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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oxygen Media, LLC v. Oana Marinescu
Case No. D2000-0582
1. The Parties
Oxygen Media, LLC ("Oxygen"), 75 Ninth Avenue, 7th Floor, New York, New York, 10011, United States of America
Oana Marinescu, she-commerce, 2007-1 Palace Pier Court, Toronto, Ontario M8V-3W9, Canada
2. The Domain Name(s) and Registrar
Network Solutions Inc.
3. Procedural History
The Complaint was received by WIPO by email on June 12, 2000, and in hard copy on June 15, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administration Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). On June 15, 2000, the Respondent sent a message to WIPO stating that she would be participating actively in the complaint procedure. On July 3, 2000, WIPO informed the Respondent that her response was due on July 24, 2000.
On July 26, 2000, no response having been received, WIPO issued a Default Notice drawing the Respondent’s attention to the consequences of her having failed to submit a response. On July 27, 2000, the Respondent sought a 48 hour extension of time stating that she was "fully prepared with a 3000 word document." The same day, with the Complainant’s consent, WIPO granted the Respondent an extension until July 29, 2000, for the filing of the Response. Again the same day, the Respondent thanked WIPO for its indulgence and stated that "the hard copies will leave Toronto on Saturday, July 29, as will the electronic copy".
On July 29, 2000, the Respondent wrote to WIPO expressing astonishment at the fact that the Attorney representing the Complainant is also a WIPO Arbitrator. She asserted that this represented a gross conflict of interest and said that it had "totally in [her] eyes sullied the integrity of WIPO and its impartiality." She sought a 30-day extension of time in order to take legal advice. She then went on to say that she would not be sending in her response.
WIPO responded on August 1, 2000, drawing her attention to the fact that the Complainant’s Attorney would have no part to play in the Panel’s decision and refusing a further extension. WIPO went on to say that if the Respondent submitted a Response out of time, the Panel would decide in its sole discretion whether to consider any such response.
No further submissions have been received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel’s Decision is August 16, 2000.
For the record, had the Respondent put in her Response out of time, the Panel would have been likely to have accepted it, she clearly having been under the mistaken impression that the Complainant’s Attorney would have formed part of the Administrative Panel.
4. Factual Background
Oxygen Media, LLC ("the Complainant") is a media company that provides branded content for women through the internet, cable television and other media.
The Complainant’s flagship website, oxygen.com, was launched in September 1998. That site has since been expanded to include inter alia the following sites, namely "thriveonline.com", "momsonline.com", "womenshands.com".
Moms Online is registered as a service mark in the United States under number 2074633, whereas Thriveonline and Women’s Hands are the subject of a variety of service mark and trademark applications in the name of the Complainant, all pre-dating the commencement of the dispute between the parties. The pending applications are in the names of the Complainant. The Moms Online registration is in the name of Moms-Club Inc, whose successor entity and trademark rights have been acquired by the Complainant. Moms Online, Thriveonline and Women’s Hands, whether in the form in which the service mark registrations have been obtained or applied for or whether in the form used online are hereafter together referred to as "the Service Marks".
On or about December 21, 1999, Gloria Maren (a.k.a. Marinescu) ("Ms. Maren") contacted the office of the Complainant’s Attorney in New York and, for the next six months or so, a passionate and largely one-sided correspondence ensued by email, on Ms. Maren’s websites and by conventional mail.
The correspondence concerns the names SHE-COMMERCE and SHE COMMERCE, the first being the name adopted by Ms. Maren and her sister, the Respondent, for their business in Canada and the latter being a name selected in the United States by the Complainant for use in relation to its business. The dispute is hereinafter referred to as "the She Commerce dispute". The detail of the dispute is irrelevant. Suffice it to say that Ms. Maren became very upset at what she saw as the Complainant’s rebuff to her initial approach in December 1999. Her attitude hardened when she learnt in January or February 2000 that the Complainant had filed a trademark application for She Commerce in Canada.
On or about February 27, 2000, the Respondent registered "momsonline.net", "thriveonline.net" and "womenshands.net" ("the Domain Names"). In correspondence, on one of her websites and in interviews with the press, Ms. Maren made it abundantly clear that her purpose in registering the Domain Names was to respond in kind to what she saw as the Complainant’s underhand dealing in a close variant of her name She-Commerce.
On April 17, 2000, the Complainant registered the domain name shecommerce.com and on May 23, 2000, the Complainant’s Attorneys wrote to Ms. Maren informing her that the Complainant had now lost interest in the SHE COMMERCE name and threatening legal action if the Domain Names are not handed over to the Complainant.
On May 29, 2000, Canadian Attorneys representing Ms. Maren replied by way of a letter to the Complainant’s Attorney, which was marked "without prejudice". The Panel, not being certain as to the effect of the "without prejudice" tag in this complaint procedure, has ignored the content of that letter for the purpose of this Decision.
At some stage prior to the filing of this Complaint, the ownership record for the Domain Names was changed to record Ms. Maren’s sister, the Respondent, as the registered owner of the Domain Names.
5. Parties’ Contentions
The Complainant contends that:-
(i) The Domain Names are identical to the Service Marks owned by the Complainant. The Complainant categorises the Service Marks as both famous and distinctive at the date of registration of the Domain Names. The Complaint was accompanied by a substantial body of supporting evidence.
(ii) Neither the Respondent nor her sister have any rights or legitimate interest in the Domain Names. The Domain Names do not bear any relationship to the business of the Respondent or her sister.
(iii) The Domain Names were registered as a bad faith reaction to a good faith business dispute over rights to an entirely different trademark.
(iv) The Respondent has not used the Domain Names in connection with a bona fide offering of goods or services nor has the Respondent been commonly known by any of the Domain Names.
(v) The Respondent is not making a legitimate non-commercial fair use of the Domain Names.
(vi) It is clear from Ms. Maren’s emails that she registered the Domain Names strictly for the purpose of harassing the Complainant, forcing the Complainant to "buy back" the Domain Names in return for the transfer to Ms. Maren of the "shecommerce.com" domain name registered by the Complainant.
(vii) Ms. Maren registered the Domain Names in order to direct traffic away from the Complainant’s websites and to the Respondent’s websites.
(viii) The Respondent’s registration and use of the Domain Names is also in bad faith. The Complainant believes that the Respondent accepted the transfer of the Domain Names from her sister with full knowledge of the latter’s dispute with the Complainant. This effort to shield the Domain Names is a further indication of the sisters’ bad faith.
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:-
(i) the Domain Names are identical or confusingly similar to the Service Marks in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Names or any of them; and
(iii) the Domain Names have been registered and are being used in bad faith.
Before dealing with these three elements the Panel considers the relative positions of Ms. Maren against whom most of the Complainant’s Complaints are directed and her sister, the Respondent, who only features because she relatively recently was registered as the owner of the Domain Names.
Does the transfer of the Domain Names affect the issue? The Panel is firmly of the view that in this case the transfer does not affect the issue. It might have been different if the transferee, the Respondent, had been an independent third party with an independent bona fide right to the Domain Names. That is not this case.
In Ms. Maren’s email of December 23, 1999, to the Complainant’s Attorney she describes herself and her sister as the "She-Commerce founders". In her letters published on her website she constantly uses the term "we" and identifies "we" as herself and her sister, Oana. The ownership record for the Domain Names records her address as being "she-commerce".
In this case either the Respondent continues to be Ms. Maren’s business partner or she is her successor or she is allowing herself to be used as Ms. Maren’s alter ego. At all material times she must have been well acquainted with nature of the She Commerce dispute.
No explanation has been given for the transfer and, in all the circumstances, the Panel feels justified in coming to the conclusion that it was simply a device intended to make the Complainant’s task more difficult in recovering the Domain Names.
Identical or Confusing Similarity
The Complainant contends that the Domain Names are identical to the Service Marks. In certain respects they may be said to be identical. For present purposes it is sufficient that they are confusingly similar to the Service Marks and the Panel so finds in the case of each of them.
Rights and Legitimate Interest of the Respondent
The circumstances surrounding the registration of the Domain Names are such that the Respondent and/or her sister knew perfectly well that they were registering domain names in which they had no rights or legitimate interest. Their very objective was to register names which they believed (and acknowledged on their website) belonged to the Complainant. The Respondent has not sought to assert that she has any such rights or legitimate interests.
In the Panel’s view there is no need for it to review each of the Complainant’s contentions in this regard.
The Panel finds that the Respondent has no rights or legitimate interest in any of the Domain Names.
Hereunder, the Complainant has to show bad faith in the registration of the Domain Names and bad faith in their use.
As indicated above, the Complainant contends that registration of the Domain Names was:-
(i) a bad faith reaction to developments in an unrelated dispute;
(ii) activated by a desire to harass the Complainant and force the Complainant to do a horse trade with the Complainant over the "shecommerce.com" domain name; and
(iii) intended to divert traffic away from the Complainant’s websites to the Respondent’s/Ms. Maren’s websites.
The Panel observes that the shecommerce.com domain name cannot have entered Ms. Maren’s deliberations at the time of registration of the Domain Names since the latter pre-dated the former. Nonetheless the Panel has no hesitation in finding that registration of the Domain Names was in bad faith. Ms. Maren knew that the names were names used by the Complainant; indeed, had they not been, she would not have registered them. She knew that she had no rights or legitimate interest to them.
In the context of the Domain Names, her motives were malicious. She had no good intentions. The fact that she may have believed that her behaviour was justified in a wider context, namely the She Commerce dispute, is irrelevant to the issues before the Panel.
As to her use of the Domain Names, her motivation has been no less malicious. Knowing that the names were widely associated with the Complainant, she has used them as mirror sites for her websites. She has sought to provoke the Complainant to the same degree that the Complainant has succeeded in provoking her.
Finally, by the transfer of the Domain Names to her sister, the Respondent, and for no obvious good reasons, the Panel infers that she and the Respondent have sought at the very least to complicate the process for the Complainant, perhaps believing that the Respondent was not tainted by the complaints which have been leveled at Ms. Maren.
None of this behaviour in relation to the Domain Names has been in good faith. The Panel concludes that it has been in bad faith.
Accordingly, the Panel finds that the registration and use of the Domain Names has been in bad faith.
In the light of the foregoing, the Panel decides that each of the Domain Names is substantially identical and/or confusingly similar to the corresponding trademark/service mark of the Complainant, that the Respondent has no rights or legitimate interest in any of them and that the Domain Names were in each case registered and are being used in bad faith.
Accordingly, in the light of the foregoing, the Panelist requires that the registrations of the domain names "womenshands.net", "thriveonline.net" and "momsonline.net" be transferred to the Complainant.
Dated: August 9, 2000