AMENDED DECISION

 

American Medical Laboratories, Inc. v. David A. Colondres

Claim Number: FA0007000095159

 

PARTIES

The Complainant is American Medical Laboratories, Inc., Chantilly, VA, USA ("Complainant"). The Respondent is David A. Colondres, Coppell, TX, USA ("Respondent").

 

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain names at issue are “LABPORTAL.COM” and “LAB-PORTAL.COM”, registered with Network Solutions Inc (“NSI”)

 

PANELISTS

The Panelists certify that they have acted independently and impartially and have no known conflict in serving as panelists in this proceeding.

 

Panelists:  Hon. John J. Upchurch, Chairman, Hon. Paul A. Dorf, and Jeffrey H. Kaufman, Esquire.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/10/2000; The Forum received a hard copy of the Complaint on 07/10/2000. 

 

On 07/11/2000, NSI confirmed by e-mail to The Forum that the domain names “LABPORTAL.COM” and “LAB-PORTAL.COM” are 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 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

 

On 07/18/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/07/2000 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 Respondent’s registration as technical, administrative and billing contacts by e-mail.  It was also emailed to postmaster@labportal.com and postmaster@lab-portal.com. 

 

The Respondent requested an extension to respond and the Complainant consented to this request.  On 08/21/00, Respondent submitted a Response to the Complaint to The Forum.

 

On 08/31/00, pursuant to Complainant’s request to have the dispute decided by a Three Member panel, The Forum appointed Hon. John J. Upchurch, Chairman, Hon. Paul A. Dorf and Jeffrey H. Kaufman, Esquire, as Panelists.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.     Complainant

 

1.      The subject domain names are confusingly similar to a service mark in which Complainant has rights.

 

2.      Complainant had used its marks, LABPORTAL and LABPORTAL.COM, in a Power Point presentation to a potential business partner during Respondent’s employment as Complainant’s Chief Information Officer.

 

3.      Complainant filed applications for trademark and service mark registration of the subject marks on December 29, 1999.

 

4.      Respondent was employed by Complainant as Senior Vice President and CIO in August, 1998.  He executed a Confidentiality Agreement that provided all “designs, systems, discoveries, reports, programs, data, tests, recommendations, inventions, patents, products, services, ideas, things or creative work,” performed by him for AML were AML’s exclusive property, and that he had no rights to them.

 

5.      Respondent registered the domain names LABPORTAL.COM and LAB-PORTAL.COM on May 25, 1999 in his name.

 

B.     Respondent

 

1.      Respondent’s domain name registrations preceded Complainant’s registration of the marks as trademarks.

 

2.      Complainant did not intend to offer goods or services under the “LABPORTAL” name.

 

3.      The concept and the time and energy associated with the development of LABPORTAL.COM and LAB-PORTAL.COM domain names were Respondent’s alone, and not in Respondent’s role as Senior Vice President or CIO.

 

4.      Respondent’s suggestion to Complainant that it adopt the subject domain names was rejected; hence, Complainant abandoned any rights therein.

 

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“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 names registered by the Respondent are identical or confusingly similar to trademarks or service marks in which the Complainant has rights;

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

(3) the domain names have been registered and are being used in bad faith.

 

Identical and/or Confusingly Similar

            The subject domain names are identical to or confusingly similar to marks in which we find the Complainant has rights or legitimate interests, i.e., LABPORTAL.COM and LAB-PORTAL.COM.  See Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).

 

Rights or Legitimate Interests

            Complainant’s rights are clearly established by virtue of the Confidentiality Agreement between Complainant and Respondent, even in the absence of a prior use by Complainant of the marks.  Respondent had a contractual as well as a fiduciary responsibility to register the subject domain names in the name of his employer, the Complainant, and not individually in his own name.  See Winterson v. Hogarth, D2000-0235 (Nat. Arb. Forum May 22,2000) (noting legal rights attach despite lack of registration).

 

Registration and Use in Bad Faith

            Respondent surreptitiously registered the domain names while employed by Complainant.  The registration explicitly violated the Confidentiality Agreement, as well as the common law fiduciary responsibilities of a corporate officer.  This conduct constitutes bad faith on the part of Respondent.  See Exec-U-Net, Inc. v. Exec-U-Net, FA 0004000094639 (Nat. Arb. Forum June 8, 2000) (noting Respondent’s knowledge of the use of the name and trademark before selecting her company’s name is a clear indication of bad faith).

 

DECISION

The panel unanimously finds for the Complainant and against the Respondent, and has determined that the subject domain names, to-wit: LABPORTAL.COM and LAB-PORTAL.COM shall be transferred from RESPONDENT to COMPLAINANT.

 

 

Honorable John J. Upchurch

Retired Judge

Arbitrator

 

Decision entered this 22^nd day of September, 2000.