Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Premier Laser Systems, Inc., Irvine, CA, USA ("Complainant") represented by Jennifer D. Henderson, of O'Melveny & Meyers. The Respondent is Eyesys Vision Group, Sacramento, CA, USA ("Respondent") represented by Gil Allon.

The domain name at issue is "eyesys.com", registered with Network Solutions.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 12, 2001; the Forum received a hard copy of the Complaint on February 12, 2001.

On February 14, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "eyesys.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 8, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@eyesys.com by e-mail.

A timely response was received and determined to be complete on March 7, 2001.

A timely additional submission from Complainant was determined to be complete on March 14, 2001.

On March 19, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.

The Complainant requests that the domain name at issue be transferred from the Respondent to the Complainant.

A. Complainant

Complainant asserts that it is the owner of the registered trademark, "EYESYS", and that the domain name at issue, eyesys.com, is identical or confusingly similar to that trademark. Further, although Respondent may once have had rights or legitimate interests in respect of the domain name at issue, during a period of joint business operations of the parties, due to failed contractual obligations and the bankruptcy reorganization of Complainant, no such rights or legitimate interests remain. Finally, Complainant alleges that, while the domain name at issue was registered in good faith, its continued use constitutes bad faith on the part of the Respondent.

B. Respondent

The Respondent stipulates that the domain name at issue is identical to the trademark owned by Complainant. However, Respondent claims that it rightfully registered eyesys.com with knowledge of Complainant during a period of joint business operations and that Respondent at all times has been the rightful owner of eyesys.com. In fact, Respondent operates a division of its company as "EyeSys Vision Group." Finally, Respondent denies that it has continued use of the domain name at issue in bad faith.

C. Complainant’s Additional Submission

In Complainant’s further argument, it acknowledges that it never "possessed" the domain name at issue, but at all times it has had the right to its use and now the exclusive right to convey the domain to a third party. The mutual dealing of the parties at the time Respondent registered the domain name at issue explains the acquiescence on the part of the Complainant to the past use of the domain name, says the Complainant.

The factual circumstances which have brought the controversy to this Panelist are complicated and convoluted by virtue of dealings between the Complainant and Respondent over a number of years. Only those matters essential to a Decision are discussed.

Premier is the owner of the trademark EYESYS, registered with the U.S. Patent and Trademark Office on August 24, 1993. The trademark, EYESYS, was assigned to Premier by EyeSys Technologies, a Delaware corporation on September 30, 1997.

Premier is engaged in the business of developing, manufacturing and marketing several lines of proprietary medical lasers, fiber-optic delivery systems and associated products for a variety of dental, ophthalmic, and surgical applications. Premier developed a line of products called the EyeSys System 2000 which, when coupled with certain computer products, combines proprietary hardware used for capturing an image and a personal computer to control the hardware and to run the software.

The history of relations between Premier and the Respondent is long. In 1998 Premier acquired a majority of Respondent’s stock and entered into a Manufacturing Agreement, dated March 7, 1999, whereby Premier agreed to manufacture Respondent’s products on an outsourcing basis. Premier offered to acquire the remaining outstanding stock of the Respondent, but no agreement was ever reached regarding such purchase. Premier and Respondent combined their ophthalmic businesses. This collaborative effort formed what Premier and Respondent referred to as the EyeSys Vision Group. Premier marketed its products in the ophthalmic market jointly with Respondent through a sales manager and six territory managers worldwide.

In furtherance of this joint effort, Respondent acquired the domain name at issue on March 4, 1999, and its use served to further the business of both Premier and the Respondent. Since ophthalmic practitioners were familiar with the EyeSys name due to its widespread use (more than 3,500 EyeSys systems were installed), they would naturally recognize the domain name, which linked them directly to the Respondent’s products and to Respondent’s own Web page. Practitioners visited the site and had the opportunity to buy from both companies.

On March 10, 2000, Premier filed a voluntary petition under Chapter 11 of the Bankruptcy Code. On August 31, 2000 Premier completed the sale of its stock in Respondent’s business and its inventory of Respondent’s products to MediVision Medical Imaging, Ltd., the third party to which Complainant wishes to sell the domain name at issue along with other assets. The manufacturing agreement dated between Complainant and Respondent has been terminated. Practically speaking, marketing efforts between the companies has also ceased, because neither company had an incentive to promote the products of the other.

In the course of unwinding their relationship following Complainant’s bankruptcy, Complainant released Respondent from any claim against it in the future with specific exceptions, including "(iii) any claims with respect to ownership of, and rights to use, the Eyesys.com domain name, which claims may only be submitted by either party, at such party’s sole expense, for resolution before an impartial arbitrator, mutually acceptable to the parties, whose determination shall be final and binding upon the parties, nonreviewable (sic) and enforceable in any court of law…"

All agreements that would have linked the sales, marketing, and manufacturing efforts of Premier and Respondent have been terminated. Therefore, Complainant asserts (and this Panelist agrees), Respondent no longer has the right to use the domain name at issue for any purpose relevant to the issues in this case. Respondent never had rights in the "EyeSys" trademark, and any use of the domain name at issue by Respondent ceased to be justifiable when the joint marketing relationship between the parties and the implied consent of Complainant ceased.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The parties stipulate that the domain name at issue is identical or confusingly similar to a trademark in which Complainant has rights.

Following the termination of joint marketing and other business dealings between the parties, any rights of Respondent to use of the domain name at issue ceased, and Respondent has no rights or legitimate interests in respect of eyesys.com. . Therefore, Respondent no longer has the right to use the domain name, because Respondent does not own the EyeSys line of products or have any connection to its products or name. See Gutterbolt, Inc. v. NYI Building Products Inc., FA 96076 (Nat. Arb. Forum Dec. 29, 2000) (finding that the failed purchasing contract between Complainant and Respondent does not give the Respondent rights in the domain name).

This Panelist did not regard the conflicting claims that Respondent offered to sell the domain name at issue to Complainant for an amount in excess of documented out-of-pocket costs associated with the domain name. However, it is a logical assumption from the undisputed facts that, following the termination of joint marketing efforts, that the Respondent is, or at least has recently been, using the domain name at issue in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.

For example, Respondent has been linking the domain name to the Respondent’s principal website and this diverts Internet users by causing confusion with Complainant’s former business. Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website).

The domain name, as innocently registered by Respondent originally, currently reflects a wrongful attempt by the Respondent to attract, for commercial gain, Internet users to its Web site suggesting affiliation with Complainant which no longer exists.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of this Panelist that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, eyesys.com, be transferred from the Respondent to the Complainant.