Tech International, Inc. d/b/a Health
Tech v. Clear Choice Of New York
Claim Number: FA0411000372828
PARTIES
Complainant
is Tech International, Inc. d/b/a Health Tech (“Complainant”),
1095 Windward Ridge Parkway, Ste 150, Alpharetta, GA 30005. Respondent is Clear Choice Of New York (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ
08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <clearchoice-affiliates-secure-shopping-cart.biz>,
registered with Go Daddy Software, Inc.
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.
Richard
Hill as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
29, 2004; the National Arbitration Forum received a hard copy of the Complaint
on November 29, 2004.
On
November 29, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <clearchoice-affiliates-secure-shopping-cart.biz>
is registered with Go Daddy Software, Inc. and that the Respondent is the
current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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
December 8, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 28, 2004 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@clearchoice-affiliates-secure-shopping-cart.biz
by e-mail.
A
timely Response was received and determined to be complete on January 7, 2005.
On January 13, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
is the sole owner of the “CLEAR CHOICE” trademark, United States Registration
Numbers 2,264,493 and 2,483,055 and Canadian Registration Number 548,063. The goods with which the “CLEAR CHOICE” mark
is used relate to nutritional and dietary supplements in the form of
carbohydrate shakes, herbal teas, herbal capsules and tablets, liquid additives,
and beverages.
Complainant
is the exclusive distributor for a line of CLEAR CHOICE products that are sold
to online retailers and hundreds of stores in the United States and
Canada. In addition, Complainant
markets and sells its CLEAR CHOICE products directly to individuals throughout
the world. Complainant has been in
business since 1993 and has sold over one million CLEAR CHOICE products since
that time.
Complainant
selectively grants to qualified companies and individuals a limited license to
use the CLEAR CHOICE mark, in addition to other licensed marks and copyrights,
used in association with the operation of Authorized Dealer (hereinafter
referred to as “Agent”) websites.
Respondent was an Agent for Complainant and, as such, was granted a limited
license to use Complainant’s intellectual property on its websites pursuant to
an Internet Retailer Agreement (the “Agreement”) entered into on February 27,
2003. The Agreement was breached on or before October 1, 2004 and the Agreement
was terminated by Complainant for cause and Respondent was notified on November
2, 2004.
In
direct violation of its specific contractual obligations under the Agreement,
Respondent has appropriated for its own use the disputed domain name <clearchoice-affiliates-secure-shopping-cart.biz>,
which contains the identical trademark owned by Complainant.
Respondent
has used, and is continuing to use, the domain name in connection with an
offering of Complainant’s goods.
However, such use has been a restricted use subject to the terms of the
Agreement. Any use in violation of the
Agreement cannot be a bona fide use within the meaning of the Intellectual
Property provision.
Respondent’s
actions with respect to the continued use of the domain name after
Complainant’s termination of the Agreement for cause evidence bad faith. Respondent has been promoting and selling
competing products using the domain name containing the CLEAR CHOICE mark,
thereby disrupting the business of Complainant. Although Respondent is no longer an Agent of Complainant,
Respondent has persisted in using the trademarks of Complainant for commercial
gain, to misleadingly divert consumers, and to tarnish the trademark at
issue. In attempting to attract, for
commercial gain, customers by creating a likelihood of confusion with
Complainant's mark as to the source, sponsorship, affiliation, endorsement of
the websites, Respondent has acted in bad faith.
B.
Respondent
Respondent
denies the factual allegations of the Complaint. Respondent has operated as Clear Choice of New York since
December 1998 with Complainant’s knowledge and approval. Respondent has used the disputed domain
name, <clearchoice-affiliates-secure-shopping-cart.biz>, at all
times in connection with the bona fide offering of goods and services including
the sale of Complainant’s products with Complainant’s full knowledge and
awareness. Respondent did not register
or use the disputed domain name in bad faith.
Accordingly, there is no basis for transferring the disputed domain name
to Complainant.
Nevertheless,
the disputed domain name is not critical to Respondent’s business and in the
interest of saving the cost involved in defending its rights to the disputed
domain name, Respondent stipulates for the Panel to transfer the disputed
domain name to Complainant. Where a
Respondent stipulates to transfer a domain name to a Complainant, the panel
need simply transfer the domain name. See
Boehringer Ingelheim Int’l GmbH v. Modern Ltd. - Cayman Web Dev., FA 133625
(Nat. Arb. Forum Jan. 9, 2003).
FINDINGS
The panel will not make any findings of
fact, for the reasons explained below.
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.”
In this case, the parties have both asked
for the domain name to be transferred to Complainant. In accordance with a general legal principle governing
arbitrations as well as national court proceedings, this Panel holds that it
cannot act nec ultra petita nec infra
petita, that is, that it cannot issue a decision that would be either less
than requested, nor more than requested by the parties. Since the requests of the parties in this
case are identical, the Panel has no scope to do anything other than to
recognize the common request, and it has no mandate to make findings of fact or
of compliance (or not) with the Policy.
The same conclusion was reached by the
Panel in Boehringer Ingelheim Int’l GmbH v. Modern Ltd. - Cayman Web Dev.,
FA 133625 (Nat. Arb. Forum Jan.
9, 2003); in Alstyle Apparel/Active Wear v. Schwab, FA 170616 (Nat.
Arb. Forum Sept. 5, 2003); and in Malev Hungarian Airlines, Ltd. v. Vertical
Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004).
DECISION
Given
the common request of the parties, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clearchoice-affiliates-secure-shopping-cart.biz>
domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 27, 2005
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