Generic Top Level Domain Name (gTLD) Decisions

The National Arbitration Forum

P.O. Box 50191

Minneapolis, Minnesota 55405 USA

____________________________________

BEFORE THE NATIONAL ARBITRATION FORUM

Complainant:

HEEL QUIK!, INC.
1730 Cumberland Point Drive, Suite 5
Marietta, GA 30067
email: hqcorp@bellsouth.net File Number: 92527
(770) 951-9440 (Telephone)
(770) 933-8268 (Facsimile) Filing Date: 1/24/00

Respondents:

MICHAEL H. GOLDMAN,
BARBARA S. GOLDMAN,
QRS CORP.,
MAIL QUIK ENTERPRISES, LTD., and
AMERISHARE ENTERPRISES, LTD.,

d/b/a Heel Quik!
544 Whitecover Circle
Charlottesville, VA 22901
(804) 973-7373 (Telephone)
(804) 964-1100 (Facsimile)

1980 Rio Hill Center
Suite #4 (Inside of the Rio Hill Kroger’s)
Charlottesville, VA 22901
(804) 973-7373 (Telephone)
(804) 964-1100 (Facsimile)

DOMAIN NAME DISPUTE ADMINISTRATIVE PANEL DECISION

Domain Name(s): heelquik.com; heelquik.org

Domain Name Registrar: Network Solutions (for heelquik.com)

Date of domain name registration: 7/3/97 (for heelquik.com)

Date Complaint was sent to Respondent in accordance with Rule 2(a): 1/24/2000

PROCEDURAL FINDINGS

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on January 24, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified Network Solutions, Inc. (Network Solutions), the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondents submited a response to The Forum within twenty (20) days pursuant to Rule 5(a). On February 19, 2000, the Respondents submitted an additional response which has been considered.

On July 3, 1997, Respondents registered the domain name "heelquik.com" with Network Solutions, Inc., the entity that is the Registrar of the domain name. The evidence suggests that on December 7, 1999, Respondents registered the name "heelquik.org" with a registrar of domain names. On January 25, 2000, Network Solutions verified that the Respondents are the Registrant, and that Network Solutions was the Registrar, for the domain name "heelquik.com", but could not verify the registration for the domain name "heelquik.org".

By registering the domain name, "heelquik.com" with Network Solutions, the Respondent agreed to resolve any dispute regarding its domain name through ICANN’S Uniform Domain Name Dispute Resolution Policy. However, as the registration of the domain name "heelquik.org", is not verified; there is no evidence that this domain name is subject to dispute resolution through ICANN’S Uniform Domain Name Dispute Resolution Policy.

The complaint is based on the following trademark or service marks: Heel Quik!, registered September 4, 1984.

The above-captioned matter came on for an administrative hearing on March 1, 2000 before the undersigned on the Complaint of HEEL QUIK!, INC., hereafter "Complainant", against MICHAEL H. GOLDMAN, BARBARA S. GOLDMAN, QRS CORP., MAIL QUIK ENTERPRISES, LTD, and AMERISHARE ENTERPRISES, LTD., d/b/a Heel Quik!, hereafter "Respondents". Complainant is represented by Robert C. Port, Hassett Cohen Goldstein & Port, LLP, One Lakeside Commons, 990 Hammond Drive, Suite 990, Atlanta, GA 30328-5529. The Respondents represent themselves. This matter is submitted for decision in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy") and Rules (the "Rules"). Upon the written submitted record, and the following findings and conclusions, I find for the Complainant.

FINDINGS OF FACT

1. The Complainant is the owner of the trademark "HEEL QUIK", United States Registration No. 1,293,195. The goods and services with which the mark is used relate to retail stores specializing in shoe repair, clothing alterations, and monogramming.
   
   
2. Heel Quik!, Inc. is the trademark holder of the mark HEEL QUIK, and the licensor/franchiser of businesses offering a unique retailing concept for stores specializing in shoe repair, clothing alterations, and monogramming. Currently, there are 724 Heel Quik! locations throughout the United States, Canada and 31 foreign countries.
   
   
3. The system developed and licensed by Heel Quik!, Inc. uses the trademark HEEL QUIK as an integral identifying mark in association with its business, and Heel Quik! has invested significant time, resources, and effort in advertising, promoting, and establishing goodwill in the mark in association with its business. The mark has been in use throughout the United States and other countries since at least 1983. The HEEL QUIK trademark has acquired distinction and notoriety, and it is subject of a trademark registration in the United States, being Registration No. 1,293,195.
   
   
4. Heel Quik! grants to qualified persons a license to use the HEEL QUIK mark, and other licensed marks, in association with the operation of licensed Heel Quik! stores. Respondents are licensees operating a Heel Quik! store in Charlottesville, Virginia, pursuant to a Standard Licensing Agreement (the "License Agreement") entered into on December 4, 1992 with Heel Quik!
   
   
5. Without any prior authorization or approval by Heel Quik!, and in direct violation of their specific contractual obligations under the License Agreement, Respondents have appropriated for their own use the domain names "heelquik.com" and "heelquik.org", which contain the identical trademark owned by Heel Quik!. Heel Quik! seeks an Order transferring the domain names "heelquik.com" and "heelquik.org" to Heel Quik!.

CONCLUSIONS

Paragraph 4(a) of the Policy requires 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 respect of the domain name; and
3. the domain has been registered and used in bad faith.

The Complainant has shown each of the above.

The domain name "heelquik.com" is identical to Complainant’s registered trademark HEEL QUIK and is confusingly similar to a trademark or service mark in which the Complainant has rights.

Under Paragraph 4c. of the Policy, any of the following circumstances demonstrate the Respondent’s rights or legitimate interests to the domain name:

1. Before any notice to the respondent of the dispute, the Respondent’s 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

1. The Respondent is making a legitimate non-commercial 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.

The Respondent has used, and made preparations to use, the domain name in connection with an offering of its goods and services. However, such use has been a restricted use subject to the terms of a License Agreement. Any use in violation of the License Agreement cannot be a bona fide use within the meaning of the Policy. The License Agreement gave Respondents no ownership interests in the HEEL QUIK trademark. The Agreement merely granted to Respondents the privilege to use the mark with the consent of Heel Quik!. The Agreement provided that the licensee could not register the trademark without the express permission of Heel Quik!.

Although the Respondents may have been known locally by the domain name, such was as licensee or franchisee of an international franchiser and does not constitute common knowledge of the domain name. Local knowledge of a franchisee with a license to use the franchise name locally does not necessarily show common knowledge of the domain name as the knowledge is limited by the terms of the license.

Nor does the evidence show that the Respondent is making a legitimate noncommercial or fair use of the domain name. Accordingly, Respondents have no rights or legitimate interests in respect of the domain name.

The fact that the Respondents may have had a close working relationship with the Complainant, in the absence of an express written agreement to the contrary, does not give the Respondents any rights or interest in the domain name. Nor do the doctrines of waiver and stoppel bar Complainant from asserting its rights to the domain name.

The Respondents have not obtained any rights to the world-wide accessible web sites from the local advertising provisions of the License Agreement.

3. The domain name SHOULD be considered as having been registered and

being used in bad faith.

bad faith. First, the registration was in violation of the terms of the License Agreement.

Second, the Respondents registered 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, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. At various times the Respondents have offered to sell the domain names back to Heel Quik! for either excessive consideration or release from the License Agreement.

Third, the registration by a licensee of a licensed mark without permission can mislead the public into thinking that the registrant owns the mark. Irrespective of the Respondents’ claimed use of the web site for local advertising only, since there is only one unique Internet domain name known as "heelquik.com" and "heelquik.org" all Web users are directed solely and exclusively to the Respondents’ site rather than to the site of Heel Quik!, Inc., the mark holder. By using the domain name, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ web site location.

1. Summary

In summary, the Complainant has shown that (1) the registered domain name "heelquik.com" is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent does not have rights or legitimate interests in respect to the domain name "heelquik.com"; and (3) the domain name should be considered as having been registered in bad faith.

DECISION

I certify that I have acted independently and have no known conflict of interest to serve as the arbitrator in this proceeding. Having been duly selected and being impartial, I enter the following decision:

Based upon the above findings and conclusions, and pursuant to Rule 4(i), I find in favor of the Complainant and direct that the domain name "heelquik.com" registered by Respondents be transferred to Complainant Heel Quik!, Inc. The request to transfer the domain name "heelquik.org" is denied without prejudice as there is no evidence that the domain name is subject to dispute resolution through the Policy.

This 1^st day of March, 2000.

Charles K. McCotter, Jr.

Arbitrator