WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wright & Lato, Inc. v. Michael L. Epstein
Case No. D2000-0621
1. The Parties
The Complainant in this administrative proceeding is Wright & Lato, Inc., whose address is 800 Springdale Avenue, East Orange, New Jersey, U.S.A. The Respondent is Michael L. Epstein, residing in Marlboro, New Jersey, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is as follows: . The domain name was registered by Respondent with Network Solutions, Inc. (NSI) on April 14, 1998.
3. Procedural Background
On June 16, 2000, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on June 27, 2000.
Respondent failed to file a Response and a "Notification of Respondent Default," dated July 17, 2000 was forwarded by WIPO to Respondent.
The decision of the Panel was due to WIPO on or before September 2, 2000.
4. Factual Background
As alleged in the Complaint, Complainant is the owner of the trademark WRIGHT & LATO, which has been used since 1951 on jewelry. The mark was registered (No. 1,428,313) with the U.S. Patent and Trademark Office on February 10, 1987. See Complaint, Annex D.
Respondent is the former president and operations officer of Complainant. Respondent was dismissed from employment with Complainant in 1986. Respondent registered the domain name in dispute with NSI on April 14, 1998.
Upon discovering that Respondent had registered the domain name, Complainant's counsel sent a "cease and desist" letter, dated April 16, 1999, demanding that Respondent transfer the registration to Complainant. See Complaint, Annex G. Complainant's request to NSI that the domain name be placed "on hold" was denied because the domain name was not identical to Complainant's mark. See Complaint, Annex H.
5. Parties' Contentions
Complainant contends that Respondent's domain name is virtually identical to the famous name and mark WRIGHT & LATO; that Respondent has no legitimate interest in the domain name ; and that Respondent has registered the domain name in bad faith. In support of the latter contention, Complainant argues that "[t]he facts strongly suggest that Respondent registered the domain name in retaliation for having been dismissed from his job with Complainant, to disrupt Complainant's business and to obtain money from Complainant." It is alleged that, following receipt of the April 16, 1999, "cease and desist" letter, Respondent telephoned Complainant's counsel and requested that counsel communicate to Complainant that Complainant should make an offer to purchase the domain name from Respondent because domain names were being purchased on the open market for generous sums of money.
6. Discussion and Findings
The Panel has carefully weighed the evidence presented and determines that Complainant has established all of the elements required under �4.a. of the Policy.
Respondent's domain name is legally identical to Complainant's mark WRIGHT & LATO, which Complainant clearly has rights to through ownership of a valid and subsisting U.S. trademark registration, as well as through use of the mark in commerce. As Complainant notes, the ampersand symbol may not comprise part of a domain name.
It is also clear that Respondent has no rights or legitimate interests in respect of the domain name. None of the circumstances set forth in �4.c. of the Policy is applicable.
With respect to the issue of "bad faith" registration and use 1, the Panel finds that the evidence supports a determination that Respondent registered the domain name primarily for the purpose of selling the registration either to Complainant or to a third party for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name, within the meaning of �4.b.(i) of the Policy.
7. Decision
In view of the above, the Panel GRANTS Complainant's request for transfer to it of the domain name .
Jeffrey M. Samuels
Panelist
Dated: September 2, 2000
Footnotes:
1. While the Complaint only alleges bad faith registration, the Policy requires evidence of registration and use in bad faith. While the evidence suggest that Respondent has not "used" the domain name, as the term "use" is defined under U.S. trademark law, it appears that at least one of the circumstances spelled out in the Policy as establishing registration and use in bad faith does exist in this case.
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