WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Beyond Dental & Health, Inc. v. Domains by Proxy, Inc., Martin Baybutt Case No. D2009-1553 1. The Parties
The Complainant is Beyond Dental & Health, Inc. of Texas, United States of America, represented by Dovas Law, P.C., United States of America.
The Respondents are Domains by Proxy, Inc. of Arizona, United States of America and Martin Baybutt of Florida, United States of America (the “Respondent” refers to Martin Baybutt hereinafter). 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2009. On November 19 and 26, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On November 27, 2009, GoD, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on December 18, 2009. This proceeding was suspended from December 22, 2009 to January 22, 2010 upon the Complainant's request, the expectation being that the dispute would be resolved amicably. Having failed to settle the case, the Complainant requested that the proceeding be re-instituted, and the proceeding was re-instituted on January 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2010. The Respondent sent the Center and the Complainant an email in response to the Complaint on February 7, 2010, of which the Center acknowledged receipt.
The Center appointed Michael A. Albert as the sole panelist in this matter on February 18, 2010. 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, through its predecessors in interest Beyond Technology, Inc., and its chief executive officer, Andy Hsu, have used the trade name and trademark BEYOND and the associated domain name in connection with the manufacture, distribution and sale of teeth whitening products and related products since at least January 15, 2003.
On or about November 13, 2007, the Respondent contacted the Complainant about becoming a distributor of the Complainant's products. On or about November 15, 2007, the Respondent completed a dealer application form and was approved as a distributor of products manufactured and sold by the Complainant. The Respondent began to purchase and resell products manufactured and sold by the Complainant.
On September 23, 2009, the Complainant sent the Respondent a letter ordering the Respondent to discontinue use of the Complainant's trademarks and copyrighted material and to transfer the Disputed Domain Name to the Complainant.
On or about September 28, 2009, the Respondent removed the Complainant's copyrighted material from the Disputed Domain Name website, but refused to transfer the Disputed Domain Name.
On October 27, 2009, the Complainant filed an application to register the trademark BEYOND with the United States Patent and Trademark Office (“USPTO”). The application, serial number 77/857,893, is for use of the BEYOND mark in connection with teeth whitening products.
Between September 28, 2009 and February 7, 2010, the Complainant and the Respondent engaged in ultimately unsuccessful negotiations for the sale of the Disputed Domain Name. 5. Parties' Contentions A. Complainant
The Complainant contends that despite the absence of a trademark registration for the BEYOND mark, the Complainant has established common law trademark rights because the mark has acquired secondary meaning. The Complainant alleges that the public has come to associate the BEYOND name with products for teeth whitening and related products.
To demonstrate acquired secondary meaning, the Complainant has provided the following evidence: (a) numerous screenshots of the Complainant's website from 2003 through 2009 offering teeth whitening products for sale; (b) a list of 17 publications in which the Complainant advertised teeth whitening products under the BEYOND name between 2005 and 2009; (c) a list of 53 trade shows the Complainant attended in various countries between 2003 and 2009; and (d) revenue statements from 2005 through 2008 representing that the Complainant had annual revenues exceeding USD10 million, spent between about USD300,000 to USD500,000 annually on advertising, and spent between about USD150,000 and USD370,000 annually on trade shows.
The Complainant further contends that the Disputed Domain Name is confusingly similar to the BEYOND mark because it includes the word “beyond” in which the Complainant has common law trademark rights. The Complainant also contends that the inclusion of the words “teeth whitening” makes the Disputed Domain Name confusingly similar because the Complainant sells products for teeth whitening under the BEYOND mark, and teeth whitening products comprise the Complainant's core business.
The Complainant further contends that the Complainant informed the Respondent on several occasions that the Respondent's use of the Disputed Domain Name was not acceptable and likely to cause confusion to prospective purchasers of the Complainant's goods. The Complainant alleges that, in order to avoid consumer confusion, the Complainant asked the Respondent to include a disclosure in any advertising or promotional activities related to the BEYOND trademark which explained the Respondent's relationship to the Complainant as a reseller of the Complainant's products. The Complainant alleges that the Complainant revoked the Respondent's status as an approved distributor on August 12, 2009, because the Respondent failed to comply with this request.
The Complainant further contends that on or about September 28, 2009, the Respondent refused to transfer the Disputed Domain Name. The Complainant also contends that, in an October 5, 2009 email, the Respondent insisted that the Complainant pay at least USD20,000 to purchase the Disputed Domain Name.
The Complainant further contends that the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services. Specifically, the Complainant argues that in order to be bona fide, a domain name must be used solely for the sale of goods or services bearing the trademark used in the domain name, and must accurately disclose the reseller's relationship with the mark owner. The Complainant contends that the domain name was not used in connection with a bona fide offering of goods or services because the Respondent used the Disputed Domain Name to sell teeth whitening products from other manufacturers. Moreover, the Complainant alleges that consumers wrongly believed they were buying directly from the Complainant because the Respondent failed to disclose the Respondent's status as a reseller.
The Complainant further contends that the Respondent was not commonly known by the name “Beyond Teeth Whitening” prior to registration of the Disputed Domain Name or prior to commencing sales of the Complainant's products under the BEYOND mark.
The Complainant further contends that the Respondent sold teeth whitening products with the intent to misleadingly divert consumers for commercial gain. Specifically, the Complainant contends that the Respondent's sale of the Complainant's teeth whitening products through the Disputed Domain Name while simultaneously using other websites to sell the teeth whitening products of other manufacturers created a likelihood of confusion regarding source, sponsorship or affiliation, and therefore constitutes evidence of bad faith. The Complainant also contends that the Respondent is no longer selling any of the Complainant's BEYOND products.
The Complainant further contends that the Respondent's use of the Disputed Domain Name has disrupted the Complainant's business by causing confusion to the Complainant's existing and prospective customers, and that this also constitutes evidence of bad faith.
The Complainant further contends that the Respondent offered to sell the Disputed Domain Name to interested third parties, and also offered to sell it to the Complainant for USD20,000. The Complainant contends that both facts are further evidence of bad faith. B. Respondent
The Respondent contends that he is a distributor of products and services in the beauty industry. The Respondent represents that distribution occurs through a company called Crystal Clear USA.
The Respondent further contends that the Respondent purchased the Disputed Domain Name with the full understanding and consent of Joshua Granson, an officer of the Complainant. The Respondent further contends that Mr. Granson fully understood that the Respondent was a distributor of products and services for other manufacturers, and that the Respondent would use the Disputed Domain Name to generate business for both the BEYOND products as well as the products of other manufacturers. The Respondent also contends that he did not have any contract with the Complainant and that there were no restrictions on the use of the Disputed Domain Name.
The Respondent further contends that the Respondent has invested thousands of dollars and spent thousands of hours promoting the Disputed Domain Name for the purpose of selling the products of both BEYOND and other manufacturers. The Respondent also alleges that the Respondent has used business cards, brochures and promotional items which advertise the Disputed Domain Name, and which have resulted in many new customers for all the Respondent's product offerings. The Respondent notes that prospective customers still possess the business cards, brochures and marketing materials which bear the Disputed Domain Name. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has not obtained a trademark registration for the BEYOND mark. Although the Complainant has provided evidence that it applied for trademark registration with the USPTO on October 27, 2009, the Complainant has not indicated whether the application has been accepted or rejected. Therefore, evidence that the Complainant has applied for trademark registration, with nothing more, is of little value in determining whether the Complainant has rights in the BEYOND mark.
The Complainant, however, may establish that it has rights in the unregistered mark if it can show that its name, Beyond, achieved sufficient secondary meaning or association with the Complainant. Wick Communications Co. Inc. v. Half Moon Bay Coastside Foundation,WIPO Case No. D2002-0556; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005.
The Complainant's evidence of its annual revenues and expenditures on advertising and trade shows in connection with teeth whitening products sold under the BEYOND mark establishes that it has common law trademark rights in the BEYOND mark. The Complainant's mark BEYOND is not identical to the terms “Beyond Teeth Whitening” in the Disputed Domain Name. Therefore, the issue is whether the Disputed Domain Name and the Complainant's BEYOND mark are confusingly similar.
The Domain Name combines three elements: (1) the Complainant's BEYOND trademark; (2) the term “teeth whitening”, which is descriptive of the goods and services that the Complainant provides; and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “beyondteethwhitening”), as it is well-established that the top-level domain (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark. AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758 (finding confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding legally identical to QUIXTAR). Moreover, the addition of the words “teeth whitening” as a suffix to the mark does not mitigate the confusing similarity between the Disputed Domain Name and the Complainant's BEYOND trademark. Specifically, because the words “teeth whitening” are associated with the Complainant and its business, the suffix strengthens rather than weakens the confusing similarity. See e.g., EarthLink, Inc. v. Keith Blatz,WIPO Case No. D2007-1288 (finding and confusingly similar to EARTHLINK, which offered Internet services); Microsoft Corporation v. MindKind,WIPO Case No. D2001-0193 (finding confusingly similar to MICROSOFT, which offered health-related information).
For all of the foregoing reasons, this Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's BEYOND mark, in which the Complainant has established common law rights. Therefore, the Panel finds that the Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights and legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of the dispute, the respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) the respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Bona Fide Offering of Goods or Services
The Complainant contends that the Respondent has no rights to use the BEYOND mark. First, the Complainant contends that the Respondent cannot demonstrate rights under paragraph 4(c)(i) of the Policy because the Respondent did not use the Disputed Domain Name in connection with a bona fide offering of goods or services.
Both parties agree that the Respondent used the Disputed Domain Name to sell the Complainant's products. However, the Complainant argues that such sales were not bona fide because the Respondent (a) did not disclose the reseller relationship and (b) offered products with the BEYOND mark alongside products by other manufacturers. The Complainant cites Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, to support this argument.
The Center recognizes that two views have been developed regarding whether resellers can have rights or legitimate interests in a disputed domain name under paragraph 4(c)(i) of the Policy. These views and supporting WIPO UDRP cases are summarized at paragraph 2.3 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” (“WIPO Overview”).
The majority view follows Oki Data, which held that a reseller-registrant can have rights in a disputed domain name only if the reseller exclusively uses the site to sell the trademarked goods and the reseller accurately discloses its relationship with the trademark owner. WIPO Overview, Paragraph 2.3. The minority view holds that without the express permission of the trademark holder the right to resell the trademark holder's products does not create a right to use the trademark as the basis for a domain name. Id.
The Respondent lacks rights under either view. In his Response, the Respondent contended that both parties understood that the Respondent would “use the [disputed] web address to generate business for all our products” and that “[t]his has resulted in many leads and customers being generated for all our product offerings”. Thus, the Respondent apparently concedes that non-BEYOND products have been and will continue to be offered for sale through the Disputed Domain Name. Therefore, under the exclusivity prong of Oki Data, the Respondent's use of the domain name was not in connection with a bona fide offering of goods or services and therefore does not demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name.
The Complainant also contends, and the Respondent does not deny, that the Respondent failed to disclose the Respondent's reseller relationship to the Complainant. The Complainant has submitted evidence supporting this contention including screenshots of the website to which the Disputed Domain Name resolves as it appeared on September 18, 2009. Specifically, on the “contact us” web page, the Respondent's contact information is listed beneath the BEYOND mark without any disclosure that the Respondent is a reseller. Thus, the Respondent also lacks rights in the Disputed Domain Name under the disclosure prong of the Oki Data requirements.
In addition, the Respondent lacks rights under the minority view because there is insufficient evidence that the Complainant gave the Respondent express permission to use the Disputed Domain Name. The Respondent has offered ambiguous evidence which arguably supports the inference that the Complainant impliedly consented to the Respondent's use of its trademark in the Disputed Domain Name. For example, the Respondent submitted a mostly illegible reproduction of a February 11, 2008 email from a BEYOND employee who appears to offer the recipient assistance in the design of an unidentified website which may be used to sell BEYOND products. However, it is unclear whether the referenced website was related to the Disputed Domain Name. Even if all inferences are drawn in favor of the Respondent, the Respondent's evidence would only indicate that the Complainant was aware that the Respondent was using a website to sell BEYOND products. It is not evidence that the Complainant expressly authorized the Respondent to use its BEYOND mark in the Disputed Domain Name.
Thus, the Respondent lacks rights under either the majority or minority view regarding reseller rights in disputed domain names. Commonly Known by the Disputed Domain Name
In addition to being unable to demonstrate rights under paragraph 4(c)(i) of the Policy, the Complainant contends that the Respondent cannot demonstrate rights under paragraph 4(c)(ii). The Complainant cites Compañía de Radiocomunicaciones Móviles S.A. and BellSouth Corporation v. Juan Bolinhas d/b/a "MOVICOM BELLSOUTH",WIPO Case No. D2000-0915, for the proposition that the “commonly known by” language of paragraph 4(c)(ii) requires that the Respondent was commonly known by the Disputed Domain Name prior to registration. The Panel finds this construction persuasive. Because the Respondent has failed to provide evidence that it was commonly known by either the BEYOND mark or the Beyond Teeth Whitening name prior to registering the Disputed Domain Name, the Respondent is unable to demonstrate that it has rights in the Disputed Domain Name under paragraph 4(c)(ii). Legitimate Noncommercial Use
The Respondent is not making a legitimate noncommercial use of the Disputed Domain Name because the Respondent uses the Disputed Domain Name to sell products for commercial gain. Thus, the Respondent does not have rights in the Disputed Domain Name under paragraph 4(c)(iii).
For all of the foregoing reasons, this Panel finds that Complainant has proven that the Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Complainant has thus proven the second element required under the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following four illustrative scenarios which demonstrate the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's web site or location or of a product or service on the respondent's web site or location. Bad Faith Scenarios (i) and (ii)
There is evidence that the Respondent offered to sell the Disputed Domain Name for USD20,000. Although the Respondent contends that thousands of dollars have been invested in promoting the Disputed Domain Name, the Respondent has provided no evidence documenting that these purported out-of-pocket costs amount to USD20,000. However, it is inconsequential whether the Respondent's USD20,000 offer exceeds out-of-pocket costs because the Complainant has not produced evidence that the Respondent's primary purpose for registering the Disputed Domain Name was to sell it. Therefore, the Complainant has not proven bad faith under paragraph 4(b)(i).
In addition, there is no evidence that the Respondent has engaged in a pattern of registering domain names in order to prevent trademark owners from doing so. Thus, there is no evidence of bad faith under the scenarios described in paragraphs 4(b)(i) and (ii). Bad Faith Scenario (iii)
Paragraph 4(b)(iii) presents a closer question. The Complainant has alleged that the Respondent's use of the Disputed Domain Name has disrupted the Complainant's business by causing confusion to customers. As discussed above, the Respondent acknowledges that the Respondent intended to and actually did offer competing products through the Disputed Domain Name, allegedly with the consent of Mr. Granson, an officer of the Complainant. However, the Complainant acknowledges that the Respondent “completed a dealer application form and was approved as a distributor of products manufactured and sold by Complainant” for a period of nearly two years.
This factual context raises several issues: (a) whether the Respondent's purpose in offering competitor's products constitutes a disruptive purpose as required by paragraph 4(b)(iii); (b) whether the Respondent had this disruptive purpose at the time of registration; and (c) whether this was the primary purpose motivating the Respondent's registration. Complicating the disruptive purpose analysis is the fact that the parties were in a distributor relationship for nearly two years. As Schneider Electronics GmbH v. Schneider UK Ltd.,WIPO Case No. D2006-1039, recognized:
[W]here the parties have entered into and maintained a long-standing commercial relationship, Panels tend to impose on the Complainant a heavier burden of proof for bad faith, generally requiring more comprehensive evidence than that which may be necessary in the typical dispute between unrelated adversaries. At a minimum, the Complainant must provide full disclosure of the history of the relationship, and in particular, the relevant agreements and contractual terms which have governed their joint enterprise. Allegations of bad faith aimed at a former distributor or licensee can only be properly understood in the full context of their prior history.
The Complainant acknowledges that the Respondent was authorized to act as a distributor for the Complainant's products beginning on or about November 15, 2007. However, there is conflicting evidence whether the Respondent was authorized to use or register a domain name that included the Complainant's trademarks. The Complainant contends that the Respondent was never entitled to use the Disputed Domain Name that included the Complainant's trademarks, and that the Complainant notified the Respondent of this on several occasions. The Respondent contends that the Complainant fully understood and consented to the Respondent's registration and use of the Disputed Domain Name.
Given the nearly two-year relationship between the parties, and given the higher evidentiary burden that this relationship places on the Complainant to demonstrate bad faith, the Panel is reluctant to find that the Respondent's primary purpose at the time of registering the Disputed Domain Name was to “disrupt” the Complainant's business.
Thus, the Panel concludes that the Complainant has not presented sufficient evidence to demonstrate bad faith through the disruptive purpose scenario in paragraph 4(b)(iii). Bad Faith Scenario (iv)
The Panel does find, however, that the Complainant has offered sufficient evidence of bad faith under paragraph 4(b)(iv). It is well-established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See e.g., Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc.,WIPO Case No. D2004-0433.
Prior UDRP panels have found bad faith under paragraph 4(b)(iv) where such conduct occurs in the wake of a terminated distributor relationship. See e.g., Omnigraphics Capital (Pty) Ltd v. Fleximount, Guy Langevin,WIPO Case No. D2004-0471 (finding bad faith where former distributor offered competing products through disputed domain name); Charles Chips Enterprises, Inc. v. Mark Patterson d/b/a Innate 2 Create and Ted Henderson,WIPO Case No. D2005-0836 (finding bad faith where unauthorized distributor offered trademark owner's products through disputed domain name, thereby creating likelihood of sponsorship confusion).
Here, the Respondent appears to have intended to use the Disputed Domain Name to promote both the Complainant's BEYOND products as well as competing products. The Respondent has not indicated that this intent was absent at the time of registration. Moreover, the Respondent has indicated that the Disputed Domain Name continues to generate business for “all of our product offerings” despite the fact that the distributor relationship has terminated. Thus, the Respondent's own admissions provide sufficient evidence of bad faith under paragraph 4(b)(iv).
For all of the foregoing reasons, this Panel finds that the Complainant has proven that the Respondent registered and is using the Disputed Domain Name in bad faith. The Complainant has thus proven the third and final element required under the Policy. 7. Decision
For 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.
Michael A. Albert
Sole Panelist
Dated: March 4, 2010
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