WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Healthy Back LLC v. Ivo Somoza
Case No. D2003-0276
1. The Parties
The Complainant is Healthy Back LLC, Lorton, Virginia 22079, United States of America, of United States of America, represented by Collen IP of United States of America.
The Respondent is Ivo Somoza, San Salvador 00000, El Salvador, of El Salvador.
2. The Domain Name and Registrar
The disputed domain name is registered with iH Inc. d/b/a DotR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 10, 2003. On April 10, 2003, the Center transmitted by email to iH Inc. d/b/a DotR a request for registrar verification in connection with the domain name at issue. On April 11, 2003, iH Inc. d/b/a DotR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on May 14, 2003.
The Center appointed Knud Wallberg as the Sole Panelist in this matter on May 21, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, Healthy Back is the owner of United States Trademark Registration No. 2,519,701 for the mark , for use in connection with online retail store services featuring seating products. This registration was issued on December 18 2001, and a copy of the relevant database entry at the United States Patent and Trademark Office was attached as Annex. In August 1998, Healthy Back registered the domain name of , and has used this mark in selling seating products from its website, located at that address, since November 1998. In using the mark in commerce on the Internet, with its worldwide reach, for over four years, has allowed Healthy Back to establish strong brand name recognition with consumers of its products.
In January 2001, Healthy back registered the now contested domain name . Given the fact that the marks are phonetically identical, Healthy back wanted to ensure that Internet users seeking out his company would be sure to find it and arranged for HTTP requests sent to that address to be redirected to the "www." website. Examples of the pages displayed at the "www." site on March 30, and April 4, 2001, were attached to the Complaint. These pages were obtained from the archive of web pages located at "." The results page showing the archived pages for the domain was also attached. Due to this redirection, the domain address was also used by Healthy Back in connection with the sale of seating products for several months.
In using this address in commerce over the Internet, Healthy Back also accrued common law trademark rights in this mark; developing customer recognition of the connection between the domain and the Healthy Back company. In August 2001, due to a misunderstanding on the part of Healthy Back, the registration for lapsed and was registered by another party.
5. Parties� Contentions
A. Complainant
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
The mark is clearly confusingly similar to , due in part to the fact that they are phonetically equivalent. It is for this very reason that the Complainant, Healthy Back registered the domain name in the first place. The mark, which Healthy Back used for several months and accrued rights in, is obviously identical with the domain name now in dispute.
The Respondent has no rights or legitimate interests in respect of the domain name;
As far as the Complainant Healthy back is able to ascertain, there has been no use, or preparations to use, the domain address , since it was registered by another party in August 2001. Complainant is also able to find no presence on the Internet of any company by that name, or of the current Registrant Ivo Somoza, or any indication that there is an entity commonly known as "sitforless" or "." There are also no United States trademark applications or registrations for the mark SITFORLESS, or . As there has been no application to register and no discernable use within the United States or on the Internet, except for the Complainant Healthy Back�s use, the Respondent can have no trademark rights within the United States. Given the facts above, Healthy Back concludes that the Respondent has no rights or legitimate interests in the mark.
Complainant believes however, that the present registrant has exhibited a pattern of responding to UDRP Complaints by stating that particular domain names actually have been registered on behalf of another entity, the name of which happens to contain the word found in the domain name. An example of this occurred in relation to the domain name that was the subject of GIE Batigere and SA Batigère v. Sociedad Batigère, WIPO Case No. D2001-0665.
The domain name was registered and is being used in bad faith.
The Complainant, Healthy Back, believes that the present registrant has registered and used the domain in bad faith. It contends that the pattern of behavior exhibited by the Registrant, along with the fact that no use has been made of the domain name is sufficient to evidence Registrant's bad faith registration and use.
As mentioned above, Healthy Back registered the domain name domain, and used it from January to April 2001, in conducting its retail business of selling seating products. Due to a misunderstanding concerning the correct date of expiration, the domain name registration lapsed and was registered by an entity identified in the registration whois as , located in Nicaragua. At that time, Healthy Back contacted the registrant through the email address contained in the then current registration information. They received a response from a Tomas Arguello, who indicated that the domain had been registered for a "web project" and that "they" had never attempted to sell out, but that if they received a good offer, he imagined they could. The relevant email messages are attached as Annex 10. When asked what a good offer meant, Mr. Arguello responded with the number, $15,000. Healthy Back made an offer of $5,000, but it received no response.
When Healthy Back�s registration for the domain lapsed, it was registered through the SnapBack service of SnapNames. Archived web pages from , show that the registration was handled by SnapNames. SnapNames will monitor particular domains for its customers and will notify them when they become available for registration. This service is by definition used by those who are seeking particular domain names but have found them to be already registered. It is highly unlikely to suppose that the new registrant who registered the domain through SnapBack would have been unaware of the webiste that was being used in connection with that domain at that time, or the sale of seating products that took place through the site. When SnapBack is asked to register a domain on behalf of a customer, it uses the services of a registrar. In this case the domain was registered through N.
On August 6, 2001, Healthy Back�s attorney sent a letter to Tomas Arguello via courier mail at the addresses contained in the registration whois as well as by means of the email address it contained. The letter sent by courier went undelivered as the listed address did not exist. Without receiving any response to its email, Healthy Back noticed that the domain registration had been transferred to a Jorge Clapes of the DiamondVision Financial Group on August 31, 2001, a mere four months after it had last been registered and that it was still registered with N. At some point after this, the domain was transferred into the name of Ivo Somoza located at the same address. The administrative and billing contacts remain exactly the same. However, the whois search results from the Internic database, show that it was registered through the registrar D.
Despite this, the registration information still lists domain name Servers run by the Registrar N. The sole contact email address for the domain, listed in the Administrative contact section, is an address that also has a top-level domain of . N have indicated to Healthy Back�s representatives that its name servers are not set up to accept requests from domain names registered with other registrars, and that the email address is also unlikely to be operational for the same reason. In addition, there are no telephone, or facsimile contact numbers anywhere in the registration information.
It is clear therefore that not only is some of the information contained in whois record for incorrect, but that it also does not contain much of the information commonly found in whois records and that is explicitly required by the Registrar, D under the terms of its Registration Agreement.
Healthy Back notes that Mr. Somoza was involved in WIPO Case No. D2001-0665, GIE Batigère and SA Batigère v. Sociedad Batigere, which dealt with circumstances that are strangely familiar.
The same entity is listed as the administrative contact, but at the slightly different address of: "Esc 103 A Nte, y P G esc b5, San Salvador, san salvador 00000 SV," which of course is the exact same address as listed in the registration information for . The Complainant Healthy Back also notes that the Administrative and Technical contact information listed in the registration information is a company called DiamondVision Financial Group located at the same "Esc 103 A Nte, y P G esc b5, San Salvador, san salvador 00000 SV" address. Healthy Back believes that it is also worth noting that Ivo Somoza is also listed as the owner of the domain at the same San Salvador address and that coincidentally, DIAMONDVISION happens to be a registered trademark of the Mitsubishi Corporation.
The similarities with the present domain situation are obvious. Not only does it involve the same entities, located at the same address, the sequence of events are almost the same. The domain becomes available, it is registered in the name of someone in a South American country (in this case with a non-existent address), those connected with the registration respond favorably to the inquiries regarding the sale of the domain, someone claims rights in the domain, and it is almost immediately transferred once again to another entity, in another South American country, who happens to have a plausible, if unsubstantiated interest in the mark.
It is extremely difficult to imagine any use of the domain name at issue for anything other than in connection with the sale of seating products. If such use was begun, it would constitute clear trademark infringement. However, as indicated above, the domain has never been the address of any webiste since it was owned by Healthy Back. The Administrative Panel Decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, held that holding a domain without attempting to make use of it can constitute acting in bad faith. Healthy Back contends that the domain was registered in bad faith by someone who was aware of the existence of a webiste at that address selling seating products. Healthy Back also contends that the initial registrant of this domain after its registration lapsed and the present owners are likely related. As the domain was originally registered by means of the Snap Back service of SnapNames, the registrant who arranged this service must have known that the domain was taken and most likely the nature of the webiste hosted at that address. Therefore, Complainant also believes that the fact that it was initially registered by an individual claiming to be in another South American country was an attempt to place at least one owner between Healthy Back and Ivo Somoza and in doing so to allow, in this case Mr. Somoza, to claim no knowledge of Complainants mark or prior use of the domain, thereby avoiding any conclusion of registration in bad faith.
In summary, the Complainant Healthy Back contends that the domain has been registered and used in bad faith by the present owner. The combination of incorrect and incomplete registration information in violation of the Registrar�s Registration Agreement, no attempt to make use of the domain for a webiste, the fact that it was registered by someone using SnapBack who therefore must have been aware of the its use at that time, the fact that there are no possible legitimate commercial uses of the domain that would not infringe Complainant�s trademarks, and an inexplicable pattern in the registration of domain names as discussed above, all clearly show the bad faith registration and use. To hold otherwise is to accept the gaming of the UDRP process by those savvy enough to avoid leaving a trail of what has until now been the usual kind of evidence submitted in domain name arbitrations.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no legitimate interests in respects of the domain name; and
3) the domain name has been registered and used in bad faith.
1) The Panel finds that it has been established that the rights to the trademark was established before the registration of the contested domain name. Although the mark was not registered until December 2001, it was applied for in September 2000, and it is stated in the application that it was first used in commerce ultimo 1998.
The domain name is quasi-identical to the trademark , and must be considered confusingly similar to this mark.
The prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.
2) The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. On the contrary the contested domain name was previously registered and used by Complainant, but was not renewed in error.
No Response was filed in the case and under these circumstances the Respondent must bear the consequences of not having informed the Panel of any prior rights or legitimate interests in the domain name that he may have.
The prerequisites in the Policy, Paragraph 4(a)(ii), cf. 4 (c) are also considered fulfilled.
3) Paragraph 4(a)(iii) of the Policy further provides registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that is required.
While it is not in itself an illegitimate business to monitor and register domain names that have lapsed for some reason or another, it must on the other hand clear to a Registrant, who is engaged in such activities, that many of the released domain names actually reflects trademarks of the original holder of he domain name. Registrations of a distinctive name as domain name obtained under such circumstances and where Respondent has not shown any legitimate interest therein can be considered to having been done in bad faith.
With regard to the present case it is further important to state that the mere holding of a domain name that is identical or confusingly similar to a trademark belonging to someone else, prevents the holder of the said mark to be present on the Internet under a domain name that reflects the trademark, which in itself can be considered disrupting to his business. The Panel agrees that it is within the scope of the rights conferred to a trademark to regard "passive use" as "use," cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and several other subsequent decisions.
Bearing these facts and the facts mentioned above under 1) and 2) in mind, the Panel finds that the domain name has been registered and is being used in bad faith, cf. Paragraph 4(a)iii and 4(b).
Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4(a) of the Policy are fulfilled.
The Complainant has requested transfer of the domain name.
7. Decision
In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is confusingly similar to the trademarks in which the Complainant has rights, and that the Respondent has not shown to have any rights or legitimate interests in respect of the domain name, and that the Respondent�s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Dated: June 3, 2003
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