14th Mar 2001
Vision Center Northwest Inc et. al. v. Individual
Claim Number: FA0101000096478
Complainant is Vision Center Northwest, Inc et. al., Indianapolis, IN, USA ("Complainant") represented by Craig Pinkus, of Lowe, Gray, Steele, & Darko LLP. Respondent is Individual, Indianapolis, IN, USA ("Respondent") represented by Ari Goldberger.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "drtavel.com", registered with Tucows.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge they have no known conflict in serving as panelists in this proceeding. The Panelists are the Hon. James Buchele, Hon. Diane Cabell and Hon. Carolyn Marks Johnson.
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 22, 2001; the Forum received a hard copy of the Complaint on January 22, 2001.
On January 22, 2001, Tucows confirmed by e-mail to the Forum that the domain name "drtavel.com" is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 January 29, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 19, 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 email@example.com by e-mail.
A timely response was received and determined to be complete on February 19, 2001.
On February 28, 2001, pursuant to Respondent’s request to have the dispute decided by a Three Member Panel, the Forum appointed Hon. James Buchele, Hon. Diane Cabell and Hon. Carolyn Marks Johnson as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant urges that in violation of ICANN Policy, Respondent has registered a domain name that is identical to or confusingly similar to a mark in which Complainant has rights; that Respondent has no rights to or legitimate interests with regard to the domain name in issue; and that Respondent registered and used the domain name in bad faith.
Respondent asserts that in keeping with ICANN Policy, Respondent has registered a domain name that utilizes Respondent’s name for the purpose of providing a legal clinic over the Internet, that Respondent has rights to and legitimate interests in the use of Respondent’s name and that Respondent has not acted in bad faith.
This dispute arises from a family dispute between father and son over who is entitled to register and use their common surname. The Complainant, a business, is owned in part by the father, Dr. David Tavel, an optician who began his career in 1940 and was practicing by 1960 under the name Dr. Tavel’s Vision Centers and Premium Optical. Dr. Tavel, the optician has some twenty outlets that provide optical services. The Respondent son is Ronald J. Tavel, a licensed attorney, also owned one of the family outlets but parted ways with the family business in 1980. Complainant urges that Respondent began using the name Dr. Tavel’s Self Help Legal Clinic" in 1996 and initially registered "drtavel.com" on March 25, 1997 but transferred it to "Individual," the current Registrant, on August 16, 2000. The Administrative, Technical and Billing contacts of the disputed domain name are R. J. Tavel FreedomLaw@IQuest.com.
Although Complainant and Respondent have a long history of negotiations, they have not resolved their differences. Complainant urges that it is unethical for Respondent Tavel to use Doctor before his name and that it is unethical for a holder of a juris doctor to use "Doctor" before his name because the use of Doctor carries an implication of medical doctor.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) 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
Complainant asserts that it has rights in the DR. TAVEL mark because Complainant’s name is Dr. David Tavel and he operates his eye care business under the names "Dr. Tavel One Hour Optical" and "Vision Values by Dr. Tavel." But the issue is whether the optical Dr. Tavel and the legal Dr. Tavel have rights to the use of their own names to engage in different businesses. UDRP Panels have held that an individual has common law rights in his or her name. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name "Julia Roberts" has sufficient secondary association with the Complainant that common law trademark rights exist); Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Complainant has common law rights to her name); Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights in his famous name MICK JAGGER).
Complainant contends that Respondent’s domain name is confusingly similar to Complainant’s marks. See MPL Communications Ltd v. Hammerton, FA 95633 (Nat. Arb. Forum Oct. 25, 2000) (finding that the domain names registered by the Respondent are confusingly similar to that of the common-law marks Paul McCartney and Linda McCartney). But Respondent counters that the domain name merely contains a name, not a trademark. Respondent also contends that Complainant does not have rights in the DR. TAVEL mark because Complainant does not use the "Dr. Tavel" term alone since Complainant’s businesses are called "Dr. Tavel One Hour Optical" and "Vision Values by Dr. Tavel." Respondent asserts that personal names or trade names are not protected by the UDRP. See Sumner, p/k/a Sting v. Urvan, D2000-0596 (WIPO July 24, 2000) ("It is clear from this statement that personality rights were not intended to be made subject to the proposed dispute resolution procedure.").
Respondent claims further that it is not appropriate for this Panel to decide the ethics or appropriateness of an attorney referring to himself as "doctor." The Policy requires only that the Panel find that Respondent also is commonly known by the DR. TAVEL mark in order to establish rights and legitimate interests under Policy ¶ 4(c)(ii).
Further, Respondent asserts that the domain name is not confusingly similar to Complainant’s name. See Capt’n Snooze Management v. Domains 4 Sale, D2000-0488 (WIPO July 10, 2000) (stating that while "Snooze is an integral part of Complainant’s trademark registrations…this does not entitle the Complainant to protection for that word alone."); Kittinger Co. v. Kittinger Collector, AF-0107 (eResolution May 8, 2000) (finding that <kittingercollector.com> is not identical or confusingly similar to a trademark of the Complainant because the use of Complainant's trademark in this domain is purely nominative, the domain name as a whole is descriptive of the Respondent's business, and the domain name is unlikely to cause confusion with Complainant's business).
The Panel finds that the domain name "drtavel.com" is confusingly similar to a portion of Complainant’s mark.
Rights to or Legitimate Interests
Section 4(c) of the UDRP provides that Respondent has an absolute defense to a complaint where Respondent can show a "right or legitimate interest" in the domain name. On April 28, 2000, some eleven months before the complaint was filed, Respondent applied for a trademark registration with the United States Patent and Trademark Office for the mark "DRTAVEL". This would qualify as a "demonstrable preparation to use the domain name" in connection with a bona fide offering of goods or services. Policy Section 4(c)(i) Even the Complaint acknowledges that Respondent has been using the domain name as a site for "Dr. Tavel’s Self Help Legal Clinic" since 1996. The provision of free information on the website, qualifies as a bona fide offering of a service. Policy Section 4(c)(i)(iii). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb 2, 2001) (finding legitimate interests in the domain name <racegirl.com> where domain name is generic and generally descriptive of Respondent’s love of racing and where Respondent intends to use the domain name for the noncommercial purpose of encouraging women racecar drivers.)
The papers with the Complaint and Response further suggest that the five-year-old website operated by Respondent qualifies as a business that is commonly known by the name and should establish some common law rights for use of the name by Respondent. Policy 4(c)(ii).
Complainant contends that Respondent has no rights or legitimate interests in the domain name "drtavel.com" such as would satisfy Policy ¶ 4(c). Complainant urges that Respondent is not commonly known as Dr. Tavel. Policy ¶ 4(c)(ii). Complainant further asserts that although Respondent holds a law degree, it is inappropriate for the holder of such a degree to be referred to as "doctor." Complainant adds as well that Respondent’s use of the domain name is not bona fide, legitimate or fair. Policy ¶ 4(c)(i), (iii). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark); AltaVista v. Krotov, D2000-1091 (Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
Respondent submitted proof and authority to rebut Complainant’s argument that redirection of the domain name to other unrelated websites is evidence of no rights or legitimate interests in the domain name. See Shirmax Retail Ltd. v. CES Marketing, Inc., AF-0104 (eResolution Mar. 20, 2000) (stating "[G]iven the generic nature of the domain name, [Respondent] has at least a tenable argument that its use on the web merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark"); Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001) (finding that redirection of a generic domain name, such as "tammy.com," to adult oriented site is a bona fide use of the domain name and thus Respondent has rights in the domain name). Respondent contends that the domain name in issue was registered for use in connection with a legal website offering legal information. Respondent claims rights and legitimate interests in the domain name under Policy ¶ 4(c)(i), (iii), urging that "drtavel.com" is a bona fide site offering goods and services for a non-commercial purpose. See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb 2, 2001) (finding legitimate interests in the domain name <racegirl.com> where domain name is generic and generally descriptive of Respondent’s love of racing and where Respondent intends to use the domain name for the noncommercial purpose of encouraging women racecar drivers.)
The Panel finds that Respondent has a right to and interest in using his last name as part of a domain name that pursues a legitimate business endeavor that is different from Complainant’s business.
Registration and Use in Bad Faith
Complainant contends that Respondent registered and used the domain name in bad faith. Complainant urges that Respondent registered the domain name in question after business negotiations began regarding the purchase of Respondent’s share of the family-owned business. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the "totality of circumstances"). Complainant also urges that Respondent changed the registration and contact information for the domain name after this proceeding was commenced. See Banco Mercantil del Norte, S.A., v. Servicios de Comunicación En Linea, D2000-1215 (WIPO Nov. 23, 2000) (transferring the domain name where the constant change of parties having ownership of the domain name evidences bad faith registration and use).
Complainant urges that Respondent acted in bad faith because he registered the domain name for the purpose of selling it to the Complainant. Policy ¶ 4(b)(i). Complainant contends that Respondent indicated in correspondence that the domain name (along with one other domain name) was "worth at least $150,000." See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name).
Complainant further urges that Respondent knew of Complainant’s distinct mark and that Respondent selected the domain name in question to capitalize on the good will associated with the mark. See Dr. Karl Albrecht v. Eric Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) ("The Respondent intentionally registered a domain name which uses the Complainant’s name. There is no reasonable possibility that the name <karlalbrecht.com> was selected at random. There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith."); Thibodeau, v. Yomtobian, FA 94868 (Nat. Arb. Forum June 28, 2000) (finding bad faith and willful disregard of Complainant’s common law mark in her name, Dr. Lauren, where Respondent registered the domain name <doctorlauren.com> and used it to link to an adult website).
Complainant contends that Respondent linked the domain name in to a website containing "click-through" links to adult-oriented websites and gambling/casino websites. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material) and that by linking the domain name to <freedomlaw.com> Respondent is attracting Internet users to his website, for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, endorsement, or affiliation of the website in violation of Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v Jaspreet Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its website for commercial gain).
Respondent contends that the domain name was not registered or used in bad faith. Respondent rejects Complainant’s arguments that the domain name was registered with the intent to sell it for consideration in excess of out of pocket costs. Respondent also emphasizes that the elements of Policy ¶ 4(b)(iv) cannot be established, as Respondent is not using the domain name for commercial gain. See generally Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent successfully rebutted Complainant’s averments that it registered and used the domain name at issue in bad faith and that Complainant produced no credible evidence of bad faith on the part of Respondent); See also Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb 2, 2001) (finding no bad faith registration or use of the domain name <racegirl.com> where no evidence was presented that Respondent intended to divert business from the Complainant or for any other purpose prohibited by UDRP Rules).
The Panel finds that Complainant did not satisfy its burden under Policy 4(b)(i)(ii)(iii)
of showing that Respondent acted in bad faith when he registered a domain name using his own last name to offer legal information at the site. Complainant alleged but did not bring proof that Respondent registered the domain name with an intent to sell it to Complainant for an amount in excess of reasonable costs of registration. Complainant has not shown that Respondent engaged in any pattern of registering domain names for a profit and no specific information has been produced to show that Respondent’s site has interfered with the Complainant’s business.
Considering the totality of the circumstances, this Panel finds that Complainant has failed to satisfy its burden of showing that Respondent acted in bad faith in registering and developing the domain name in issue.
Based on the above, the Panel finds that the relief that Complainant requests should be Denied; it is accordingly, Ordered that the domain name in issue shall remain with Respondent.
Hon. Carolyn Marks Johnson, For the Panel
Dated: March 14, 2001.