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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Robert A. Scrivano v. James Walker

Case No. D2004-0037

 

1. The Parties

The Complainant is Robert A. Scrivano ("Complainant"), of Sacramento, California, United States of America, represented by Malovos & Mendoza, LLP, C/O Joanna R. Mendoza, Malovos & Mendoza, LLP, United States of America.

The Respondent is James Walker ("Respondent"), of Loomis, California, United States of America. Since Respondent did not submit a formal Response in this proceeding, Respondent did not submit to the Center any contact information other than that which is found in the WHOIS record for the domain name at issue.

 

2. The Domain Name and Registrar

The domain name at issue is <assetsandaging.com> ("Domain Name").

The Registrar with which the Domain Name is registered is Network Solutions, Inc. ("Registrar"), Herndon, Virginia, United States of America.

 

3. Procedural History

The Complaint was filed with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on January 16, 2004. On January 19, 2004, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the Domain Name at issue. Also on January 19, 2004, the Center received by email a supplemental submission from Complainant. On January 20, 2004, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On January 20, 2004, Respondent transmitted an email to the Center, stating that he had transferred ownership of the Domain Name to Assets and Aging, Inc., a Nevada corporation. On January 21, 2004, the Center added Complainant’s supplemental submission to the Complaint. The Center verified that the Complaint (including the supplemental submission) satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint (including the supplemental submission), and the proceedings commenced on January 21, 2004. In accordance with the Rules, Paragraph 5(a), the due date for the Response was February 10, 2004. No formal Response was filed with the Center before the due date. On January 27, 2004, Richard King ("King") transmitted an email responding to the Complaint on behalf of either Respondent or Assets and Aging, Inc. ("Submission"). Also on January 27, 2004, the Center transmitted by email a reply to King, stating that a formal Response was still due on or before February 10, 2004. On February 5, 2004, the Center emailed the parties regarding the issue of the ownership of the Domain Name, stating that the Domain Name belonged to the original registrant, Respondent, and that the Complaint would run against Respondent, not King or the entity Assets and Aging, Inc. On February 6, 2004, the Center received a revised Registrar Verification from Network Solutions, Inc. On February 11, 2004, the Center transmitted by email to the parties a Notification of Respondent Default.

The Center appointed Carol Anne Been as the sole panelist in this matter on February 20, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

The Transmission of Case File to Administrative Panel was dated February 20, 2004. English is the language of the proceeding. In the Notification of Appointment of Administrative Panel, the Projected Decision Date for the Administrative Panel to forward the decision to the Center was set for March 5, 2004.

 

4. Factual Background

a. The following facts are asserted by Complainant in the Complaint and are not disputed.

Complainant

Complainant is an individual residing in Sacramento, California, United States of America. Complainant is an independent senior-care planning consultant and the sole proprietor of the business known as "Assets and Aging," also located in Sacramento, California. Complainant is the host of a radio program called "Assets and Aging" that is broadcast on Sunday mornings on the radio station KFBK 1530 AM throughout Northern California. The radio program has been broadcast on KFBK since September, 1998.

Complainant’s radio show provides information to the listening audience about long-term care benefits, Medi-Cal (a federal- and state-funded health insurance program for low-income residents), and similar issues affecting senior citizens. Respondent occasionally appeared as a guest on Complainant’s radio program as an attorney specializing in elder care law. In late July, 1999, Complainant and Respondent entered into an informal business relationship under the business name "Assets & Aging." Complainant handled the filing of the necessary paperwork to conduct business under the name of "Assets & Aging."

At the end of 2000, the business relationship was dissolved by mutual agreement with Respondent withdrawing from the business. The dissolution was not formalized in writing until September 18, 2001. Under the terms of the written dissolution agreement, Respondent agreed to transfer all his ownership rights in "Assets & Aging" back to the sole ownership of Complainant. The agreement was in the form of a letter from Respondent to Complainant, stating that "for valuable consideration which is hereby acknowledged, I James Walker, hereby transfer my ownership to Bob Scrivano of Assets & Aging to his sole property." A copy of the letter is attached to the Complaint as Exhibit F.

In late 2001 or early 2002, Respondent started broadcasting his own radio program on the same radio station, and on the same day of the week, as Complainant’s radio program.

Complainant discovered that the Domain Name was registered and used by Respondent in October, 2003, through a series of email correspondence between Complainant and Respondent. In those emails, Respondent told Complainant that he had purchased the Domain Name and about 30 other domain names that all point to Respondent’s website. Respondent offered to sell the Domain Name to Complainant for $15,000.

Respondent

Respondent is an individual, doing business both as Senior Care Advocates and as Elder Law Offices, with a principal place of business located in Loomis, California. After the dissolution of the business relationship between Complainant and Respondent, Respondent began hosting a radio program on radio station KFBK 1530 AM on Sunday afternoons throughout Northern California. Respondent’s radio program, named "Senior Care Advocates," primarily focuses on providing information about long-term health care benefits for senior citizens. Respondent operates a website for the "Senior Care Advocates" radio program, which is located at the domain name <seniorz.org>.

Respondent registered the Domain Name on May 18, 2001. At one time, the Domain Name allegedly led to a website that created a direct link to Respondent’s website for "Senior Care Advocates" at "www.seniorz.org". The Domain Name currently leads the viewer to a screen that uses Complainant’s trade name, "Assets and Aging," and displays a prominent advertisement and link to the "Senior Care Advocates" website to obtain further information about Respondent’s services.

In the period immediately preceding the commencement of this administrative proceeding, Respondent and counsel for Complainant engaged in a series of correspondence, copies of which are attached to the Complaint as Exhibit H, in which Respondent denied that the assignment of his ownership rights in Complainant’s Assets & Aging business included the rights in the Domain Name.

b. The following facts are asserted on behalf of Respondent in the Submission by Richard King.

Respondent transferred the Domain Name to a Nevada corporation known as Assets and Aging, Inc. on January 20, 2004. Assets and Aging, Inc. is a valid business entity recognized by Nevada’s Secretary of State. On January 19, 2004, the Domain Name was transferred from Network Solutions, Inc. to another registrar, Godaddy.com. The proper owner of the Domain Name is Assets and Aging, Inc., a company that has a legitimate interest in using the Domain Name to promote its "online identity." King is the technical adviser for Respondent; all correspondence shall be directed to him in connection with this dispute. In fact, the Center has treated King as a co-correspondent for Respondent, by providing notice to both Respondent and King.

The claimed Domain Name transfer from Respondent to Assets and Aging, Inc. was declared by the Center as a breach of Section 8 of the Policy, and the Center arranged to return the ownership of the Domain Name back to the original registrant, Respondent.

 

5. Parties’ Contentions

A. Complainant’s Contentions

i. Domain Name Identical

Complainant contends that the Domain Name is identical to Complainant’s business name, with the only difference being the addition of ".com" to Complainant’s business name. Complainant alleges that Respondent’s use and registration of the Domain Name infringes upon Complainant’s rights in its business name "Assets and Aging," and unlawfully interferes with Complainant’s business for commercial gain at Complainant’s expense. Complainant argues that he has tied his business name to his services since September, 1998, through his weekly radio program. As a result, Complainant believes he has common law trademark protection in his business name.

ii. Respondent’s Rights or Legitimate Interests in the Domain Name

Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name. Complainant contends that Respondent is merely using the Domain Name to direct Internet users to Respondent’s competing "Senior Care Advocates" website. Complainant argues that Respondent obtained the Domain Name only after dissolution of Respondent’s business relationship with Complainant by mutual agreement. Between the time of the dissolution of the business relationship in late 2000 and the time the dissolution was put in writing on September 18, 2001, Respondent registered the Domain Name. Complainant alleges that during this time, Respondent provided assurances to Complainant that Respondent was not using Complainant’s name for his own business. Complainant asserts that Respondent’s written confirmation in the dissolution document in September, 2001, that he transferred all of his ownership interest in the "Assets & Aging" business to Complainant, was made with the knowledge that Respondent already had registered the Domain Name. Yet Respondent withheld information about the Domain Name from Complainant at the time of the execution of the dissolution document.

With regard to Respondent’s assertion that the Domain Name no longer belongs to Respondent but to a Nevada corporation known as Assets and Aging, Inc., Complainant alleges that there are no records in Nevada that indicate that Assets and Aging, Inc. is registered to do business in the state. Complainant asserts that neither Respondent nor Assets and Aging, Inc. has a legitimate interest in the "Assets and Aging" name other than to capitalize on misdirected Internet users looking for Complainant who are led to Respondent’s website as a result of the use of the Domain Name and the use of the name "Assets and Aging" on the current webpage at the Domain Name.

iii. Domain Name Registered or Used in Bad Faith

Complainant alleges that Respondent registered and is using the Domain Name in bad faith.

Complainant contends that Respondent’s actions in registering and using the Domain Name were a concerted attempt to withhold the Domain Name from Complainant and to profit from confused members of the public looking for Complainant or Complainant’s services offered under his business name.

Complainant alleges that Respondent registered the Domain Name only after Respondent ceased his participation in the "Assets & Aging" business relationship with Complainant. Complainant further alleges that Respondent later executed a written agreement transferring all his ownership interest in the business back to Complainant, without disclosing the Domain Name registration, also showing evidence of bad faith.

Complainant further contends that Respondent acted in bad faith by offering to sell Complainant the Domain Name for $15,000.

B. Respondent’s Contentions

Respondent has not filed a Response and thus has not contested the allegations of the Complaint.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires Complainant to prove that:

(i) the Domain Name is identical or confusingly similar to a service mark in which Complainant has rights;

(ii) Respondent has no legitimate interest in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. The Domain Name is identical to a trademark in which Complainant has rights

Complainant has alleged that he has common law rights in the trademark ASSETS AND AGING. Complainant has used this mark to identify his services since at least as early as September, 1998, when Complainant’s radio program was first broadcast in Northern California. Complainant is in the United States where secondary meaning arises from longstanding, substantially exclusive and continuous use of a mark. Furthermore, it is well-established that a trademark need not be registered by a government authority in order to give a party legal rights in the mark. See, e.g., Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000); Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057 (March 22, 2000); Desert Schools Federal Credit Union v. Symlink Communications, LLC, WIPO Case No. D2001-0528 (July 4, 2001).

Respondent registered the Domain Name in May, 2001. The Domain Name is identical to Complainant’s mark. The addition of ".com" does not alter the mark and does not alter the functional identity to the Complainant’s mark. See, e.g., Advanced Book Exchange Inc. v. Argyle Emporium, WIPO Case No. DAU2003-0004 (November 13, 2003); Museum of Science v. Asia Ventures, Inc., WIPO Case No. D2003-0691 (October 20, 2003).

Therefore, the Administrative Panel holds that the Domain Name is identical to Complainant’s mark, ASSETS AND AGING, in which Complainant has common law legal rights.

B. Respondent has no legitimate interest in respect of the Domain Name

Respondent has not set forth any evidence of circumstances of the type described in Paragraph 4(c) of the Policy, or of any other circumstances indicating a right or legitimate interest in the Domain Name. Respondent has provided no evidence of announcements or other publicity concerning his business. Respondent or his business is not known by the Domain Name; in fact, Respondent or his business is known by the name of his competing radio show, "Senior Care Advocates." Respondent has not submitted a Response to justify his purchase of the Domain Name shortly after he had terminated his business relationship with Complainant at the end of 2000.

If Respondent acquired any rights in the mark through participation in the business relationship with Complainant, he disclaimed them by withdrawing from the business in 2000 before he registered the Domain Name, which he confirmed in writing on September 18, 2001.

Respondent’s use of the Domain Name is without any legitimate interest since Respondent operates his own informational radio program known as "Senior Care Advocates," and has no legitimate purpose to use the name of a competing program as a domain name, other than to capitalize on the good will and popularity of Complainant’s trademark and business name for Respondent’s commercial gain.

Further, Respondent’s attempt to transfer ownership of the Domain Name to an entity known as Assets and Aging, Inc. appears to have been calculated to bolster his position or delay the proceedings, in either case a tacit acknowledgment that Respondent does not have a legitimate interest in owning and using the Domain Name.

Therefore, the Administrative Panel holds that Respondent has no rights or legitimate interests in the Domain Name.

C. The Domain Name has been registered and is being used in bad faith

Respondent registered the Domain Name after the Complainant first began his use of the mark ASSETS AND AGING in connection with his radio program in September, 1998, and after Respondent appeared on Complainant’s program. Respondent’s registration of the Domain Name also came after the parties had mutually agreed that Respondent would withdraw from the "Assets & Aging" business. Respondent was well aware of the name "Assets & Aging" and of Complainant’s ownership interest when he registered the Domain Name. The evidence also points to the fact that Respondent deliberately misled Complainant, through repeated assurances, to believe that all rights in the business "Assets & Aging" (including the business name) would be owned by Complainant, as reflected in a series of emails attached to the Complaint as Exhibit F.

With knowledge of Complainant’s mark, Respondent registered and used the Domain Name to capitalize on Complainant’s rights to misdirect the public and for Respondent’s own commercial gain.

Further, prior decisions have held that a respondent’s offer to sell the domain name to a complainant is evidence of bad faith. See, e.g., Harrods Limited v. Chris Brick, WIPO Case No. D2003-0876 (January 2, 2004). Paragraph 4(b)(i) of the Policy states as one example of bad faith the registration of a 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 … in excess of [respondent’s] documented out-of pocket costs directly related to the domain name." As the Harrods decision stated, "[a] generally applied test is therefore whether a Respondent has attempted to sell the domain name for a sum in excess of the Respondent’s out of pocket expenses in registering the domain name." See id. In this case, Respondent offered to sell the Domain Name to Complainant for $15,000, a sum clearly in excess of Respondent’s out-of-pocket expenses in registering the Domain Name.

Respondent’s attempt to transfer the Domain Name to another entity during the pendency of these administrative proceedings is further evidence of bad faith. The fact that the entity is known as Assets and Aging, Inc. is more than mere coincidence. Respondent’s breach of the Policy as a result of his attempted transfer of the Domain Name during the pendency of this proceeding is further evidence of bad faith.

The above facts indicate bad faith under Section 4(b)(ii), (iii), and (iv) of the Policy, in the absence of any contrary indication from Respondent. See, e.g., Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319 (February 1, 2002).

Thus, the Administrative Panel finds that Respondent had notice of Complainant’s trademark and business name well before he registered the Domain Name, posted a website at the Domain Name using Complainant’s mark directing the public to his own website offering similar and competing services to those which are offered by Complainant, offered to sell the Domain Name to Complainant, and attempted to evade a potential loss under these procedures by purportedly transferring ownership of the Domain Name during this proceeding to an entity using Complainant’s mark in its name, which together provide evidence of bad faith registration and use of the Domain Name.

Therefore, the Administrative Panel concludes that Respondent registered and used the Domain Name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 5 of the Rules, the Administrative Panel orders that the Domain Name registered by Respondent James Walker be transferred to Complainant Robert A. Scrivano.

(i) The Domain Name is identical to a trademark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith by Respondent.

 

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Carol Anne Been
Sole Panelist

Dated: March 5, 2004