WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Body Accounting, Inc. v. Affinity Domains, Energy First Case No. D2009-1419 1. The Parties
1.1 The Complainant is Body Accounting, Inc. of Redondo Beach, California, United States of America, represented by Stowel, Zeilenga, Ruth, Vaughn & Treiger LLP, United States.
1.2 The identity of the Respondent in this case is in dispute. This issue is addressed in greater detail later on in this decision. Affinity Domains of Arles, France is recorded in the relevant WhoIs details as the registrant of the disputed domain name. “Energy First” of Manhattan Beach, California, United States of America has been listed by the Complainant as the Respondent. “Energy First” is represented by Koenig & Associates, United States. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with CSL Computer Service Langenbach GmbH dba J. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2009. In that Complaint the Complainant named both Affinity Domains and “Energy First” as the Respondent in these proceedings.
3.2 On October 22, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 27, 2009, the Registrar transmitted by email to the Center its verification response confirming that Affinity Domains was listed as the registrant for the Domain Name and providing the contact details.
3.3 On October 27, 2009, the Center sent an email to the Complainant stating that the Complaint was administratively deficient in that it did not conform to the word limit specified in Paragraph 3(b)(ix) of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. An amended Complaint was filed by the Complainant later that day correcting that deficiency.
3.4 On October 28, 2009, the Center verified that the Complaint as amended (referred to in the rest of this decision as the “Complaint”) satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
3.5 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified both Affinity Domains and “Energy First” of the Complaint, and the proceedings commenced on October 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2009.
3.6 On November 16, 2009, “Energy First's” legal representative sent an email stating as follows:
“Is there a procedure or ability to obtain an extension of time to reply to a Complaint?
Our current due date is November 17, 2009.”
3.7 In an email the following day the Complainant stated that it would “not object to extending “Energy First's” response deadline by a few days, to November 19, 2009, if WIPO views such an extension to be appropriate.”
3.8 At 5:28 am Geneva time on November 18, 2009 (i.e., 8:28 pm the previous evening of November 17, 2009 in California), “Energy First” filed a document headed “Response” but declaring that “Energy First” was not properly named as the Respondent in the proceedings. 4. Factual Background
4.1 The Complainant is a Californian corporation. Its President, founder and sole shareholder is Joe Dillon. Joe Dillon has for the past 30 years been a motivational speaker in the field of personal health and fitness issues. He has during that time spoken at over 600 seminars. He appears to have obtained some degree of fame as a result of his activities.
4.2 The Complainant appears to be the corporate entity through which Mr. Dillon has supplied “Joe Dillon” branded products, including audio tapes and videos. These proceedings have clearly been brought by the Complainant with Mr. Dillon's consent and most likely at Mr. Dillon's instigation.
4.3 The Complainant is not the owner of any relevant registered trade marks. In August 2009 it applied for various United States trade marks in respect of the terms “Joe Dillon” and “The Joe Dillon Difference”. The applications have yet to proceed to grant.
4.4 In January 1998 either the Complainant and/or Mr. Dillon entered into a business arrangement with “Healthy Lifestyle Corporation” (“HLC”). Under this “license agreement”, HLC was entitled to use Mr. Dillon's name and likeness. Then and thereafter HLC appear to have operated a business under the name “Energy First”.
4.5 In 2001, the Complainant, Mr. Dillon and HLC were all parties to a document characterised as a “Settlement Agreement”. That agreement referred to a pre-existing licence between Mr. Dillon and HLC and stated that this licence agreement would come to an end on December 31, 2002.
4.6 In December 2003, HLC appears to have sold the “Energy First” business to an individual called Gerry Morton. The form that sale took is unclear and it is uncertain exactly what legal form “Energy First” took thereafter.
4.7 The Domain Name was registered on April 29, 2004.
4.8 On June 29, 2005, the Complainant sent a letter to Mr. Morton of “NutriSceince Corp”, in which the Complainant complained about the fact that the Domain Name linked to the website operating from the domain name. The letter demanded that the link be terminated and the Domain Name be transferred to the Complainant. The link was terminated but the Domain Name was not transferred.
4.9 Recently the Domain Name has once again been used to redirect Internet users to the website operated by the “Energy First” business from the domain name. On that website “Energy First” has offered various “Joe Dillon” branded products. “Energy First” also offers the products of competitors to the Complainant. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that “Energy First” is the true owner or beneficial owner of the Domain Name and that for this reason it has been named as joint Respondent in these proceedings with Affinity Domains.
5.2 It contends that “Energy First” is producing and selling products using the “Joe Dillon” name that it is not entitled to sell and which involves an infringement of its rights, including copyright in certain audio tapes. It also asserts that “Energy First” has made certain false claims about these products.
5.3 So far as rights are concerned, the Complainant relies upon both the name “Joe Dillon” and the phrase “The Joe Dillon Difference”. In the case of “Joe Dillon”, it claims common law trade mark rights under Californian law and the Lanham Act. It asserts that the Domain Name is identical to its “JOE DILLON” mark and confusingly similar to the “THE JOE DILLON DIFFERENCE” mark.
5.4 So far as rights and legitimate interests are concerned, the Complainant claims that the circumstances surrounding the grant and termination of the licence agreement to HLC are such that “Energy First” can have no such right or interest. It claims that the Domain Name has been used by “Energy First” solely for the purposes of “illegally re-rout[ing] web browsers away from [the] Complainant's website ... to [“Energy First's”] website and that this does not provide a right or legitimate interest.
5.5 So far as bad faith is concerned, the Complainant describes at great length alleged rights in the “Joe Dillon” name under the Californian common law, the Lanham Act, unfair competition law and the California Business and Professions Code. These rights are said to predate the registration of the Domain Name. In the alternative, it asserts that this is a case falling within the caveat set out in paragraph 3.1 of the WIPO Overview of Panel Views on Selected UDRP Questions (the “WIPO Overview”) as to when bad faith can be shown where no rights yet exist at the time of registration. It asserts that “Energy First” “had knowledge that trademark rights would soon arise through use or registration of a mark by the Complainant”. Reference is made in this respect to General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online,WIPO Case No. D2003-0845.
5.6 The Complainant also asserts that “Energy First”'s registration and use of the Domain Name to redirect Internet users to the Complainant's website involves bad faith disruption of the business of a competitor within the scope of paragraph 4(b)(iii) of the Policy and the creation of a likelihood of confusion with the Complainant's mark within the scope of paragraph 4(b)(iv) of the Policy. In this respect it cites Freedom Flag, Inc., dba Falls Flag & Banner Co. v. Flags Unlimited,WIPO Case No. D2002-0478. B. Energy First
5.7 “Energy First” denies that it is the owner or beneficial owner of the Domain Name, denies that it is a proper Respondent in these proceedings and claims to have “no interest” in whether the Panel approves or denies the remedies requested by the Complainant. It states that it has put in a “Response” simply “to respond to certain incorrect statements and facts which are noted in the Complaint”.
5.8 “Energy First” admits that it sells a series of compact discs featuring Joe Dillon. It claims that intellectual property rights in these were acquired from HLC and that it is, therefore, lawfully entitled to produce and deal in these products.
5.9 “Energy First” denies that it controls the Domain Name and asserts that if it could drop or break the link from the Domain Name to its own website, it would do so.
5.10 “Energy First” notes that the Complainant has applied for a number of registered trade mark applications, but holds no registered trade marks. It claims that “it can only be reasonable to conclude” that rights relied upon for the purposes of paragraph 4(a) must “be prior in time to those rights claimed by [the] Respondent”.
5.11 On the issue of rights and legitimate interests it repeats its claim that it is entitled to use the name “Joe Dillon” in connection with the audio series that it sells but asserts that it “makes no claim to the [D]omain [Name]” in this regard.
5.12 So far as bad faith is concerned, it contends that given the fact that it is not responsible for the Domain Name, then the Complainant cannot show bad faith on the part of “Energy First”. 6. Discussion and Findings
6.1 The Complainant must make out its case in accordance with the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these issues in turn. However, before it does so it is convenient to address a separate substantive and procedural question. That is who is the correct “Respondent” in this case and if “Energy First” is not the true “Respondent”, any procedural and substantial consequences that may follow. A Identity of the Respondent
6.3 The question of the identification of the “correct” respondent was addressed by the current Panel at some length in Mrs. Eva Padberg v. Eurobox Ltd.,WIPO Case No. D2007-1886. That decision suggests that it is not of any significance who is named as the respondent on the face of a complaint. It also concludes that even if this is not correct, a complaint will be procedurally compliant if it identifies the entity named in the relevant publicly available WhoIs database as the registrant of the domain name on the date that the complaint is filed (see paragraphs 5.9 and 5.10 of the Eva Padberg decision).
6.4 That is not to say that the identification of the right respondent is of no importance for the purposes of the Policy. As the Panel also recorded in a footnote to the Eva Padberg decision:
“Of course if a complainant has misidentified who it considers to be the person who in reality has control of the domain name in issue, it may be that its arguments as to abuse are ill founded and will not prevail. However, that is quite a different matter.”
6.5 Turning then to the present case, regardless of whether or not “Energy First's” contentions are correct, there is no doubt that the proceedings were validly commenced. The party identified on the WhoIs record for the Domain Name has also been named and contacted by way of the Center's providing notice of the instant proceedings.
6.6 Further, common sense and natural justice both lead to the conclusion that “Energy First”, notwithstanding its claim that it is not the true Respondent in this case, should be entitled to serve some sort of response in these proceedings. It has been named in the proceedings, assertions have been made about its conduct and it should be allowed to respond to the same. Also any contrary finding leads potentially to absurd results. If a panel ignores a response that provides evidence that the named respondent is the wrong respondent because it has not been submitted by the true respondent, how can it determine the question who is the right respondent in the first place?
6.7 As the Eva Padberg decision suggests the term “Respondent” can in different parts of the Rules have different meanings. Therefore, one way of addressing this issue would be to interpret the term sufficiently widely for the purposes of paragraph 5(a) of the Rules so as to include any named “respondent” in a complaint. Another way of dealing with this is to note that panels have a wide discretion under paragraph 10(a) of the Rules and subject to the provisions of the Rules and the Policy as to the conduct of the proceedings. This Panel has in the past and in reliance on these powers allowed third parties whose conduct is the subject of criticism to submit submissions in this respect (see, for example, Eva Padberg, supra and Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED., PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED.,WIPO Case No. D2008-1675). The Panel need not decide in this case what is the correct approach. Whatever the basis, it is clear that the “Response” of “Energy First” should be admitted in this case.
6.8 These procedural issues having been dealt with, the question still remains who is the “true” registrant or Respondent in this case. There are a number of factors that would suggest that the Complainant's submissions in this respect are correct, or that at the very least that “Energy First” has not disclosed the whole story so far as “Energy First” and Mr. Morton's involvement with the Domain Name is concerned. First, there is the fact that the Domain Name has been redirected to “Energy First's” website. No explanation is offered as to why if the Domain Name is not owned or controlled by “Energy First”, some third party might wish to do so. Second, there is the fact that “Energy First” does not appear to dispute that the Complainant first wrote to Mr. Morton, albeit at NutriScience Corp, in June 2005 demanding that the link to the website be terminated and that this resulted in that link being brought to an end. This suggests at least some sort of historic link between the Domain Name and “Energy First” and yet this is not addressed in the “Response”.
6.9 Nevertheless, ultimately the Panel does not need to form a concluded view on these issues since the Panel is of the view that it does not in this case actually matter whether or not the Domain Name is owned or controlled by “Energy First”. For the reasons that are explained in greater detail later on in this decision, either way the Complaint succeeds. B. Identical or Confusingly Similar
6.10 The Panel accepts that as a result of the Complainant and/or Mr. Joe Dillon's activities at least common law trade mark rights in California exist in the “Joe Dillon” name. The Complaint contends that the Complainant owns those rights and the Panel is prepared to accept in the absence of any credible contrary assertion that this is correct. As the Complainant correctly contends, there have been many cases in which UDRP panels have accepted that common law rights in specific jurisdictions are capable of constituting trade mark rights for the purposes of paragraph 4(a)(i) of the Policy.
6.11 The Domain Name can only be sensibly read as the name “Joe Dillon” with the space removed and with the addition of the “.com” TLD. In the circumstances, the Domain Name is virtually identical to a trade mark in which the Complaint has rights.
6.12 The Panel does not find the Complainant's contentions in relation to its alleged rights in the term “The Joe Dillon Difference” so persuasive. No common law rights appear to be expressly alleged in that term and as was recorded in F GmbH v. Mr. Chris Olic,WIPO Case No. D2005-0994 unless such rights are expressly claimed, a panel should be wary of concluding that they exist. This leaves effectively a trade mark application in respect of this term and generally applications that have yet to proceed to grant are not considered to be sufficient rights for the purposes of the Policy (see F GmbH, supra and Associated Professional Sleep Societies v. l.c./Li Chow,WIPO Case No. D2007-0695).
6.13 However, in light of the Panel's findings in relation to the JOE DILLON mark, this does not matter. It also does not matter for the purposes of paragraph 4(a)(i) of the Policy whether or not the Complainant possessed these rights as at the date of registration of the Domain Name (see paragraph 1.4 of the WIPO Overview). However, the timing of the Complainant's rights is an issue to which the Panel returns on the question of bad faith.
6.14 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
6.15 Whether it is Affinity Domains or “Energy First” that is the true Respondent in this case, the Panel is of the view that neither entity possesses a relevant right or legitimate interest for the purposes of the Policy.
6.16 So far as Affinity Domains is concerned, there is no obvious link or connection between the name recorded in the Domain Name and that entity. None of the examples of evidence of rights or legitimate interests set out in paragraph 4(c) of the Policy would appear to apply to Affinity Domains and in the absence of any evidence or argument from Affinity Domains to the contrary, the Panel finds that Affinity Domains has no right or legitimate interest in the Domain Name.
6.17 So far as “Energy First” is concerned, it expressly disclaims any right or legitimate interest in the Domain Name per se. It is, therefore, not necessary to consider the issue any further. However, even if such a right or legitimate interest had been claimed it is unlikely that any such claim would have succeeded. The Panel will briefly outline why this is the case.
6.18 The Domain Name is essentially identical to another's mark. In Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227 this Panel suggested that in such a case even if the domain name is used to sell genuine or legitimate products bearing the mark of another, in the absence of some distinguishing element in the domain name, this is insufficient to provide a right or legitimate interest in that domain name. Further if this approach was wrong, then this is a case where the analysis in Oki Data Americas, Inc. v. ASD, Inc,.WIPO Case No. D2001-0903 would apply. This Panel suggested in Owens Corning v. NA,WIPO Case No. D2007-1143 that it is for a respondent to positively raise a right or legitimate interest and Oki Data grounds. Even if “Energy First” had sought to do so in this case it seems likely that “Energy First” could not have satisfied the Oki Data conditions. The reason for this is that it would appear that the “Energy First” website also sells products that compete with those of the Complainant.
6.19 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
6.20 There is no suggestion by the Complainant that the Domain Name was registered in the name of Affinity Domains at a later date that the date upon which the Domain Name was initially registered (i.e., April 29, 2004).
6.21 Assuming that Affinity Domains was responsible for this registration, it is unclear exactly why it did so. However, what is clear is that at least recently the Domain Name redirects to a page on the “Energy First” website which sold “Joe Dillon” branded products (namely ). This cannot be accidental. It would appear that someone has made a positive decision to link the Domain Name to that page. If so, that person must have had the association between the name recorded in the Domain Name and the Complainant in mind. The only credible explanation of the link is that it was put in place to take advantage of that association in the minds of Internet users in order to direct traffic to the “Energy First” website. This is activity that falls within the scope of the example of bad faith set out in paragraph 4(b)(iv) of the Policy. Whether or not Affinity Domains benefits directly by reason of this link is also uncertain. But regardless of whether it does or does not, it does not matter. There is a clear intent that “Energy First” shall benefit and as this Panel stated in Owens Corning, supra, all paragraph 4(b)(iv) requires simply an intention that someone commercially benefits. There is, therefore, bad faith use.
6.22 It does not necessarily follow that it was with such use in mind that the Domain Name was registered. But in the absence of argument or evidence to the contrary, the current use is the best evidence before the Panel as to the registrant's intentions at the time of registration in 2004. The Panel therefore also concludes on the balance of probabilities that there was in this case bad faith registration.
6.23 If it is “Energy First” that is the true Respondent in this case, the position is even clearer. The Complainant and its founder have obviously been long known to the “Energy First” business and there are connections between the two that pre-date the registration of the Domain Name. There is an ongoing dispute between the Complainant and “Energy First” regarding the sale of certain products that can be traced back to that historical connection. The Panel has no need to express a view and does not express a view on whose position is correct in this respect. The point is that “Energy First” does not claim any right to have registered the Domain Name as a result of that historical relationship. In the circumstances, for “Energy First” to have registered and then used a domain name that incorporates in its entirety a term used by the Complainant to distinguish its products and services with a view to use that association to draw Internet users to its website, involves registration and then use in bad faith.
6.24 In short regardless of whether the true Respondent or registrant in this case is “Energy First” or Affinity Domains, the conclusion is the same. The Domain Name has been registered and used in bad faith.
6.25 There has been much discussion in the submissions filed by both the Complainant and “Energy First” as to the exact status and nature of the rights developed by the Complainant in the “Joe Dillon” name as at the date of initial registration of the Domain Name. The Complainant, in particular, has expended a great deal of effort in seeking to persuade the Panel as to why some form of right existed in the name at that time under California and United States law.
6.26 In the view of the Panel the exact scope of the Complainant's rights at this time does not really matter. The issue is addressed in paragraph 1.4 of the WIPO Overview. It states:
“Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However, it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.”
6.27 As the Complainant notes, the issue is also addressed in General Growth Properties, Inc., Provo Mall L.L.C., supra. In that case the panel stated that is sufficient that the respondent:
“had knowledge that trademark rights would soon arise through use or registration of a mark by the Complainant.”
6.28 However, this Panel would suggest that these are simply an example of a more fundamental principle. It is not so much that a respondent must have specific knowledge that local law rights will necessarily arise or that the domain name “was registered with a future trademark in mind”. What matters, as is recorded in paragraph 3.1 of the WIPO Overview is that “the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights” (emphasis added).
6.29 To put it another way, the respondent must be aware that the complainant is or is about to be using a specific term in a trade mark sense to describe the source of its goods or services and have an intention to take unfair advantage of the complainant's intended or actual trade mark use.
6.30 The fact that the complainant actually acquires local law trade mark rights in the future is important for the purposes of paragraph 4(a)(i) of the Policy. Such rights are a minimal requirement that a complainant must satisfy in order to be able to avail itself of the mechanism that the Policy provides. However, whether or not it is apparent at the time or registration that they will necessarily come into existence is not important so far as the paragraph 4(a)(iii) assessment is concerned.
6.31 The reasons for this approach were set out by this Panel in St Andrews Links Ltd v Refresh Design,WIPO Case No. D2009-0601. In that case the Panel rejected a similar argument that an alleged lack of unregistered rights at the date of the relevant domain name prevented a finding of bad faith registration. The Panel stated:
“It is worth noting in this respect that not all jurisdictions recognise unregistered trade mark rights. Therefore if the Respondent's arguments were right it would lead to a situation that a complainant might fail in an allegation of bad faith registration simply because it conducts its activities in such a jurisdiction and the domain name in issue was registered prior to the complainant having registered its rights. The Panel does not believe that the Policy operates in that way. So far as possible, the concept of bad faith should be interpreted in such a way that it has its own separate meaning under the Policy and is not dependent on the laws of the country in which the complainant or respondent operates (see 1066 Housing Association Ltd. v. Mr. D. Morgan,WIPO Case No. D2007-1461 and Fundación Calvin Ayre Foundation v. Erik Deutsch,WIPO Case No. D2007-1947)
6.32 In the circumstances, regardless of the exact scope of the Complainant's rights at the time that the Domain Name was registered, the Domain Name was registered either by Affinity Domains or “Energy First” with the Complainant's trade mark use of “Joe Dillon” in mind and to take unfair advantage of that use. That is sufficient for a finding of bad faith registration1.
6.33 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: December 11, 2009
1 The Panel notes that at least two recent cases have suggested an interpretation of the Policy that would mean that it might only be necessary to assess a respondent's more recent motives and activity (see City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643 and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions,WIPO Case No. D2009-0786). If these cases are correct, the issue of bad faith registration and the extent of a complainant's rights at the time of registration is less significant. However, this is not the occasion on which to examine the reasoning in those cases further. The Complainant has not put its case in that fashion and the facts of this case are such that the adoption of a more conventional approach leads to a decision in the Complainant's favour. This is an argument and discussion to be left for another day.
Full & Egal Universal Law Academy