Complainant is Mel Dixon D.D.S., United States of America (“United States”), self-represented.
Respondent is David Maxwell Dixon. M.D, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2019. On November 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 2, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2019. The Center received two email communications from Respondent on December 4, 2019. The Center appointed Robert A. Badgley as the sole panelist in this matter on December 11, 2019. 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. On December 16, 2019, the Panel issued Procedural Order No. 1, which stated: “The Panel requests that the Parties provide the following information (supported by documentation and/or affidavits where possible) to the Center (WIPO) on or before December 27, 2019: 1. The Parties shall indicate whether their father was a dentist and, if so, whether and when he retired. 2. Respondent shall explain why he registered the Domain Name in 2007. 3. Complainant shall respond to the allegation that he had “full knowledge” of Respondent’s ownership of the Domain Name for the past 12 years. 4. The Parties may respond to the specific factual allegations made in the Complaint and in the two December 4, 2019 emails from Respondent to the Center.” On December 20, 2019, Complainant replied to Procedural Order No. 1, and on December 27, 2019, Respondent replied to Procedural Order No. 1. 4. Factual Background Complainant Mel Dixon is a dentist. Respondent David Dixon, MD, is Complainant’s brother. The Parties’ father, Melvin David Dixon (“Father”), was also a dentist. He died in November 2010. Respondent is the executor of Father’s Decedents Trust. According to Complainant, he and Respondent are “estranged siblings” who “have not spoken to each other in years.” Indeed, Complainant states in his reply to the Panel’s Procedural Order No. 1 that their estrangement long predated the 2007 registration of the Domain Name. According to Complainant, Father was a dentist between 1957 through 1997, in the same office in which Complainant practices dentistry today. Complainant states that he acquired Father’s practice in 1999, and that Father “had long since retired the year the domain name was purchased in 2007.” According to Respondent, “Dad probably ‘retired’ around 2000; although he stayed active in the profession until his death in 2010.” Complainant alleges that his “distinctive professional name,” Mel Dixon, DDS (“DDS” means Doctor of Dental Surgery), has become a common law trademark based on Complainant’s 30 years of practicing dentistry “at the highest level.” Annexed to the Complaint are various examples, such as signage, publications, and social media pages, that Complainant has used MEL DIXON DDS as a source identifier in commerce for his dental services. Respondent has not seriously challenged Complainant’s assertion of common law trademark rights. Complainant alleges that in April 2007, he hired a firm called Prosites “to manage his melvindixondds.com domain name.” At that time, Prosites advised Complainant that the Domain Name ( Respondent registered the Domain Name on April 4, 2007. The Domain Name currently is redirected to the Nickelodeon website for Switzerland (www.nick.ch), and therefore the Domain Name resolves to a website featuring the cartoon character SpongeBob SquarePants and German text. According to Respondent, as Father aged “he really loved Nickelodeon and Sponge Bob.” Respondent states that, “whenever I really miss my Dad, I just click on his name and it goes to his favorite cartoon page.” Complainant counters that “it is simply untrue that [Father] loved to watch SpongeBob SquarePants.” Complainant notes further that the Domain Name was registered three years before Father died, which indicates that the Domain Name could not have been registered as some sort of tribute to Father. Complainant asserts that the Domain Name had resolved to a website featuring his dental services for many years, and annexed to his supplemental pleading various screenshots to validate this claim for the period from January 28, 2011, until February 22, 2019. At some point after February 22, 2019, Complainant asserts, the Domain Name began to be redirected to the Nickelodeon SpongeBob page. According to Complainant, he first became aware that he was not the owner of the Domain Name in November 2019. After he discovered that the Domain Name was now resolving to a cartoon site and not a site promoting his business, Complainant contacted Prosites. At that point, Prosites forwarded to Complainant on April 4, 2019, an email dated November 5, 2018, from Respondent to the Prosites employee (“Elena”) with whom Respondent had communicated back on April 4, 2007. Elena had left the firm, however, and Respondent’s November 2018 email went unread until Prosites investigated the matter in April 2019 at Complainant’s request and found the email in Elena’s inbox. In any event, Respondent’s November 5, 2018, email to the former Prosites employee stated: “I have not heard back from you regarding the offer to sell the [Domain Name] last month. As you can see I have forwarded the domain name for over 11 years since your email below [the April 4, 2007 email from Elena to Respondent with instructions about redirecting the Domain Name]; but I have actually had it since, I believe 2001. I also maintained a website for the doctor [presumably, Complainant] since the 2001 creation date until your company took over in 2007. FYI – Dr. Dixon [Complainant] can purchase his name brand domain for $2,400.00 – approximately what I have in it over the 17 years. If Dr. Dixon decides he does not value this URL it will be going on sale at GoDaddy’s auction block November 16th, 2018 for $2,400.00. At that date domain forwarding will cease and any searches done using that domain will land on a For Sale page.” The Whois record states that the Domain Name was first registered on April 4, 2007, which is inconsistent with Respondent’s stated belief that he had registered the Domain Name several years earlier. The record is ambiguous on this point. In his reply to Procedural Order No. 1, Respondent stated, among other things, that he had registered the Domain Name (and the domain name Complainant has submitted into the record invoices from Prosites to Complainant over the years (specifically, six annual invoices in April each year 2007 through 2012) showing a USD 30 charge to Complainant for the registration of the Domain Name. Respondent counters that the Prosites invoices are mistaken at best, since Respondent had bought and paid for the Domain Name 12 years ago. Again, Respondent has produced no documentary proof to corroborate his claims to have spent time and money on the Domain Name. It bears noting that the Panel’s Procedural Order No. 1 (item 4) invited both Parties to respond to any contentions in the other Party’s initial submissions to the Panel. Both Parties did so. In his Complaint, Complainant alleged that “Respondent told the Complainant that he purchases domains to financially harm and/or distort individuals.” That allegation was not addressed by Respondent in reply to Procedural Order No. 1, and hence it is undisputed in this record. Respondent added in his final submission that Complainant is in violation of a contract the brothers signed three years ago, in which they agreed not to harass or disparage one another. Finally, the record indicates that Respondent has registered more than 1,000 domain names over the years, and he describes himself as an “amateur Internet web geek.” 5. Parties’ Contentions A. Complainant Complainant contends that he has satisfied all three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent disputes many of Complainant’s contentions, as will be taken up in context below. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and The Panel concludes that Complainant has rights in the common law mark MEL DIXON DDS through use of that mark demonstrated in the record. Respondent did not seriously dispute Complainant’s claim to common law trademark rights until he made a conclusory statement in his final submission disputing such trademark rights. It will be recalled, however, that Respondent referred to the Domain Name as Complainant’s “name brand domain” in his November 5, 2018, email to Elena at Prosites. The Panel also finds that the Domain Name is identical to Complainant’s common law trademark. Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. The Panel finds Respondent less credible than Complainant, at least as respects the record in this case. First, Respondent has not provided any documentary proof to back up his story, about registering the Domain Name back in 2001, that he spent money on the Domain Name, that Father was a SpongeBob fan, or that Father remained active in the dental field long after his retirement, etc. Second, Respondent’s reaction to contradictory evidence or argument is generally in the nature of “that’s farcical” or “the invoices are wrong.” Someone wrongly accused has every right to be incensed, but flippancy and insults do not substitute well for contradictory facts. Complainant produced receipts from Prosites to show that Prosites was billing Complainant each year for the registration of the Domain Name. Respondent has provided no such evidence. Third, while Complainant certified in his Complaint that the information in the Complaint is to the best of his knowledge complete and accurate, Respondent has not done so. His response to the Complaint took the form of a pair of emails to the Center. This is by no means dispositive, but it counts for something. Fourth, as noted above, Complainant alleged that Respondent had told him that he registers domain names “to financially harm and/or distort individuals.” Respondent never denied this statement, either in his original email responses to the Complaint or in his final submission after being invited by the Panel to respond to any part of the other Party’s allegations. As far as the incomplete and somewhat confused record here shows, the Panel finds it more likely than not that Respondent was mistakenly contacted by Prosites in April 2007, and Respondent registered the Domain Name in his name. The Panel finds it implausible that Respondent, long estranged from Complainant by that time and many years after Father had retired, had registered the Domain Name in 2007 with Complainant’s knowledge and approval, and that Respondent was happy to have the Domain Name pointed to a website promoting Complainant’s business. Rather, it seems the most likely explanation was that Respondent was going to hold the Domain Name registration and await some opportunity to make money from the Domain Name via sale or “mess with” his estranged brother (such as, for example, by linking the Domain Name to a SpongeBob website). The foregoing account, found by the Panel on this imperfect record to be more likely than any other scenario, does not invest Respondent with rights or legitimate interests vis-à-vis the Domain Name. Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or The Panel concludes that Respondent has registered and used the Domain Name in bad faith, essentially for the reasons set forth above in the “rights or legitimate interests” section. The Panel notes that the four “bad faith” factors set forth above are not exclusive but only illustrative. It is undisputed in this record that Respondent is something of a domain name hobbyist, that he and Complainant have been estranged since before the April 4, 2007, registration date of the Domain Name, and that Respondent told Complainant at some point that he registered domain names to harm or “distort” people. The Panel notes that the Domain Name is identical to Complainant’s common law mark and that the Domain Name is being used to redirect to the website of Nickelodeon. Such conduct constitutes bad faith registration and use under the Policy. Complainant has established Policy paragraph 4(a)(iii). 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 Robert A. Badgley
(ii) 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
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Sole Panelist
Date: December 28, 2019
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