Creative Paradox LLC v. Talk America
a/k/a Vital Basics, Inc.
Claim Number: FA0304000155175
PARTIES
Complainant
is Creative Paradox LLC, Henderson,
NV (“Complainant”) represented by Aaron
D. Julien, of Perkins, Thompson, Hinckley & Keddy,
P.A. Respondent is Talk America a/k/a Vital Basics, Inc.,
Portland, ME (“Respondent”) represented by Peter
E. Nussbaum, of Wolff & Samson PC.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <proteinpower.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned, Daniel B. Banks, Jr., certifies that he acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Co-panelists Linda M. Byrne and David H. Bernstein have similarly
confirmed that they have acted independently and impartially and have no known
conflict.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 21, 2003; the Forum received a hard copy of the
Complaint on April 21, 2003.
On
April 23, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <proteinpower.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, Inc. 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
May 2, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 22,
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@proteinpower.com by e-mail.
A
timely Response was received and determined to be complete on May 22, 2003.
Complainant’s
Additional Submission was received and determined to be timely on May 27, 2003.
Respondent’s
Additional Submission was received and determined to be timely on May 31, 2003.
On June 9, 2003, pursuant to Respondent’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Linda M. Byrne,
David H. Bernstein and Daniel B. Banks, Jr., as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant:
Complainants
Dr. Michael R. Eades and Dr. Mary Dan Eades, individually and through their
company, Creative Paradox, LLC, market health care advice and products in the
area of weight loss, weight loss programs, food and food supplements for proper
dietary control. They are world-famous
experts on diet and dietary supplements and, since 1996, have marketed numerous
products and services under the "Protein Power" mark.
Complainants
have never attempted to formally register their rights in the "Protein
Power" mark however they have continuously and exclusively used the mark
in connection with their diet programs and dietary supplements for
approximately seven years. Such use of
the mark in connection with their weight loss and diet products clearly
establishes their trademark rights in the "Protein Power" mark.
Complainants
licensed the "Protein Power" mark to Respondent from 1997 to
2002. Complainants and Respondent
sought to market existing and new products under the "Protein Power"
mark and executed a certain Marketing Agreement, dated April 7, 1997. In that Marketing Agreement, Complainants
licensed the mark to Respondent, gave Respondent all rights under the copyright
to the products that were created pursuant to the agreement but retained all
rights in the "Protein Power" system, including all trademark
rights.
In
1999, Respondent filed for bankruptcy.
As a result, Complainants and Respondent agreed to certain revisions of
the Marketing Agreement and executed a Settlement Agreement dated August 2,
2000. Under the terms of the Settlement
Agreement, in the event Complainants terminate the 1997 Marketing Agreement for
any default by Respondent, all rights to the "Protein Power" mark,
and the <proteinpower.com> domain name registration immediately
revert to the Complainants. On August
6, 2002, Complainants terminated the 1997 Marketing Agreement and the
Settlement Agreement. In addition, as
of August 2002, Respondent ceased payment of all royalties under the 1997
Marketing Agreement and the Settlement Agreement. Complainants currently market goods under the "Protein
Power" mark in the world wide web at <eatprotein.com> and through
public appearances, bookstores, supermarkets and pharmacies throughout the
world.
Respondent
does not have any rights under either state or federal trademark law in the
"Protein Power" mark and no longer has a legitimate interest in the <proteinpower.com>
domain name. Respondent's trademark license
was terminated on August 2, 2002.
Respondent
does not currently use the mark in connection with any goods and has ceased use
of the mark as an identifier of any particular goods or services. As a result, Respondent would have no
cognizable interest in the mark since any such rights would be considered
abandoned. The right of Respondent to
use the mark did not survive termination of the license.
The
domain name was registered and is being used in bad faith. Respondent is using the domain name in an
intentional attempt to attract, for commercial gain, Internet users seeking
information of Complainants' products, by creating a likelihood of confusion as
to the source, sponsorship, affiliation, or endorsement of Respondent's
website. Respondent presently sells
cognitive enhancement products under the name "Focus Factor" and
products to boost the immune system under the name "Immune Support".
Respondent's
registration of the <proteinpower.us> domain name, which is not active,
demonstrates a pattern of registration to prevent Complainants from reflecting
its mark in a popular corresponding domain name. Respondent, without Complainants' permission, previously
attempted to register the "Protein Power" mark with the United States
Patent and Trademark Office. The
application was filed as an "intent to use" application, and no
affidavit of use has ever been filed, further indicating lack of any use of the
"Protein Power" mark by Respondent.
B.
Respondent:
In
the Complaint, Complainants ignore three facts that are critical to the outcome
of this arbitration: (1) it was expressly agreed upon between the parties that
Respondent owns the <proteinpower.com> domain name, (2)
Complainants do not own any trademark rights, common law or otherwise, in and
to the PROTEIN POWER mark, and (3) Complainants did not, and could not
"license" trademark rights to Respondent.
Complainants
entered into a Marketing Agreement with Respondent, f'/k/a Talk America, Inc.
("TA) on April 7, 1997, for TA's exclusive, worldwide marketing of
nutrition and weight loss products.
Pursuant to that agreement, it was acknowledged that Complainants had
"written a book entitled Protein Power and in connection
therewith…developed a proprietary system of nutrition and weight loss ([the]
'System')." The Parties agreed to
"develop a new product consisting of audio tapes, video tapes and work
books utilizing the System (the Product)." The Marketing Agreement states that Respondent owns the Product
and has the right to exercise complete and exclusive control over the
same. Respondent's exclusive rights
included, but were not limited to, the right to:
…manufacture[,]
produce, develop, create, package, advertise, promote, market, sell and
otherwise distribute the Product, which TA shall own, in such form and
medium and through whatever means and media now existing or hereafter created,
as TA in its sole judgment may choose, including, without limitation,
television, radio, all print and on-line media, direct mail
solicitation, direct sales, retail sales, credit card syndication and catalogue
sales.
(Marketing Agmt. Para. 1.1 (emphasis
added).)
Nowhere
in the Marketing Agreement do Complainants claim any trademark right in and to
the trademark PROTEIN POWER. Nor does
the Marketing Agreement contain any language, express or implied, that
Complainants were licensing any trademarks or service marks to Respondent. Rather, the Marketing Agreement specifies
that TA is the owner of all intellectual property used in connection with the
Product, with the limited exception of the proprietary elements of the System,
which, as defined, did not include the trademark PROTEIN POWER.
After
entering into the Marketing Agreement, Respondent engaged in extensive
advertising and promotion of the PROTEIN POWER mark as an indicator of source
for the Product. These efforts included
Respondent's registration of the <proteinpower.com> domain name on
October 2, 1997. Respondent filed
several United States trademark applications for the mark PROTEIN POWER or
similar variations thereof, including application serial number 75/566,895 for
the mark PROTEIN POWER filed on October 7, 1998, which was published for
Opposition on April 13, 1999.
Complainants did not oppose registration, nor have they ever objected to
Respondent's filing of the trademark applications.
Following
Respondent's bankruptcy filing, Complainants and Respondent became adversarial
parties and, in settlement of their claims, entered into the Settlement
Agreement of August 2, 2000, whereby the Marketing Agreement was amended in
part. The Settlement Agreement
specifically states that Respondent owns all rights in and to the <proteinpower.com>
domain name and those rights would only be transferred to the Eades if the
Eades terminated the Marketing Agreement as a result of Respondent's failure to
pay royalties. The Marketing Agreement,
which, except as modified by the Settlement Agreement, remained in full force
and effect, states that termination would not negate TA's interest in the
intellectual property rights set forth in the Agreement.
The
Settlement Agreement clearly states that the only trigger for the transfer of
the domain name would be the specific failure of Respondent to pay
royalties. (Settlement Agmt. Para
3(h).) Moreover, if the Marketing Agreement
was not terminated as a result of Respondent's failure to pay royalties, but
rather expired naturally, ownership of "any and all marks" was to
have been "resolved by the parties following expiration of the Marketing
Agreement." (Settlement Agmt. Para.
3(i).)
On
August 6, 2002, Complainants terminated the Marketing Agreement based upon
Respondent's alleged failure to market the Product to Complainant's
satisfaction. The Marketing Agreement
was not terminated for failure to pay royalties. Respondent continued to pay Complainants any and all royalties
due up to and including the date of termination of the Marketing Agreement.
Complainants
have no trademark rights in the term PROTEIN POWER. When the Marketing Agreement was executed in 1997, Complainants'
only use of the term PROTEIN POWER was in connection with the title of the
Eades book. Complainants failed to
assert any trademark rights either in the original Marketing Agreement or in
the Settlement Agreement. Pursuant to
the Marketing Agreement and the Settlement Agreement, Respondent legitimately
owns the domain name during the term thereof.
Complainants
have not demonstrated that the domain name was registered or used in bad faith
since the Agreements between the parties specifically state that Respondent is
the rightful owner of the domain name, which rights survived the termination of
the Agreement. Complainants knew of
Respondent's registration of the domain name in 1997 and did not object.
The
only allegation concerning bad faith registration raised by Complainants
concerns the <proteinpower.us> domain name, which is not the
subject of this proceeding. This
registration evidences that Respondent has not abandoned its rights, but
rather, has continued to seek protection thereof.
The
dispute in this case is beyond the jurisdictional scope of the UDRP. The disputed domain name ownership rights
are based upon the prior business relationship from which both parties claim
rights to the name.
Complainants
are guilty of attempting reverse domain name hijacking by the initiation of
this arbitration because they are "using the Policy in bad faith to
attempt to deprive a registered domain name holder of a domain name." Complainants knew of Respondent's rights and
legitimate interests in the domain name and they know that there is a clear
lack of bad faith registration and use.
C.
Complainant’s Additional Submission:
Complainants'
additional submission does not add anything to the record in this case. It is a restatement and argument of the
original submission.
D.
Respondent’s Additional Submission:
Respondent's
additional submission is also a restatement and argument of the original
response.
FINDINGS
The domain name was not registered in bad
faith.
DISCUSSION
The panel has been advised that Complainants in this
case have filed a lawsuit against
Respondent in the U.S. District Court for the District of Colorado,
Action No. 03-MK-1090b The lawsuit seeks recognition of Complainant's exclusive right to
use of the "Protein Power" mark and recognition of Complainant's
exclusive right to use of the <proteinpower.com> domain name. After
consideration, the panel has decided to proceed with a decision in this case
under the authority of Rule 18(a). BPI
Communications, Inc. and VNU Business Media, Inc. v. Boogie TV LLC, FA105755
(Nat. Arb. Forum April 30, 2002): Panel decided to proceed despite complainant
filing suit in federal court for trademark and service mark infringement.
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 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:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and the domain name has been registered and is being used in bad faith.
(3)
The domain
has been registered and is being used in bad faith.
In this case,
the Panel has determined that the third factor is dispositive. Complainant does not allege in the Complaint
that Respondent registered the Domain Name in bad faith. To the contrary, the only claim regarding bad
faith registration covers the domain name <www.proteinpower.us>, which
domain name is outside of the jurisdiction of this Panel. Morever, Respondent asserts that it
registered the Domain Name with the full knowledge and consent of the
Complainant, and Complainant does not dispute that assertion in its
supplemental submission. The Panel thus
finds that Respondent was authorized to register the disputed domain name and
therefore it could not have registered <www.proteinpower.com> in bad
faith. See Eddy's (Nottingham) Ltd v. Smith, D2000-0789 (WIPO Sept. 7,
2000) (finding no bad faith registration of the domain name where Respondent
registered the domain name in good faith, without objection by Complainant, and
in the interest of promoting Complainant's business); see also The
Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (finding that
Respondent did not register the disputed domain name in bad faith where it
"registered the Domain Name with the full consent and knowledge of
Complainant" and therefore "did not have the requisite bad faith when
he registered the Domain Name, which is an express requirement of the
Policy"); see also Anticybersquatting Consumer Protection Act,
15 U.S.C. §1125 ("[b]ad faith intent shall not be found in any case in which
the court determines that the person believed and had reasonable grounds to
believe that the use of the domain name was a fair use or otherwise
lawful").
Having found
no bad faith registration, it is not necessary for the panel to consider
Complainant's claims of bad faith use or the factually complex issues of
Complainant's claimed trademark rights or Respondent's claimed legitimate
interest.
Given that the
parties are now engaged in litigation over the domain name, the Panel declines to consider Respondent's claim
of attempted reverse domain name hijacking, and instead leaves any further
finding regarding either parties good or bad faith to the courts.
DECISION
Because
Complainant has failed to prove that Respondent registered the domain name in
bad faith, the Panel concludes that relief shall be DENIED.
Daniel B.
Banks, Jr., Panel Chair
David H.
Bernstein
Linda M.
Byrne
Dated:
June 23, 2003
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