Murad, Inc. v. Stacy Brock
Claim Number: FA1202001430865
Complainant is Murad, Inc. (“Complainant”), represented by Michael A. Painter of Isaacman, Kaufman & Painter, California, USA. Respondent is Stacy Brock (“Respondent”), represented by Stacy Edwards, Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <inclusivehealth.com>, registered with Go Daddy.
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 Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2012; the National Arbitration Forum received payment on February 23, 2012.
On February 23, 2012, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <inclusivehealth.com> domain name is registered with Go Daddy and that Respondent is the current registrant of the name. Go Daddy has verified that Respondent is bound by the Go Daddy registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@inclusivehealth.com. Also on February 24, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 15, 2012.
An Additional Submission from the Complainant was received on March 19, 2012 and was held to be compliant with Supplemental Rule 7. An Additional Submission from the Respondent was received on March 20, 2012 and was held to be compliant with Supplemental Rule 7.
On March 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant alleges that it commenced use of the INCLUSIVE HEALTH trademark for the purpose of identifying skin care products and nutritional supplements in June, 2003. An application for registration of the INCLUSIVE HEALTH trademark was filed on June 29, 2006, the mark being registered by the United States Patent and Trademark Office on February 13, 2007.
According to the Complainant, the Respondent registered the disputed domain name on April 3, 2006. The disputed domain name has never been used for an active Internet site for any bona fide commercial purposes whatsoever. No active Internet site is accessible through the disputed domain name.
The Complainant states that the Respondent contacted it in September 2010 for the purpose of tendering an offer to the Complainant to purchase the disputed domain name. After exchanges in communications, on January 24, 2012, the Respondent offered to sell the disputed domain name for $50,000.
The Complainant alleges that the sole purpose for the Respondent’s registration of the disputed domain name was to profit from trafficking in or otherwise selling the domain name. The Respondent should be considered as having no right or legitimate interest in the disputed domain name on the ground that the Respondent registered a domain name that is confusingly similar with the Complainant’s trademark solely for the purpose of profiting from the trafficking in the domain name.
B. Respondent
The Respondent states that the Complainant has alleged that the Respondent’s sole purpose for registering the disputed domain name was to profit from trafficking or otherwise selling the domain name to the Complainant, and that this is inaccurate and wholly unsupported by the evidence.
The Respondent alleges that she registered the disputed domain name on behalf of her partner in good faith and in furtherance of legitimate business and professional goals, namely in order to construct a website and online organization that would provide resources and advocacy regarding health issues affecting the lesbian, gay, bisexual and transgender (LGBT) community. Planned topics include sexual health, barriers to access to medical care, insurance, etc.
The Respondent states that her partner has focused much of her research, teaching, and presentations in this area of health policy. She has a Master’s Degree of Public Education and has worked as a Health Educator and Peer Health Advocates Coordinator. She plans to enroll in a PhD program in Health Policy. She has conducted extensive literature review in preparation for launching a web site at the disputed domain name. Although she has not yet raised sufficient resources to finalize her plans, she is hopeful that her forthcoming PhD and related research will aid this work.
The Respondent alleges that neither she nor her partner were aware of the Complainant when she registered the disputed domain name and notes that the mark was registered after the domain name.
Further, says the Respondent, neither she nor her partner are in the regular business or registering, buying, or selling domain names. The discussions regarding the sale of the disputed domain name were initiated by the Complainant in September 2010. In response, the Respondent offered to sell the disputed domain name for $9,000. This offer was refused. More than a year later, the Complainant again got in touch with the Respondent, who this time offered to sell the disputed domain name for $50,000. This offer was also rejected.
C. Additional Submissions
In its Additional Submission, the Complainant restates points made in the Complaint and admits that it initiated the discussions with the Respondent regarding sale of the disputed domain name.
The Complainant alleges that the disputed domain name is identical to its mark; and that the Respondent admits that she has not in the past and is not now making any use of the domain name. On this basis, the Respondent can demonstrate her rights or legitimate interests in the domain name only if she can make a demonstrable showing that she has taken preparations to use the domain name in connection with a bona fide offering of goods or services. Other than allegedly performing what is referred to as a “literature search,” the Respondent does not even contend that she took any steps whatsoever to design or in any way create a website for the disputed domain name.
The Complainant states that the Respondent registered the domain name on April 3, 2006 yet she has failed to develop a website for the domain name in a period of almost six years. Passive holding defines circumstances where there is no active use of the domain name to identify a website. Most importantly, passive holding of a domain name is evidence that the domain name is neither being used for a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor is it a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). The Complainant cites UDRP precedents to support its position.
Further, says the Complainant, inactivity can amount to the domain name being used in bad faith. The Complainant cites UDRP precedents to support its position.
In her Additional Submission, the Respondent states that the Complainant’s additional submissions do not provide any evidence to dispute her good faith in registering the disputed domain name and developing plans for it. There is nothing about her dealings that fit the profile of a bad faith cybersquatter. She has not sold other domain names and has only purchased a couple of websites that were developed for personal projects. She has not engaged in any behavior that would generate revenue in any way by using the disputed domain name.
Further, says the Respondent, although the Complainant cites several cybersquatting cases, they stand only for the obvious proposition that a lack of any demonstrable plans to use a domain name, in combination with other factors, can lead to a finding of bad faith. But in fact, simple passive holding of the domain name by the Respondent should not, in absence of any particular circumstances of the case such as those listed under 4b of the Policy, amount to a finding of use in bad faith. The Respondent cites UDRP precedents to support her position.
According to the Respondent, in the cases cited by the Complainant, the Panel analyzed all of the various facts of the case to find more than mere passivity in finding bad faith. This does not apply to the present case. The Complainant has simply not met its burden of proving bad faith pursuant to the Policy.
The Respondent restates various points made in the Response.
The Complainant owns the registered trademark INCLUSIVE HEALTH, claiming rights dating back to 2003.
The disputed domain name was registered in 2006.
The disputed domain name has never been used.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Paragraph 15(a) of 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."
The Complainant owns the registered trademark INCLUSIVE HEALTH and claims that its rights date back to 2003. But it does not provide evidence of common law rights prior to the date of registration, which was subsequent to the Respondent’s registration of the disputed domain name. This point could be significant, because the Complainant must offer sufficient evidence to demonstrate that the INCLUSIVE HEALTH mark had achieved secondary meaning in 2003, thereby establishing Complainant’s common law rights in the mark under Policy ¶ 4(a)(i). See 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 Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
However, for the reasons set forth below, the Panel finds that it need not rule on this element of the Policy.
As the Complainant correctly points out, the Respondent’s inactivity with regard to the development of the website housed at the disputed domain name fails to satisfy both Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Respondent argues that, despite making no actual use of its website, she has been continuously making demonstrable preparations to use the website and refers to literature reviews, speaking engagements, and other activities that, she says, are related to the launch of a website. However, the Respondent does not offer any concrete plans regarding the design of the web site, thus the Panel finds that the Respondent has not submitted sufficient evidence of demonstrable preparations to use the dispute domain name to satisfy either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); see also David J. Joseph Co. v. Barry, D2000-1418 (WIPO Jan. 2, 2001) (finding the respondent provided substantial evidence of his demonstrable preparations to use the domain name with a business involving the sale of scrap materials prior to receiving notice of the present dispute).
However, for the reasons set forth below, the Panel finds that it need not rule on this element of the Policy.
The Complainant alleges that the Respondent’s offers to sell the disputed domain name to the Complainant indicates bad faith registration and use under Policy ¶ 4(b)(i). The Respondent alleges that, because the Complainant initiated the offer for the sale of the disputed domain name, the Respondent’s counteroffer does not exhibit bad faith registration and use under Policy ¶ 4(b)(i). Previous panels have determined that, when a complainant initiates an offer for the sale of a disputed domain name, a respondent’s willingness to engage in negotiations for the sale of the domain name does not equate to bad faith. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (finding that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [the respondent] to offer to sell for a market price, rather than out-of-pocket expenses”); see also Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (finding insufficient evidence to hold that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) where the complainant initiated contact with the respondent and the respondent responded with an offer to sell its domain name registration for $50,000).
Therefore, the Panel finds that the Respondent’s conduct in this respect does not constitute bad faith use pursuant to Policy ¶ 4(b)(i).
The Complainant also argues that the Respondent’s inactive holding of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii) in and of itself. The consensus view of panels regarding this matter can be found in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), available at:
http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#32
The consensus view is:
With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).
In the present case, the mark is not well known and it is composed of two common words, “inclusive” and “health” which are commonly associated together. The Respondent has replied and has not concealed her identity. There has been no sporadic use of the disputed domain name, nor has it been parked or used to generate incidental revenue from advertising referrals.
Thus, as the Respondent correctly points out, the present case must be distinguished from the cases cited by the Complainant, because in those cases there were circumstances to suggest bad faith other than the mere passive holding.
As stated in Policy ¶ 4(a), the Complainant must prove that each element of the Policy is present. But, as the Respondent correctly points out, there is no evidence that the Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <inclusivehealth.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: March 31, 2012
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