DECISION

Jeannette Martello v. Cockerell and Associates

Claim Number: FA0410000346319

PARTIES

Complainant is Jeannette Martello (“Complainant”), 107 Fremont Avenue, South Pasadena, CA 91030.  Respondent is Cockerell and Associates (“Respondent”), represented by Heather C. Brunelli, of Thompson & Knight, LLP, 1700 Pacific Ave., Suite 3300, Dallas, TX 75201.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <skindeep.com>, registered with Network Solutions, Inc.

PANEL

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

Judge Karl V. Fink (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 18, 2004; the Forum received a hard copy of the Complaint on October 18, 2004.

On October 19, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <skindeep.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 October 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 15, 2004 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@skindeep.com by e-mail.

A timely Response was received and determined to be complete on November 11, 2004.

An untimely Additional Submission was received from Complainant on November 18, 2004.

An Additional Response was received from Respondent on November 22, 2004.

All submissions by the parties were considered by the Panel.

On December 1, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant has branded herself with the name “Skin Deep”.  Complainant has a talk radio show on topics of health care issues, cosmetic and plastic surgery, and is well-known in the Los Angeles and Orange County metropolitan areas and twenty-five other markets as SKIN DEEP^® with Dr. Jeannette Martello.  SKIN DEEP^® is a registered trademark (Reg. No. 2,777,522); such trademark is incontestable.  Complainant has used this trademark in commerce since before the show’s inception on April 20, 2002.  Complainant’s talk radio show SKIN DEEP^® has become well-known to the public and is recognized as the exclusive source for services under this trademark.

Respondent is using the domain name <skindeep.com> for the website of his business, Cockerell & Associates, a dematopathology laboratory.  The use of the name “Skin Deep” is identical to Complainant’s registered trademark.

Respondent already has domain names registered to his business known as <skincancer.com> and <skinpath.com>, which are more appropriate for the services Respondent’s office provides for dematopathology.

Complainant used the name even before the inception of her talk radio show SKIN DEEP^® (IC 041) on April 20, 2002.  In 2004, Complainant published and sold in commerce the first issue of her magazine also named SKIN DEEP^TM; a magazine on plastic surgery written by plastic surgeons in lay terms for the general public.

Respondent has not branded himself with “Skin Deep” and there is not a single mention of the words “Skin Deep” anywhere on his website.

In April 2004, Complainant became aware that the domain <skindeep.com> was registered to Cockerell & Associates.  Complainant contacted Dr. Cockerell to inquire about the domain name.  Dr. Cockerell told Complainant to name a price and that he would “think about it”.  Thereafter, Complainant suggested $500.00.  Dr. Cockerell responded, “I would need at least six figures and even then I would have to think about it.”  Complainant is a victim of cybersquatting.

B. Respondent

Respondent acknowledges that its domain name <skindeep.com> is identical to the Complainant’s trademark registration.

Respondent has rights and legitimate interests in the <skindeep.com> domain name.  Respondent registered the <skindeep.com> domain name on March 26, 1996, more than 6 years prior to Respondent’s first use of the mark SKIN DEEP.  Respondent runs a dematopathology laboratory that deals with skin pathology and diagnostic evaluations.

Respondent provides an informational website about its dematopathology services at the <skindeep.com> website.  In addition, Respondent has sent a newsletter to its clients since the early 1990’s entitled “Skin Deep.”

Respondent cannot be found to have engaged in bad faith registration of Complainant’s mark if it had never heard of Complainant’s mark at the time of registration.  If Complainant held no trademark rights at the time Respondent registered the domain name, Respondent could not have registered the domain name in bad faith as to Complainant as required by Policy ¶ 4(a)(iii).

Respondent is entitled to maintain the domain name registration or sell the domain name registration at any price Respondent sees fit.

Complainant’s filing of this domain name complaint could be seen as an act of reverse name hijacking.

C. Additional Submissions

Complainant

Respondent claims rights in <skindeep.com> since its registration predates Complainant’s use and registration of the SKIN DEEP ^® mark.  If mere registration were sufficient to establish rights or legitimate interests, then no Complainant could succeed on a claim of abusive registration.

Respondent has misled the Panel with its affirmative misstatement that an informational website is provided at <skindeep.com>.  The domain name <skindeep.com> is a redirect to Respondent’s primary website <skincancer.com>.

Respondent has used <skindeep.com> to redirect traffic to its commercial website.  Panels have found that such redirection neither demonstrates a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

Respondent’s passive holding of the <skindeep.com> domain for eight years is concrete evidence that Respondent lacks rights and legitimate interests in the domain name.

Respondent has not been commonly known by the domain name <skindeep.com>.  Complainant has not licensed the SKIN DEEP® mark to Respondent.

In order to prevail, Respondent is required to provide proof that it was commonly known by <skindeep.com> prior to its registration.

Respondent’s activities are causing a likelihood of confusion for Respondent’s commercial gain.  Respondent’s use of the <skindeep.com> redirect is likely to lead some people to believe that Complainant is connected to Respondent.  Once the improper mark has drawn individuals to Respondent’s site, Respondent’s goal of misdirection has been achieved.

Respondent misled the Panel with an affirmative misstatement that he “provides an informational website about its dematopathology services at the <skindeep.com> website.  The domain <skindeep.com> is a redirect to the primary website <skincancer.com>.    Such an affirmative attempt to mislead the Panel has been found sufficient to rule in favor of Complainant.

Respondent’s failure to assert a good faith intent to use the domain name, coupled with passive holding, is evidence of bad faith registration and use.  Respondent’s failure to develop a primary website using <skindeep.com> for a legitimate use for over 8 years since its registration in 1996, is evidence of bad faith.  Failure to utilize a domain name, coupled with an offer for sale, is even stronger evidence of bad faith.

Pursuant to Policy ¶ 4(b)(i) Respondent has registered and is using the domain name in bad faith by acquiring the disputed domain name primarily for the purpose of selling the domain name in excess of its documented out-of-pocket costs.

Respondent has not proven that it holds <skindeep.com> properly under the Policy and Rules. Therefore, Complainant has a basis in good faith in bringing forth this Complaint and Supplemental Submission.

Respondent

Respondent has made no misstatements, nor has Respondent attempted to confuse the panel.

Respondent admits that the content found at the website at <skindeep.com> is the same as the content at <skincancer.com>.  Respondent uses both domain names to direct to its website.  Many companies use numerous domain names to direct to the same content.

Respondent has submitted evidence showing that it has used and continues to use the term “Skin Deep” as the name of a newsletter regarding its dematopathology laboratories. 

A party can prove rights or legitimate interest in a domain name if it can demonstrate any of the items enumerated in Policy ¶ 4(c).  This would include use of the name in connection with a bona fide offering of goods or services before notice of the dispute.

Respondent never solicited Complainant to buy the domain name.

FINDINGS

For the reasons set forth below, the Panel finds Complainant has not proven all the necessary elements to prevail.

DISCUSSION

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.

Identical and/or Confusingly Similar

Respondent admits that the domain name <skindeep.com> is identical to Complainant’s SKIN DEEP mark.  However, the Panel finds that Complainant lacks standing to bring this Complaint because Complainant did not have rights in the SKIN DEEP mark at the time Respondent registered the disputed domain name on March 26, 1996.  See Transpark LLC v. Network Administrator, FA 135602 (Nat. Arb. Forum Jan. 21, 2003) (finding that since Respondent's domain name registration predated Complainant’s rights in its mark by nearly two years, Complainant had failed to establish Policy ¶ 4(a)(i)); see also Chum Ltd. v. Kashchum Café, AF-0984 (eResolution Oct. 26, 2001) (finding that Complainant's registration date for its trademark was more than two years after the domain name registration and thus Complainant did not have enforceable rights under the Policy); see also Planetfone, Inc. v. 1Soft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003) (“As Complainants have not shown that their rights pre-date Registrant's domain name, Complainants have not satisfied paragraph 4(a)(i) of the Policy.”); see also B&V Assoc., Inc. v. Internet Waterway, Inc., FA 147531 (Nat. Arb. Forum Apr. 15, 2003) (“[T]he Policy . . . was intended to protect against infringement of existing trademark rights by identical or confusingly similar domain name registrations. Therefore, the Panel concludes that Policy ¶ 4(a)(i) assumes that Complainant's rights must predate Respondent's domain name registration, which numerous, previous decisions have held.”).

Complainant has not proven this element.

Rights or Legitimate Interests

The Panel finds that, since Respondent “provides an informational website about its dematopathology services at the <skindeep.com> website,” Respondent is using the domain name in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy.  Response at 3[b].  See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that Respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that Respondent had rights or legitimate interests in the disputed domain name); see also Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (stating that “Respondent is using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site,” as evidence that Respondent was making a bona fide offering of goods or services with the disputed domain name).

Moreover, the Panel finds that Respondent does have rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy because Respondent’s registration of the disputed domain name preceded any use of the SKIN DEEP mark on the behalf of Complainant. See Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000) (denying transfer of the domain name because Respondent’s use of the PARACHUTE mark and the domain name in question preceded any use of the service mark by Complainant); see also Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that Respondent does have a legitimate interest in the domain name where Complainant applied for registration of the mark after Respondent registered the domain name and Complainant has not proven any earlier use of the mark); see also Warm Things, Inc., Inc. v. Weiss, D2002-0085 (WIPO April 18, 2002) (finding that Respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before Complainant had established rights in its alleged mark)

Complainant has not proven this element.

Registration and Use in Bad Faith

The Panel finds that Respondent did not register the domain name primarily to sell the domain name registration to Complainant or a competitor of Complainant since Complainant had not commenced its use of the SKIN DEEP mark at the time of the domain name registration.  See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (finding that “the mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling . . . the domain name to the Complainant”).

The Panel finds that bad faith registration and use is not established when the disputed domain name registration predates a complainant’s rights in a mark.  Therefore, the Panel finds that Respondent could not have violated paragraph 4(a)(iii) of the Policy.  See Jensen Research Corp. v. Future Media Architects, Inc., CPR00 0310 (CPR May 20, 2003) (“Some panelists have interpreted paragraph 4(a)(i) of the Policy to require proof of trademark rights in existence as of the date on which the disputed domain name was registered or acquired. Other panelists consider present-day trademark rights sufficient under paragraph 4(a)(i), but require proof of trademark rights that predate the domain name in order to satisfy the bad faith registration requirement contained in paragraph 4(a)(iii).”); see also Reid v. Chao, FA 154587 (Nat. Arb. Forum May 29, 2003) (finding that Respondent could not have registered the disputed domain name in bad faith where its registration came months before Complainant filed its trademark application and no evidence of common-law rights in the mark were submitted to the Panel); see also Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“We are of the unanimous view that the trademark must predate the domain name.”); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent registered the domain prior to Complainant’s use of the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is impossible for Respondent to register a disputed domain name in bad faith if Complainant's company did not exist at the time of registration); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where Respondent registered the domain name in question before application and commencement of use of the trademark by Complainant); see also Matchmaker Int’l Dev. Corp. v. Kaiser Dev. Corp. Inc., FA 146933 (Nat. Arb. Forum May 9, 2003) (“If Respondent registered the domain name for legitimate purposes, or if it reasonably believed at the time of registration that those purposes were legitimate, then the registration was not in bad faith.”).

Complainant has not proven this element.

DECISION

Since Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Judge Karl V. Fink (Ret.), Panelist
Dated: December 13, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/1570.html