WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution
Case No. D2004-0427
1. The Parties
The Complainant is Western Holdings, LLC, of Casper, Wyoming, United States of America, represented by Gilbert/Rothman, PLC., United States of America.
The Respondent is JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution of Wisconsin, United States of America, represented by Law Office of Jonathan Bender, P.C., United States of America.
2. The Domain Names and Registrar
The disputed domain names: are , , , , , , , , are registered with R&K Global Business Services, Inc. d/b/a 000D.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on June 10, 2004. On June 11, 2004, the Center transmitted by email to R&K Global Business Services, Inc. d/b/a 000D a request for registrar verification in connection with the domain names at issue. R&K Global Business Services, Inc. d/b/a 000D 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 (together with the amendment to 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 June 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2004. The Response was filed with the Center on July 2, 2004.
The Center appointed Mark Partridge as the sole panelist in this matter on July�16,�2004. 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
This case involves the same parties and essentially the same facts as present in WIPO Case No. D2004-0426.
Complainant licenses its trademarks to an affiliated entity, Basic Research LLC (“Basic Research”) for the development and manufacturing of cosmetics, nutritional supplements and dietary supplements. Another related entity, Klein-Becker USA, LLC (“Klein-Becker”) sells the products developed by Basic Research.
One of the brands developed by Basic Research and sold by Klein-Becker is a topical preparation called STRIVECTIN-SD. This product is available to consumers through retail stores and web sites pursuant to agreements between the resellers and Basic Research and Klein-Becker. The SVTIVECTIN-SD products have been the subject of substantial advertising and sales.
Complainant owns a federal registration for the STIVECTIN-SD mark, Reg. No. 2,760,414, dated September 2, 2003.
Until about October 28, 2003, Respondent was an approved distributor of Complainant’s products. It was given an oral agreement to use Complainant’s trademarks.
Respondent registered the domain names on July 25, 2002. At that time, Respondent was operating under an oral agreement with Complainant permitting Respondent to use Complainant’s trademarks in advertising.
On or about October 28, 2003, Respondent was terminated as an authorized distributor of Complainant’s products.
The parties are involved in a related law suit in the United States District Court for the Western District of Texas, entitled Basic Research LLC v. William Stanley and B, Inc. The Second Amended Complaint in that suit alleges unfair competition under Section 43(a) of the Lanham Act, violation of the Anticybersquatting Consumer Protection Act, Copyright infringement and Breach of Contract. The marks at issue in the complaint include STRIVECTIN-SD.
5. Parties’ Contentions
A. Complainant
Complainant contends that it has trademark rights in the name STRIVECTIN-SD and that the domain names are identical or confusingly similar to that mark; that Respondent does not have a legitimate right or interest in the domain names because it was not given permission to register the domain names and is no longer an authorized distributor of Complainant’s products; and that the domain names were registered and used in bad faith to disrupt the business of Complainant.
B. Respondent
Respondent does not dispute that the domain names are identical or confusingly similar in material part to Complainant’s STRIVECTIN-SD mark. Respondent contends that it registered the domain names with Complainant’s knowledge and permission and asks the Panel “to suspend or terminate stay [sic] any decision in this administrative proceeding.”
6. Discussion and Findings
A. Concurrent Civil Proceedings
Paragraph 18 of the Rules states: “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute . . . the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
For the reasons more fully stated in WIPO Case No. D2004-0426, the Panel has decided to exercise the discretion granted to the Panel under Paragraph 18 to proceed to decision under the Policy.
B. Identical or Confusingly Similar
Complainant must show that the domain names are identical or confusingly similar to a mark in which the Complainant has rights. It is not disputed that the domain names are identical or confusingly similar in material part to a mark used and registered by Complainant. the panel finds that the first element of Complainant’s claim is satisfied.
C. Rights or Legitimate Interests
Complainant must show that Respondent lacks any rights or legitimate interests in the domain names. Although Respondent was an authorized distributor of Complainant’s products, that relationship ended in October 23, 2003. Accordingly, the Panel find that Respondent does not have any rights or legitimate interests in the domain names at the time of the Complaint.
D. Registered and Used in Bad Faith
As more fully explained in the decision issued in WIPO Case No. D2004-0426, the Panel finds that Complainant has failed to establish that the domain names were registered in bad faith.
Complainant acknowledges that Respondent was an authorized distributor of Complainant’s products when the domain names were registered and that there was “an oral agreement pursuant to which [Respondent] was granted the right to use certain of Complainant’s trademarks in connection with the advertising and sale of products.” Complainant claims, however, that agreement did not include permission to register the domain names.
In contrast, Respondent submits the Second Declaration of Pat Corrao, its owner, stating:
“[Complainant’s] pattern and practice is to advise its distributors to register all domain names incorporating terms similar to [Complainant’s] products . . .
[Complainant] specifically suggested that [Respondent] register any domain names the [Respondent] wished that incorporate terms similar to [Complainant’s] products . . .”
The factual record is not clear regarding the scope of permission given to Respondent. What is apparent on the record submitted, however, is that Respondent, at a minimum, had oral permission to use Complainant’s marks in advertising and that there was no express restriction informing Respondent that the permission granted did not include registration and use of the marks by Respondent as domain names.
These circumstances are sufficient to rebut Complainant’s allegation of bad faith registration. See Urbani Tartufi s.n.c. v. Rosario’s Epicureo Ltd., WIPO Case No. D2003-0081; Celebrity Signatures International, Inc. v. Hera’s Incorporated Iris Linder, WIPO Case No. D2002-0936; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Under the circumstances presented, it does not appear that Respondent registered the domain names with the requisite bad faith required under the Policy. Although Respondent’s continued use after termination of the parties’ relationship might be viewed as bad faith use, the Policy also requires proof of bad faith conduct at the time of registration. It appears here that Respondent registered the domain names for the purpose of promoting the sale of Complainant’s products, an activity which it may have reasonably concluded was within the scope of the permission granted to it by Complainant, as it claims. Complainant has presented no evidence that contradicts that conclusion nor has the Panel found any further evidence of Respondent’s current conduct that could cast doubts on that conclusion. The decision in this proceeding is not intended to have any effect on the deliberations in the concurrent United States District Court proceeding.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Mark Partridge
Sole Panelist
Dated: August 6, 2004
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