The Complainant is LifeWatch Holding Corporation d/b/a Lifewatch, Inc., Buffalo Grove, IL, USA ("Complainant") represented by Brett A. Hesterberg, of Leydig, Voit, & Mayer. The Respondent is Network Earth, Inc., New York, NY, USA ("Respondent") represented by Mark Fowler, of Satterlee Stephens Burke & Burke.

The domain name at issue is "lifewatch.com" registered with Network Solutions.

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

James Alan Crary as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 19, 2000; the Forum received a hard copy of the Complaint on December 20, 2000.

On December 20, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name "lifewatch.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 21, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 10, 2001 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@lifewatch.com by e-mail.

On January 15, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed James Alan Crary as Panelist. In addition to the Complaint and Response both parties submitted supplemental materials and arguments which were considered.

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

A. Complainant

Complainant is the owner of an exclusive, royalty free and perpetual license to use the trademark LIFEWATCH in connection with cardiac patient care services. Complainant bases the complaint on its mark and trade name LIFEWATCH which has been used in the connection with cardiac patient care services. The LIFEWATCH mark has been used in trade since 1993 in connection with Complainant’s cardiac patient care services and the selling, leasing, and repairing of telemedicine devices. The mark has also served as the name of the company since 1993.

Complainant circulates 46,500 reports to consumers and their physicians showing cardiac monitoring results provided by the Complainant. The LIFEWATCH mark and company name are displayed on every report. The Complainant distributes 42,000 monitoring products annually as well as a variety of promotional materials. Since 1994 more than 200,000 customers have contacted Complainant regarding its services.

Complainant owns the domain name lifewatchinc.com. Because of Complainant’s use of the mark and trade name in connection cardiac patient care since 1993 and in connection with a web site at lifewatchinc.com. There is a strong indication of source between the Complainant and the LIFEWATCH mark.

The disputed domain name lifewatch.com is identical to Complainant’s LIFEWATCH mark as well as the LIFWATCH company name. It is also identical to Complainant’s own domain name with the exception of the "inc".

Complainant asserted that consumers in search of Complainant’s web site who enter lifewatch.com, which is identical to the Complainant’s mark and company name, would be confused.

There would be confusion as to whether Complainant has a web site on the Internet, as to the affiliation of the web site with the Complainant and, since Respondent’s web site is inactive, consumers will be confused as to whether Complainant has a web site or whether Respondent’s web site is affiliated with the Complainant.

Consumer attempts to find Complainant using the disputed domain name could be frustrated in their search on the Internet interfering with Complainant’s ability to conduct business under its LIFEWATCH mark.

Respondent registered the disputed domain name on October 1998 but to date neither Respondent nor Parent Watch, Inc. have made legitimate use of the domain. Further, Respondent is not known by the domain name in dispute. Respondent possesses no common law rights or trademark registration rights in the LIFEWATCH mark nor have they made any legitimate use of the LIFEWATCH name. It was further alleged on information belief that Respondent had made no use nor demonstratible preparations for use of the disputed domain name in connection with the bona fide offering of goods or services.

Bad faith was alleged. Respondent had not used the domain name for a legitimate web site and had not offered any explanation as to the intended use of the domain name. Respondent replied to Complainant’s attempts to reach an amicable transfer of the domain name by indicating that the appropriate dollar amount would be a six-figure offer, at least $100,000 based on the exchange of correspondence between the Complainant and Respondent. It was evident that Respondent had not registered the domain name for a legitimate purpose but in bad faith to extort a six-figure sum for transfer of the domain name.

The Complainant sought transfer of the disputed domain to Complainant.

B. Respondent

Complainant had failed to prove even a single element required under Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy). Complainant had no inherent or exclusive right to the domain name but was a mere licensee. Complainant had not even alleged that it was authorized by the trademark owner to bring the complaint. Complainant’s licensor, Wesley Medical Center, did not own the only or the first registration for LIFEWATCH. In addition to a federal registration for LIFEWATCH, which predated Complainant’s trademark registration, there were several state registrations of the name. More than 20 businesses throughout the company use LIFEWATCH as part of their name.

Parent Watch registered the disputed domain name through Respondent Network Earth in October 1998, almost two years before Complainant contacted Respondent. Respondent was unaware of Complainant prior to being contacted and had registered the domain name in connection with its own business plan. As early as 1999, Parent Watch used the designation "Parent Watch" in connection with remote viewing of child care service providers across the Internet through web cameras and has planned since its inception to use the "Watch" designation in connection with providing monitoring services in other fields.

Respondent denied that Parent Watch had approached anyone seeking to sell the disputed domain name but shortly after Complainant approached Respondent, two other users of the designation LIFEWATCH (unrelated to the Complainant) independently approached Parent Watch seeking to purchase the domain name. Respondent declined the overtures.

It was asserted that Complainant was abusing the domain name dispute process in the effort to acquire a domain that it had not had foresight to register before Respondent.

"Life" and "watch" are both generic terms, the combination of which in a domain name do not immediately give rise to secondary meaning. There are dozens of federally registered marks that include the formative "watch" e.g. CYBERWATCH, DEBTWATCH, etc. All of which have been registered at the U.S. Patent and Trademark Office. The mere combination of two generic terms does not give rise to the likelihood of confusion between the domain name and Complainant’s trademark. Complainant has the designation LIFEWATCH used in association with its cardiac patient care services. Respondent’s intended use of the domain name in connection with unrelated services does not create a likelihood of confusion given the widespread longstanding use of the mark LIFEWATCH by others and the lack of any evidence of any actual confusion. The lifewatch.com domain name will not be confused with the LIFEWATCH mark licensed by Complainant.

Respondent maintained that it was a web site developer and host. The registration in October 1998 was at the request of Parent Watch, Inc. The registration was in the name of Network Earth not Parent Watch for reasons of convenience. Network Earth had an existing account with Network Solutions, Inc. Parent Watch’s director of web development was a principal in Network Earth. Network Earth holds shares in Parent Watch, Inc.

Parent Watch markets a means by which parents can watch their children at daycare centers equipped by Parent Watch. Parent Watch was a company spun-off from Panacea LLC, formed in December 1997; subsequently it reorganized in July 1998. Panacea originally offered childcare monitoring services.

Parent Watch has been the subject of media attention by the Wall Street Journal, New York Post, and CNN. Parent Watch’s business plan always included a plan to expand its monitoring services to other areas beyond childcare. It has already extended its use of this technology into the security field where it is known as Arrow Sight since all the appropriate domain names that included the term "watch" were registered. Respondent registered several other "watch" domain names including elderwatch.com, lifelinewatch.com, and hutwatch.com on behalf of Parent Watch.

Respondent denied acting in bad faith. There was no evidence that Respondent had tried to prevent Complainant or any other registered trademark holder of the LIFEWATCH mark from reflecting their mark in a domain name. There is no evidence that Respondent sought to disrupt Complainant’s business. It is not a competitor of the Respondent. There is no evidence that Respondent sought to capitalize on or create confusion as to source affiliation or sponsorship. The fact that it considered selling the domain name to Complainant, without more, does not indicate circumstances suggesting Respondent registered the domain name primarily for the purpose of selling, renting, or transferring the domain name.

The "offer" was made within the context of negotiations aimed at resolving the issue raised by the Complainant without resort to litigation. The "offer" was inadmissible evidence under federal rule of evidence Section 408. Respondent did not initiate negotiations for sale and did not approach the Complainant nor anyone else with an offer to sell. The fact that Parent Watch was only willing to sell the domain name for a substantial sum does not mean that it was registered in bad faith with the intent to sell the disputed domain name. Respondent had informed Complainant that it has business plans for the domain name unrelated to the services provided by the Complainant but was not under any obligation to disclose the nature of its business plans even if a Complainant was not a competitor.

The Complainant is a licensee of Wesley Medical Center, the owner of the mark LIFEWATCH, (U.S. Registrations 1,675,371 and 1,361,045), pursuant to the License Agreement entered into by the parties.

Paragraph five (5) of the License Agreement provides in part . . . Licensee shall promptly notify Licensor in writing of any infringement or imitation by others of the mark LIFEWATCH on goods or services the same as or similar to those covered by this Agreement which may come to Licensee’s attention, and Licensor shall have the sole right to determine whether or not any action shall be taken on account of any such infringement or imitation. If the Licensor determines not to take any action with respect to any possible infringement or imitation, Licensee shall have the option to seek to enforce the mark in its own name . . . (emphasis added).

The Complainant has been engaged in the business of providing cardiac patient care services and selling, leasing, and repairing telemedicine devices since 1993.

The Complainant under the license Agreement has the exclusive right to use the LIFEWATCH mark in connection with cardiac patient care services.

Respondent is the agent of Parent Watch, which directed that Respondent register the lifewatch.com domain in October 1998 in connection with its business plan. Parent Watch, originally a division of Panacea LLC has been providing childcare monitoring services over the Internet. Parent Watch has operated a web site at parentwatch.com since December 1997. Parent Watch also registered through Respondent the domain names elderwatch.com, lifelinewatch.com and hutwatch.com in addition to the disputed domain name lifewatch.com.

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.

It was concluded that the disputed domain name lifewatch.com is identical to Complainant’s mark. The ".com" suffix denoting second-level domain status in Respondent’s domain name does not affect the fact that the name is identical the Complainant’s mark. Croatia Airlines v. Kwen Kijong, AF 0302 (e-Resolution Sept. 25, 2000) which held that the domain name croatiaairlines.com is identical to Complainant’s trademark "CROATIA AIRLINES".

Based on the Panel’s reading of the license agreement between the trademark holder Wesley Medical Center and the Complainant, there exists an issue as to whether Complainant is authorized to prosecute the action herein. There was no evidence showing that Complainant either informed the trademark owner concerning the domain name dispute or sought its authorization to prosecute the action herein.

The balance of the discussion is based on the assumption that Complainant has the apparent right to proceed.

A trademark does not confer on its owner (or licensee) any rights in gross or at large. Unlike copyright or patent owners, trademark owners have no rights in gross. The law does not per se prohibit the use of trademarks or servicemarks as domain names. Rather, the law prohibits only uses that infringe or dilute a mark. Innocent third party users of the trademark have no duty to police the mark for the benefit of the owners of the mark. See Panavision Int’l, LLP v. Toppen, 945 F. Supp. 1296 (C.D. Cal.1996).

The Complainant and the Respondent are not competitors. The Complainant markets specialized cardiac monitoring services and equipment. Respondent is engaged in offering non-medical monitoring services to parents who have children in daycare and other related monitoring services.

It is true that the Respondent has not developed a web site in connection with the disputed domain name. The registration of the disputed domain name together with elderwatch.com, lifelinewatch.com, and hutwatch.com are evidence that Respondent was preparing to provide monitoring services over the Internet to serve a variety of markets for monitoring including homes, retail stores and other venues. These monitorings would be additions to the existing services already offered to parents and others by Parent Watch. The evidence supported a finding that Parent Watch through Respondent’s registration of the disputed domain name in October 1998 was making demonstratible preparations for use of the domain name in connection with a bona fide offering of goods and services.

It was clear from the evidence that LIFEWATCH is composed of generic and descriptive terms and the "Lifewatch" mark is widely used in a variety of context including fire safety equipment, financial services, and in various contexts by religious organizations.

In addition to a federal registration for LIFEWATCH owned by MBC which uses the mark in connection with the marketing of fire safety equipment, there are state registrations for the mark LIFEWATCH in Tennessee, Rhode Island, and California. (Exhibit A). It was noted that LIFEWATCH is also used by LMP Instrument/Humetrics as the name for a cerebral activity monitor and by Lifewatch in Bethesda, Maryland as the name that company’s smoke detectors.

Complainant’s rights in the mark LIFEWATCH are limited to cardiac monitoring services and equipment. Respondent has established that it has rights and legitimate interests in the disputed domain name lifewatch.com.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the three elements set forth in order to obtain an order cancelling or transferring a domain name. The Panel concluded that the Respondent has established rights and legitimate interests with respect to the domain name. It is therefore unnecessary to consider the issue of registration and use in bad faith. The Complainant has failed to meet the burden of proof to establish all three elements and therefore the bad faith issue need not be decided and is moot. This decision does not reach Respondent’s contentions with reference to Federal Rule of Evidence 408. To the extent that Respondent raises an issue of reverse cybersquatting in bringing this action, the Panel concluded that the evidence did not support a finding that Complainant, a Licensee of a registered trademark holder, acted in bad faith.

Based on the findings and discussion herein and pursuant to Rule (4)(i) of the Policy, the Panel hereby orders that the relief requested by the Complainant be denied.