National Arbitration Forum

DECISION

International Society for Cellular Therapy v. L. Hache c/o TTL Communications

Claim Number: FA0604000671078

PARTIES

Complainant is International Society for Cellular Therapy (“Complainant”), 570 West 7th Avenue, Suite 402, Vancouver, BC, Canada V5Z 1B3. Respondent is L. Hache c/o TTL Communications (“Respondent”), 3228 Ch. d'Oka, Ste-Marthe-Sur-Le-Lac, Canada, PQ J0N1P0.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <celltherapy.org>, registered with TierraNet Inc. d/b/a DomainDiscover.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Linda M. Byrne as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 3, 2006.

On April 4, 2006, TierraNet Inc. d/b/a DomainDiscover confirmed by e-mail to the National Arbitration Forum that the <celltherapy.org> domain name is registered with TierraNet Inc. d/b/a DomainDiscover and that the Respondent is the current registrant of the name. TierraNet Inc. d/b/a DomainDiscover has verified that Respondent is bound by the TierraNet Inc. d/b/a DomainDiscover 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 April 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 5, 2006 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@celltherapy.org by e-mail.

An electronic copy of the Response was received on May 3, 2006. However, the National Arbitration Forum did not receive a hard copy of the Response by the appropriate deadline. Thus, the National Arbitration Forum does not consider this Response to be in compliance with ICANN Rule #5 (a).

On May 11, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

Neither the Complainant nor the Respondent submitted arguments that specifically applied the relevant Rules for Uniform Dispute Resolution Policy. Therefore, some of each party’s contentions are inferred from the evidence and arguments that were contained in the Complaint and Response.

A. Complainant

Complainant alleges that the disputed domain name <celltherapy.org > is identical to a term used by Complainant, CELLTHERAPY. Complainant submits no evidence as to the status of CELLTHERAPY as a trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the <celltherapy.org > domain name in view of Complainant’s ownership of the domain name.

In addition, Complainant contends that Respondent’s registration and continued use of the <celltherapy.org > domain name is in bad faith. The bad faith is evidenced by the Respondent’s registration of the domain name in its own name, rather than in Complainant’s name. Complainant further argues that Respondent’s bad faith is demonstrated by Respondent’s failure to surrender the domain name when Complainant requested Respondent to do so.

B. Respondent

The Respondent raises the issue that this proceeding centers around a commercial dispute that is outside the scope of ICANN’s Policies. Respondent argues that Complainant has infringed and/or misappropriated its rights, including copyright rights.

Assuming that this case is appropriate for consideration in the context of a UDRP proceeding, the Respondent argues that it has used <celltherapy.org > to facilitate the operation of Complainant’s business and that Complainant never requested to be named as the registrant for the <celltherapy.org> domain name. Respondent also maintains that it has registered and used the <celltherapy.org > domain name in good faith.

FINDINGS

In 1998, Respondent (TTL Communications) entered into a Web Site Development Agreement with the International Society for Hematotherapy & Graft Engineering (“ISHAGE”). According to the Agreement, the Respondent agreed to “produce, design and develop and maintain the contents of the official ISHAGE web site.” Respondent also agreed to obtain the “Internet Domain Name Registration ISHAGE.ORG or ISHAGE.COM as required” and to “provide the services and maintenance on the ISHAGE web site for the first year,...[and] continue to renew annually by endorsement until notice of termination is given.”

In the subsequent years, Respondent registered several domain names that relate to the nature of Complainant’s organization. However, Respondent registered these domain names in the name of “TTL,” “TTL Communications,” or “Leon Hache.” These domain names include: <ishage.org>, <cellulartherapy.net>, <cellulartherapies.net>, <cellengineeringnews.org>, <isletcells.com>, <isletcells.org>, <isletcells.net>, <stemcellnews.org>, <stemcellreviews.com>, <stemcellreviews.org>, <stemcellreviews.net>, and <t-cells.org>.

In 2001, ISHAGE purchased the domain name <celltherapy.org> from RareDomains.com for $1,088 (US). The Domain Sale Agreement was signed by the Executive Director of ISHAGE. The Agreement listed the “Buyer” as Lee Buckler, who was ISHAGE’s Executive Director, although the Agreement itself made no specific reference to ISHAGE. In 2002, ISHAGE changed its name to the International Society for Cellular Therapy (“ISCT”).

ISCT used the <celltherapy.org> domain name for its official website, and the domain name appeared on ISCT’s promotional materials, business cards, etc. Respondent created and maintained Complainant’s website for several years.

The WHOIS details for <celltherapy.org> listed the domain name registrant as “L. Hache of TTL Communications” (the Respondent), rather than ISHAGE or ISCT (the Complainant). Complainant sent an e-mail to Respondent on March 8, 2006, requesting that the registrant for <celltherapy.org> be changed to ISCT, but Respondent did not make this change.

Respondent evidently regarded the <celltherapy.org> domain name as being owned by Complainant, as evidenced by Respondent’s May 13, 2003 e-mail to Complainant, which listed the “ISCT Domains,” including <celltherapy.org>.

For several years, Respondent billed Complainant for various services, including server charges, site housing, domain name renewals, website administration, and website revisions. Respondent renewed <celltherapy.org> on behalf of Complainant, and renewed several other domain names as well, including <ishage.org>, <cell-therapy.com>, <cell-therapy.net>, <cellulartherapy.net>, <cellulartherapies.net>, <cellengineeringnews.org>, <isletcells.com>, <isletcells.org>, <isletcells.net>, <stemcellnews.org>, <stemcellreviews.com>, <stemcellreviews.org>, <stemcellreviews.net>, and <t-cells.org>.

On March 14, 2006, ISCT’s President sent a letter to TTL Inc. to terminate its contract with TTL. In a letter dated March 16, 2006, Leon Hache of TTL Communications stated, “In order to protect TTL related copyrighted material, including navigational structures, TTL will terminate the ISCT Website and related services immediately and remove the Website from our domain.”

Rather than being the official website of ISCT, the <celltherapy.org> domain name currently resolves to a site with the headings “ISCT Website” and “International Society for Cellular Therapy.” The site states that the Complainant and its affiliates and executives “have planned, approved, and stolen the ISCT website with TTL Copyrighted Material, Private Web Administration Information,…Proprietary Software,” etc. The website also states, “We are in the process of consulting about criminal charges being brought against these co-conspirators.” The foregoing text was evidently authored by Respondent.

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 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

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

As a preliminary procedural issue, it is noted that Respondent did not submit its Response in compliance with ICANN Rule 5(a), because the Response was not received by the appropriate deadline. In addition, Respondent did not use the proper form for the Response. In its discretion, however, this Panel has decided to accept and consider the deficient Response. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where Respondent submitted a timely Response electronically, but failed to submit a hard copy of the Response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”); see also Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that ruling a Response inadmissible because of formal deficiencies would be an extreme remedy that is inconsistent with the principles of due process).

Identical and/or Confusingly Similar

Complainant asserts that it has demonstrated rights in the CELLTHERAPY mark by continuously using the CELLTHERAPY and CELLTHERAPY.ORG terms in commerce since July 2001. Complainant does not identify any trademark registrations for the mark, but contends that it has rights in the CELLTHERAPY mark through Complainant’s prior purchase of the <celltherapy.org> domain name registration and use of the domain name for its business. Complainant has submitted several promotional materials that prominently feature the domain name. Respondent makes no argument as to a lack of confusion in this case, nor as to whether the term “CELL THERAPY” constitutes an enforceable trademark.

This Panel concludes that Complainant’s purchase of the domain name registration for the disputed domain name and Complainant’s use of the CELLTHERAPY mark in connection with its organization since 2001 sufficiently establishes Complainant’s rights in the CELLTHERAPY mark pursuant to Policy ¶ 4(a)(i). See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark).

The <celltherapy.org> domain name is identical to the Complainant’s CELLTHERAPY mark under Policy ¶ 4(a)(i), because the disputed domain name incorporates Complainant’s mark in its entirety, adding only the top-level domain “.org.” See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark).

Rights or Legitimate Interests

The evidence on record, including Respondent’s WHOIS information, does not indicate that Respondent is commonly known by the <celltherapy.org> domain name. See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

Moreover, this Panel concludes that Respondent has not used the <celltherapy.org> domain name in connection with either a bona fide offering of goods or services in accord with Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The disputed domain name was registered by Respondent after Respondent had provided technical services to Complainant for several years, but Respondent did not itself offer goods or services under the <celltherapy.org> domain name.

Respondent contends that as an independent communications firm, it retains all copyright rights to material unless agreed to otherwise. However, a domain name registration is not part of any copyright rights that Respondent may own. A domain name may be analogous to the title of a copyrightable work, but the title itself carries no copyright protection under U.S. copyright law. In any event, Respondent’s possible claim to copyright rights in Complainant’s website has no bearing on ownership of the domain name. See Nat’l Sports Services Inc. v. Global Media Res. S.A., FA 335580 (Nat. Arb. Forum Nov. 18, 2004) (finding that despite the complainant’s assertion that it has rights under copyright in the disputed domain name, “any such rights are totally irrelevant for purposes of a dispute occurring under the Policy as the Policy requires complainants, as a threshold matter, to hold trademark or service mark rights, not rights under copyright.”); see also Hormel Foods Corp. v. The Wizard of Austin, FA 602996 (Nat. Arb. Forum Jan. 12, 2006) (finding that the issue of whether a copyright is covered by a trademark license is outside the Policy’s scope); see also The Napoleon Hill Found. v. VivaCorp SA, FA 672115 (Nat. Arb. Forum May 18, 2006) (finding that the ICANN UDRP Policy does not contemplate copyrights in domain names).

Registration and Use in Bad Faith

The <celltherapy.org> website had been the domain name for the official website of Complainant. The domain name is no longer associated with a website that promotes the mission and activities of Complainant. Instead, the website contains a statement that the Complainant has “planned, approved, and stolen the ISCT website with TTL Copyrighted Material, Private Web Administration Information,…Proprietary Software,” etc. The website also states, “We are in the process of consulting about criminal charges being brought against these co-conspirators.”

This Panel concludes that Respondent’s use and registration of the <celltherapy.org> domain name diverts Internet users from Complainant’s organizational website to Respondent’s website in violation of ¶ 4(c)(i) and ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

In view of Respondent’s creation of the original <celltherapy.org> website and its management of the website on behalf of Complainant for several years, Respondent knew of the Complainant’s use of the domain name. This Panel therefore finds that Respondent acted in bad faith in registering the <celltherapy.org> domain name. See Map Supply Inc. v. On-line Colour Graphics, FA 96332 (Nat. Arb. Forum Feb. 6, 2001); see also 163972 Canada Inc. v. Ursino, AF-0211 (eResolution July 3, 2000); see also Pure Color v. Sabin & Assoc., FA 95009 (Nat. Arb. Forum July 15, 2000); see also TelePlace, Inc. v. Tristar Mktg. Group Inc., FA 95694 (Nat. Arb. Forum Nov. 8, 2000); see also AC Direct, Inc. v. Kevin Kemp, FA 643546 (Nat. Arb. Forum, Mar. 31, 2006).

In this situation, it appears that Respondent has registered and used the <celltherapy.org> domain name as a bargaining chip to combat the unauthorized use of Respondent’s copyright, software and/or trade secrets, or as a means for securing additional funds from Complainant. Respondent evidently also registered several other domain names for the same reason. Registration of a domain name without any authority in order to gain a bargaining position constitutes bad faith. See Map Supply Inc. v. On-line Colour Graphics, FA 96332 (Nat. Arb. Forum Feb. 6, 2001).

When Complainant terminated its contract with Respondent, Respondent responded by stating that its “Current Estimated Damages” were $132,000. Although Respondent was not explicitly offering to sell the <celltherapy.org> domain name for that price, it is possible that such an offer was implied.

Respondent may be able to obtain a remedy for its loss of copyright rights, trade secrets, etc., but the appropriate remedy is not a UDRP proceeding. These issues are more equitably handled by the court system, which can consider all of the relevant facts and circumstances. Such issues are outside the scope of this proceeding. See 163972 Canada Inc. v. Ursino, AF-0211 (eResolution July 3, 2000) (several issues are best decided before the Canadian and US trademark offices, with reference to domestic law).

In summary, this Panel concludes that <celltherapy.org> is confusingly similar to Complainant’s term CELLTHERAPY, that Respondent has demonstrated no legitimate rights in the domain name, and that Respondent has registered and used the domain name in bad faith.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <celltherapy.org> domain name be TRANSFERRED from Respondent to Complainant.

Linda M. Byrne, Panelist
Dated: June 13, 2006

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