The Complainant is Nicholas V. Perricone, Meridan, CT, USA ("Complainant"). The Respondent is Martin Hirst, United Kingdom ("Respondent").

The domain names at issue are <wrinklecure.com>, registered with Network Solutions Inc. ("NSI") and <wrinklecures.com>, registered with Melbourne IT, d/b/a Internet Names Worldwide ("Melbourne").

Each of the below-named Panelists certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the Majority in this proceeding:

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/05/2000; The Forum received a hard copy of the Complaint on 07/13/2000.

On 07/26/2000, NSI confirmed by e-mail to The Forum that the domain name <wrinklecure.com> is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On 07/25/2000, Melbourne confirmed by e-mail to The Forum that the domain name <wrinklecures.com> is registered with Melbourne and that the Respondent is the current registrant of the name.

On 07/26/2000, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of 08/15/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts by e-mail. Respondent filed a timely Response and Complainant filed a timely rebuttal to same.

On 8/18/00, pursuant to Complainantís request to have the dispute decided by a Three-Member panel, The Forum appointed Honorable Nelson A. Diaz, Honorable Paul Dorf and Honorable Karl V. Fink, as Panelists.

The Majorityís decision is based upon its consideration of the Complaint, the filed documents, the Response, the rebuttal and the ICANN Uniform Domain Name Dispute Policy ("Policy").

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

On December 10, 1999, Complainant filed a trademark application, on an intent to use basis, for the composite trademark, THE WRINKLE CURE. No date of "first use" for the trademark is alleged in the Complaint. Indeed, no proof of trademark use is provided. The Wrinkle Cure is the title of a popular book, authored by Complainant that was first published in April 2000. Complainant asserts that the contract for the eponymous book was signed in April 1999, although no contract is provided. Complainant asserts that various promotional materials associated with the book, The Wrinkle Cure, were distributed to the media, sales representatives and others in the trade "at least as early as December 1999." Once again, Complainant provides no documentary evidence that would assist the Panel in better understanding the nature of these materials and the extent to which they constitute trademark use or otherwise relate to this matter. It is surmised that by referring to the contract and promotional materials, Complainant may have intended to suggest that he had used his trademark prior to the December 10 application date.

On December 2, 1999, Respondent, Martin Hirst, registered the domain name, <wrinklecure.com>. On December 16, Respondent registered the domain name <wrinklecures.com>. Sometime in February 2000, Respondent created a simple website linked to the domain name <wrinklecure.com>. The site indicated that beauty products and cosmetics would soon be available on line. Sometime later, Respondent changed the content of the web site so that it featured a picture of Complainantís book with a direct link to Amazon.com.uk. Respondent claims that the link to amazon.com.uk was established for the "purpose of promoting use of the site." Response at par. 8.

On May 14, 2000, Respondent, notified Complainant and his agents by e-mail that he was the owner of the domain names in question and that he was interested in selling them. On May 15, Complainantís agent indicated an interest in the domain names. On May 25, 2000, Respondent contacted Complainantís agent by e-mail and inquired whether there was still interest in purchasing the domain names.

On June 7, 2000, Mary Chapin, Esq., legal representative to Complainant telephoned Respondent to discuss the domain names. According to Attorney Chapin, Mr. Hirst offered to sell the domain name <wrinklecure.com> for $40,000.00. Respondent states in his Response that the lawyers representing Complainant "are deliberately attempting to mislead the Majority about the contents of the telephone conversation." Respondent does not indicate in what way counsel "misleads" the Majority, nor does he otherwise rebut the averments. Respondent further states that he "actively used the <wrinklecure.com> as a site with bona fide intention of selling the domain name and/or using it for a commercial link in the first instance with the cosmetic industry." Response at par. 7. Respondent has never made any commercial use of <wrinklecures.com> aside from his efforts to sell the domain name.

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.

While it is clear that Respondentís domain names <wrinklecure.com> and <wrinklecures.com> are substantially similar to Complainantís mark THE WRINKLE CURE, the Majority finds that Complainant has not provided evidence that Respondent registered these generic, or at best descriptive, domain names in bad faith. Accordingly that Complainant has not met its burden of proof under the Policy.

This is not a case where Mr. Hirst selected domain names incorporating a famous or distinctive mark that he should have known he was not entitled to use. Rather, he selected descriptive, if not generic, domain names that are descriptive of products or services that could be sold under the domain names. The first to register such domain names, even if done with the intent to profit from the registration, should prevail absent bad faith in the registration. See Cello Holdings LLC v. Lawrence-Dahl Companies, 2000 U.S. Dist. Lexis 3936 (S.D.N.Y. 2000) (denying cross-motions for summary judgment because plaintiff could not prove bad faith registration under the ACPA given the generic nature of the domain name in question <cello.com>). Like the defendant in Cello Holdings, who freely acknowledged that he sought to sell the <cello.com> domain name as part of his business, Respondent is legally entitled to sell generic or merely descriptive domain names, provided that he has registered them in good faith.

Complainant provides no evidence that he ever used THE WRINKLE CURE as his mark prior to December 10, 1999. Importantly, any reference to "the wrinkle cure" in the April 1999, contract certainly does not constitute trademark usage. Moreover, there is no evidence of record as to when exactly Complainant began to distribute "promotional materials" about his upcoming book or whether such materials constituted trademark. In addition, Complainant submitted no evidence of either fame or secondary meaning in the mark such that, at the time the domain names were registered, consumers were likely to associate Complainantís yet to be created goods with the mark. While it is no doubt possible that Mr. Hirst somehow got advance notice of Complainantís trademark application or impending book publication, there is no evidence of record to support such a speculative conclusion. No matter how objectionable Respondentís post-registration use of the domain names may be, such use does not demonstrate that he had constructive or actual notice of Complainantís intentions with respect to the mark. Accordingly, we do not find that Complainant has met its burden of proving that Respondent registered the domain names in bad faith.

The scope of the Policy is narrow: it reaches only those disputes involving bad faith domain name registrations. Except where registration of domain name is made with bad faith intent to profit from anotherís trademark, the Policy leaves the resolution of ordinary trademark disputes to the courts. While a court of competent jurisdiction may ultimately find that Respondentís use of the domain names violated Complainantís intellectual property rights, such a dispute simply does not fall within the scope of the Policy.

Based upon the above findings and pursuant to Rule 4(i), the Majority finds in favor of respondent and orders that the complaint be dismissed.

Honorable Nelson A. Diaz, Chair

Dated: September 1, 2000

I respectfully dissent from the decision of the Majority.

It is clear that the domain names and Complainantís trademark are confusingly similar. Thus, Complainant has met its burden of proof in establishing the first prima facie element under the Policy.

Under paragraph 4(c) of the Policy, evidence of a registrantís rights or legitimate interest in the domain name includes:

Respondent asserts that his efforts to sell what he describes as generic or descriptive domain names constitutes a bona fide offering of goods or services as defined in the Policy. In the alternative, Respondent claims that he was attempting to set up a cosmetic web site using the domain name <wrinklecure.com>. I find that these assertions are not supported by the evidence.

First, I am not persuaded by Respondentís argument that the sale of the domain names in question constitutes a bona fide offering of goods or services as contemplated by the Policy. Likewise, the evidence does not support Respondentís claims that he was attempting to set up a cosmetic products web site using the domain name <wrinklecure.com>. Furthermore, the very fact that Respondent did not establish a web site or other business in conjunction with the domain name <wrinklecures.com> is evidence that he had no legitimate interest in the domain name. See 3636275 Canada, d.b.a. eResolution v. eResolution.com, WIPO Case No. D2000-0110 (April 10, 2000); Telstra Ltd. v. Nuclear Marshmallows, WIPO Case No. 2000-0003 (February 18, 2000); Golferís Warehouse, Inc. v. Dan Lynch, NAF Case No. 92532, (March 14, 2000).

Second, Respondent has not shown that he or his companies have ever been known by the domain names.

Finally, there can be no question that Respondent has flagrantly used the domain name <wrinklecure.com> with the intent to divert consumers to his web site. Indeed, Mr. Hirst admits that he had a picture of Complainantís book placed on the site associated with <wrinklecure.com>. See paragraph 28 of Respondentís response and Exhibit "G" thereto. Moreover, Mr. Hirst stood to receive a monetary commission from <amazon.com.uk> based on sales of Dr. Perriconeís book, to web users who linked to <amazon.com.uk> from Mr. Hirstís site. Respondentís intent to divert customers is thus certain. Had Respondent not unfairly sought to divert consumers for his own benefit, it is possible that I might have found differently than I do today. Under the circumstances, however, I must respectfully disagree with the Majority. I believe Complainant has proven that Respondent has no legitimate interest in the domain names.

Under paragraph 4(b) of the Policy, evidence of Respondentís bad faith registration and use includes:

Complainant submits that, under (i) above, Respondent has registered and used <wrinklecure.com> and <wrinklecures.com> in bad faith as evidenced by Respondentís offer to sell the domain names to Complainant for $40,000. Complainantís argument focuses squarely on the exchange of e-mails in May, 2000 and the telephone call on June 7, 2000. Respondent does not substantially contradict Complainantís testimony. Based on the facts of record, however, it is not absolutely certain that the domain names were registered in December 1999, with knowledge of Complainantís impending book publication and trademark application. Accordingly, I concur in the Majorityís findings that Complainant has not borne its burden with respect to proving that the domain names were registered "for the purpose of resale to the trademark owner or competitor for profit."

Complainant further submits that, under (iv) above, Respondent posted a picture of Complainantís book on the web site for <wrinklecure.com> and that that site offered a direct link to Amazon.com.uk. Respondent admits that the link to amazon.com.uk was established for the "purpose of promoting use of the site." I find Complainantís argument, and the evidence, overwhelming. Respondent clearly intended to use the domain names to divert consumers for commercial gain. This is a classic case of unfair competition and unquestionably constitutes the bad faith registration and use of the <wrinklecure.com> domain name.

As discussed above, the passive holding of the domain name <wrinklecures.com> can serve as evidence of Respondentís bad faith. See 3636275 Canada, d.b.a. eResolution v. eResolution.com, WIPO Case No. D2000-0110 (April 10, 2000); Telstra Ltd. v. Nuclear Marshmallows, WIPO Case No. 2000-0003 (February 18, 2000); Golferís Warehouse, Inc. v. Dan Lynch, NAF Case No. 92532, (March 14, 2000). Here, Respondent made no use of the domain name other than to offer it for sale at a price that substantially exceeds the out-of-pocket cost of registration and at a price that is largely based on the goodwill associated with Complainantís trademark.

Based on the evidence of record, I must respectfully dissent from the decision of the Majority.

_________________________________

Honorable Paul Dorf

Dissenting Panelist

Dated: September 1, 2000