respondent] that any subsequent waiver will be similarly granted; moreover, a specific waiver shall not be deemed to be a waiver of this prohibition generally.  

Given that domain name registrations have global effect, and that the franchise agreement document defines Respondent's territory as some listed counties of each of Indiana, Illinois, Kentucky, Tennessee, and Missouri, Respondent had, and still has, a duty to not obtain and to not use the domain name registration <matchmakerinternational.com>, unless at the time of doing so there is a section 7.12(b) waiver; in this proceeding, there is basically no evidence of there being, or of there ever having been, such a waiver. Respondent's section 7.12(b) duty is not within the meaning of the Policy paragraph 4(a)(ii) expression "rights or legitimate interests in respect of the domain name."

 

Respondent

In contrast to the immediately preceding discussion of sections 1.04, 1.05, 1.07, 1.08, 7.06, and 7.12, Respondent starts off basically by pointing to sections 1.03 and 1.07. Respondent then says that since the wording of section 1.03 includes that "Respondent 'shall have the right to use and display' [the mark]" and since the wording of section 1.07 includes that "[the mark is] 'licensed by this Agreement,'" that Respondent therefore has Policy paragraph 4(a)(ii) "rights or legitimate interests in respect of the domain name."

 

Respondent's submission as to sections 1.03 and 1.07 is wrong, for two reasons. First, section 1.03 also includes that the license exists only "So long as [Respondent] is not in breach of any of the provisions of this Agreement"; the above discussion of sections 1.04, 1.05, 1.07, 1.08, 7.06, and 7.12 indicates Respondent is clearly in breach of provisions of the franchise agreement, so Respondent's behavior is not protected by any Respondent privilege conferred by license but is instead contrary to Respondent's duties. Second, Respondent's reference to the section 1.07 occurrence of "licensed by this Agreement" ignores or oversimplifies an aspect of franchises and other licenses generally and of this franchise agreement and franchise particularly: a license can have, and this license does have, scope. Trademark and service mark owners have a number of rights and powers, including rights to exclude, powers to sue, and powers as to creating licenses. A license is permission to do what would otherwise be unlawful to do, and the power to create a license can be unused, such as in the case where no license is granted; or used to the maximum, such as in the case where the license is "unrestricted" or "unlimited"; or used in an intermediate way, such as in the case where the license is "restricted" or "limited" and that the license is what is commonly called a "conditional license". The franchise agreement document evidences a conditional license of the service mark that is now the subject of Complainant's U.S. service mark registration, and the above discussion of sections 1.04, 1.05, 1.07, 1.08, 7.06, and 7.12 indicates that because Respondent's behavior of registering and using the domain name <matchmakerinternational.com> is clearly outside the scope of the license, Respondent clearly does not have Policy paragraph 4(a)(ii) "rights or legitimate interests in respect of the domain name." 

 

DECISIONS CONTENDED TO BE, OR THAT ACTUALLY ARE, APPLICABLE

 

Respondent nonetheless refers to other administrative panel decisions under the Policy, ten in all, basically as if they are categorical instances of franchisees or like-situated persons always having a privilege to have registered, and a privilege to use, disputed domain names. However, it appears to the Panel that each of those decisions depended on further facts not mentioned by Respondent and especially upon the facts regarding agreements such as license agreements that were involved.

 

Not surprisingly then, there are administrative panel decisions under the Policy that are opposite in effect to the apparently over-generalized propositions contended for by Respondent. For example, Allen-Edmonds Shoe Corporation v. Takin’ Care of Business, WIPO Case No. D2002-0799, 10 October 2002, includes, with underlining added herein, that

even where a reseller is an authorized reseller, without a specific agreement between the parties, the reseller does not have the right to use the licensor’s trademark as a domain name. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (February 26, 2001); 2 T.J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 18:52 (4th Ed. 2000) ("licensee’s use [of a mark] inures to the benefit of the licensor-owner of the mark and the licensee acquires no ownership rights in the mark itself."). Thus, even if Respondent is acting on behalf of an "authorized" dealer (indeed, even if Respondent were itself an authorized dealer), its use of Complainant’s mark would not be legitimate absent a specific agreement between Complainant and Respondent to the contrary. There is no evidence of such an agreement here. The Panel finds that Complainant has shown that Respondent has no legitimate interest in the domain name.

Similarly, see Heel Quik! Inc. v. Goldman, FA 92527 (Nat. Arb. Forum March 1, 2000) holding that use of a domain name was subject to the terms of a license agreement and that any use in violation of the agreement would not be bona fide use within the meaning of the Policy.

 

The Panel also notes decisions such as Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) which includes that when, as in this case, "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue" (emphasis in original). To similar effect see, e.g., Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) and Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002). Benstein is especially of note for it includes, as in this case, that a respondent’s "unsupported, self-serving allegations alone are insufficient to establish that Respondent has rights or legitimate interests in respect to the domain name at issue."

 

SUMMARY

 

In view of all of the above, the Panel finds that the burden of production shifted to Respondent but that on this topic Respondent has not met it. Accordingly, the Panel finds Respondent has "no rights or legitimate interests in respect of the domain name" within the meaning of that expression as it occurs in Policy paragraph 4(a)(ii).

 

In view of the immediately preceding paragraph hereof, the Panel finds that Policy paragraph 4(a)(ii) is proven.

 

Registration and Use in Bad Faith

As for Policy paragraph 4(a)(iii), Respondent's contention basically does not take issue with the first four of Complainant's five contentions. Those first four contentions are therefore admitted by Respondent, and on this topic the basic facts of Respondent's having registered the domain name <matchmakerinternational.com>, and of using said domain name, are not in issue. However, whether as a result of those basic facts there is Policy paragraph 4(a)(iii) domain name bad-faith registration, and bad-faith use, most certainly is in issue. The Parties' contentions therefore result in the copy of the franchise agreement document, as well as the April 9, 2003 declaration of Respondent owner Mr. David Blair and Complainant's August 12, 2002 letter to him, all being material evidence.

 

The second through fifth paragraphs of the above discussion of evidentiary matters relating to Policy paragraph 4(a)(ii) basically apply once again, not only to the franchise agreement document but also to paragraphs 3 and 4 of Mr. David Blair's declaration and to the August 12, 2003 letter to Respondent from Complainant's lawyer. Once again, the letter has much the same status as the declaration. The relevance, admissibility, and weight of each of those three documents as to Policy paragraph 4(a)(iii) is basically as they were as to Policy paragraph 4(a)(ii).

 

The context in which resolution of the issue occurs also includes Policy paragraph 4(b).

Policy paragraph 4(b) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that

For the purposes of [Policy paragraph] 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

As for each of Policy paragraphs 4(b)(i), 4(b)(ii), and 4(b)(iii), they basically define respective types of bad-faith registration and provide that if any one of such types of registration has been ascertained by a panel, then bad-faith use is in turn evidenced via application of the respective one of those three provisions.

 

As for Policy paragraph 4(b)(iv), it basically defines a type of bad-faith use and provides that if such type of use is ascertained by a panel, then bad-faith registration is in turn evidenced via application of that provision.

 

In this proceeding, Policy paragraphs 4(b)(i) and 4(b)(ii) appear to not be contended for (since there appear to not be contentions amounting to being as to "valuable consideration in excess of [Respondent's] documented out-of-pocket costs" or as to "[Respondent having] engaged in a pattern of such conduct") but Policy paragraphs 4(b)(iii) and 4(b)(iv) do appear to be contended for by Complainant.

 

In response, Respondent basically repeats various of Respondent's Policy paragraph 4(a)(ii) contentions, but they are as inapplicable on this topic as they were to Policy paragraph 4(a)(ii).

 

As for each of Policy paragraph 4(b)(iii) and 4(b)(iv), the above discussion of franchise agreement sections 1.03, 1.04, 1.05, 1.07, 1.08, 7.06, and 7.12 indicates the circumstances cannot be other than within each of those Policy paragraph 4(b) provisions.

 

Furthermore, there is the matter of initial interest confusion. Entry of Complainant's mark will result in visits not only to Complainant's web site (referred to in uncontested Complaint contention "(i)" of Complainant's third main set of contentions) but also to Respondent's website which resolves through the domain name at issue. See, e.g., Madonna Ciccone p/k/a Madonna v. Dan Parisi and 'Madonna.com,'WIPO Case No. D2000-0847, 12 October 2000, which is extensively cited and applied for the proposition that even

Respondent's use of a disclaimer on its web site is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet Users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent's actions.  Such confusion is a basis for finding a violation of Complainant's rights.

Similarly see, e.g., The Prudential Insurance Company of America v. Prudential Mortgage Loans, FA0201000103880, 20 March 2002, which includes that the "fact that the Internet user ultimately discovers that a site is not that of Complainant, or that Respondent disclaims any association with Complainant, does not cure the fault."

 

In view of the immediately preceding ten paragraphs hereof, the Panel finds that Policy paragraph 4(a)(iii) is proven.

 

DECISION

All three elements required under the ICANN Policy having been established, the Panel concludes that the requested relief shall be GRANTED.

 

Accordingly, it is Ordered that the <matchmakerinternational.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Rodney C. Kyle, Panel Chairperson
Dated: May 9, 2003

 

 

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DISSENTING OPINION

 

I respectfully dissent.

 

While the disputed domain name is identical to Complainant’s mark, I do not believe that Complainant has met its burden of proving either of the remaining elements required under paragraph 4(a) of the UDRP.

 

Respondent is using the disputed domain name <matchmakerinternational.com> to promote its business, a franchise of MatchMaker International that does business under the name MatchMaker International.  Respondent is using the domain name in connection with a bona fide offering of goods and services, and Respondent’s business appears to be commonly known by the name MatchMaker International.  Respondent therefore fulfills two of the three circumstances set forth in paragraph 4(c) of the UDRP, any one of which is sufficient to demonstrate rights or legitimate interests to the disputed domain name.

 

It is possible, as Complainant contends, that Respondent’s registration or use of the disputed domain name, may constitute a breach of the 1988 franchise agreement.[7]  However, even if that were so, it would not negate either of the 4(c) circumstances present here.  I would find that Complainant has failed to meet its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

There is no indication that Respondent registered or used the domain name for any purpose other than to promote its MatchMaker International franchise.  Even if the franchise agreement ultimately is interpreted to prohibit such use, Respondent may well have reasonably believed otherwise, at least at the time that it registered the domain name.[8]

 

If Respondent registered the domain name for legitimate purposes, or if it reasonably believed at the time of registration that those purposes were legitimate, then the registration was not in bad faith.  Under the circumstances, I do not view Respondent's belief as so unreasonable that it warrants a finding of bad faith.  Accordingly, I would hold that Complainant has failed to discharge its burden of proving that the domain name has been registered and is being used in bad faith.  Cf. Condotels International, Inc. v. Surfside Rental Management, Inc., No. FA97127 (NAF June 5, 2001) (declining to find bad faith based upon alleged breach of agreement between franchisor and former franchisee).

 

I would dismiss the complaint for the foregoing reasons.

 

 

Professor David Sorkin, Panelist