ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
Complainant 163972 Canada Inc. seeks the transfer of the domain name TEENFLO.COM from Respondent Sandro Ursino to Complainant. The Panel finds that Complainant has proven all of the elements of Paragraph 4(a) of ICANN's Uniform Domain Name Dispute Resolution Policy (the Policy). Accordingly, Complainant's request to transfer the domain name is hereby granted.
The electronic version of the Complaint form was filed on-line through eResolution's Website on May 1, 2000. The hardcopy of the Complaint Form was received on May 4, 2000. Payment was received on May 2, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry leads the Clerk of eResolution to the following conclusions: the Registrar is Network Solutions, Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an active (with an "under construction message") Web page and the Complaint is administratively compliant.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on May 9, 2000. That date is the commencement date of the administrative proceeding.
On May 9, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On May 28, 2000, the Respondent submitted, via email, his response. The response was posted online by the Clerk's Office on May 31, 2000. The signed version of the response was received on June 5, 2000.
On May 31, 2000, the Clerk's Office received for the Complainant's representative an email requesting the opportunity to file a Rebuttal. The Clerk's Office informed him that his request will be transmit to the Panel, once appointed.
On June 6, 2000, the Clerk's Office contacted a first panelist and requested that he acts as panelist in this case.
On June 9, 2000, the Clerk's Office contacted Ms. Sandra Sellers, and requested that she acts as panelist in this case.
On June 9, 2000, Ms. Sandra Sellers, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On June 9, 2000, the Clerk's Office forwarded a user name and a password to Ms. Sandra Sellers allowing her to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On June 9, 2000, the parties were notified that Ms. Sandra Sellers had been appointed and that a decision, save exceptional circumstances, was to be handed down on June 22, 2000.
One June 15, 2000, the Panelist notified eResolution that further statements would be accepted, and on June 19, 2000, eResolution sent an email to the parties, informing them that such statements would be accepted, as follows:
The Panelist hereby grants Complainant's request to submit a reply (maximum 3 pages, plus any documents referenced) by Friday June 23, 2000, at noon, time of Montreal, and must address the following issues:
(1) whether Complainant holds an ownership interest in the Teenflo trademarks, and/or whether the Complainant has rights to the marks within the meaning of UDRP Rule 3(b)(ix)(1);
(2) whether Complainant has any evidence of a consulting or employment contract with Respondent for web services, and/or further information or evidence concerning the services allegedly provided by Respondent, including dates and specifics of such services;
(3) whether Complainant has any evidence of Respondent's alleged demand for $250,000.
The Respondent is granted to file a response to Complainant's reply (maximum 3 pages, plus any documents referenced).
Respondent's rebuttal is due on June 27, 2000 at noon, time of Montreal.
Due to the further submissions, the Panelist will render a decision by July 2, 20001 , instead of June 22, 2000. The Clerk's Office will then have 3 days to notify the decisions to the Parties.
The Parties and The Contested Domain Name
The complainant is 163972 Canada Inc., trading as "Teenflo." The mark TEENFLO has been used in Canada since at least 1991, and also in the United States, for ladies', men's, boys', girls', and children's pants, slacks, jeans, shorts, shirts, sweaters, jackets, and t-shirts.
On November 19, 1990, Complainant entered into a license agreement with La Société Teenflo, a French corporation. Complainant ceded ownership of the mark in Canada to La Société Teenflo ("the licensor"), who then granted an exclusive license to Complainant ("the exclusive licensee") to operate under the tradename Teenflo in Canada.
Complainant registered the mark TEENFLO in Canada on April 17, 1992 (Registration No. TMA397,416), for the above-listed wares. On January 27, 1995, the Canadian registration was assigned to La Société Teenflo. Complainant also registered the mark TEENFLO in the United States on June 22, 1993 (Registration No. 1,778,399) for the above-listed wares. Assignment of the US registration was recorded on March 16, 1995, to which is attached an assignment dated May 25, 1994. Accordingly, La Société Teenflo is the current owner of the Canadian and US registrations of the mark TEENFLO.
Teenflo Canada Inc. registered the domain names TEENFLO-USA.COM and TEENFLO-CANADA.COM with Network Solutions, Inc. on December 24, 1996.
La Société Teenflo and Complainant entered into another license agreement on April 7, 2000, which appears to have expanded the terms of the license concerning matters unrelated to this proceeding. That document reaffirms the exclusive license from La Société Teenflo to Complainant for the mark TEENFLO.
The Complainant intends to expand its product line into related fields in the near future.
The Respondent is Sandro Ursino, who is the administrative or billing contact for Micropro 2000, which registered the domain name TEENFLO.COM with Network Solutions, Inc. on August 29, 1998.
Mr. Ursino and Micropro 2000 were hired by Complainant as technology consultants, at least as early as January 1994, as evidenced by sample checks from Complainant to Micropro 2000 Ltee, which were attached to Complainant's Reply/Rebuttal. The accompanying invoices reflect a variety of technology services, including hardware and software installation, on network and individual computers. Though no formal contract has been produced, an invoice from Micropro 2000 Ltee to Teen Flo dated January 19, 1996 states "as per contract agreement, installation of fabric planner." From correspondence also attached to Complainant's Reply/Rebuttal, it appears that the relationship between the parties deteriorated in July 1997, and Complainant terminated Respondent's services. A dispute concerning outstanding invoices followed. It is unknown whether that dispute was resolved.
In addition to installation of hardware and software, Complainant states that Respondent also assisted in the creation of Complainant's websites (teenflo-usa.com and teenflo-canada.com) for the marketing of Complainant's wares. Respondent has not rebutted that statement.
The Domain Name
As stated above, the domain name TEENFLO.COM was registered on August 29, 1998.In 1999, the domain name was placed on "hold" by NSI at the request of the Complainant, and remained on "hold" until the "hold" was canceled when NSI adopted the UDRP.
The URL http://www.teenflo.com now reverts to a website "under construction."
A printout of the teenflo.com homepage is attached hereto as Attachment 1. The text of the home page reads:
TEENFLOtm A CANADIAN TRADE-MARK
This web site is also owned by
TEENS go with the FLO get a TEENFLOtm computer!
The site contains no other pages.
The parties' contentions are filled with cross-allegations of bad faith, evidencing the hostile relationship between the parties. The contentions will be cataloged here to show that they were considered by the Panel, but most have been discarded as inappropriate for decision in a UDRP proceeding, or lacking in evidentiary support.
Complainant contends that this is a classic case of cybersquatting, due to Respondent's previous relationship with Complainant, knowledge of Complainant's use of the TEENFLO mark, and attempt to sell the domain name to Complainant. There are discrepancies between the parties' versions of the facts as to the timing and amount of the price of the TEENFLO.COM domain name, but those discrepancies are immaterial to the Panel's ultimate decision.2
Complainant also alleges that Respondent, in bad faith, attempted to legitimize his conduct by attempting to register TEENFLO with the Canadian Intellectual Property Office (CIPO).3 Again, there are discrepancies between the parties' versions of the facts as to the status of Respondent's service mark application. Complainant alleged that it is opposing issuance of the registration, and produced a letter from a respected Canadian trademark counsel to that effect, but Respondent stated that the opposition time has expired, and produced supporting correspondence from the CIPO. However, it is not appropriate for an arbitrator in a UDRP proceeding to determine whether Respondent acted in bad faith before the CIPO, or to determine the status of that application. These are matters within the purview of the CIPO, or its courts of review. Furthermore, the decision in this proceeding need not turn on whether Respondent has been granted a Canadian registration for the service mark TEENFLO. Consequently, the cross-allegations surrounding Respondent's service mark application have been disregarded.
Finally, Complainant contends that Respondent has displayed no legitimate interest in the domain name, since the website still is under construction almost two years after registration of the domain name. Respondent, however, states that it was prohibited from developing the website during the time the domain name was placed on hold by NSI at the Complainant's request, and that it has begun steps to develop the website since the hold was lifted in December 1999. There is some legitimacy to Respondent's contention that it could not develop the website during NSI's hold. However, Respondent has shown no offline attempts to develop a customer base under the TEENFLO mark during that period, which raises doubts as to whether Respondent ever intended to develop independently the TEENFLO mark for retail sale of microcomputer hardware and software. Accordingly, this Panel has determined to disregard Respondent's website and service mark application as evidence of Respondent's legitimate interest in the domain name.
Respondent first contends that 163972 Canada Inc., the sole Complainant, has no rights in the TEENFLO mark, and that La Société Teenflo, a necessary party as current owner of the TEENFLO mark, cannot now be added as a co-complainant. Respondent also alleges that Complainant attempted to mislead this Panel as to the ownership rights of the TEENFLO Canadian and US trademark registrations, and that this complaint should be dismissed on bad faith grounds. However, as set forth below, neither La Société Teenflo nor a trademark registration are necessary to this UDRP proceeding, so these contentions are immaterial.
Respondent also challenges the existence of the license agreements between La Société Teenflo and 163972 Canada Inc., but has presented no evidence to support this challenge.
Respondent contends that Complainant initiated contact to buy the domain name, and that Respondent stated that it was not interested in selling because it had a pending service mark application. As set forth below, who initiated contact is immaterial, because Respondent does not dispute that it offered to sell the domain name for US$15,000.00.
Discussion and Findings
As noted previously, each party has charged the other with bad faith, in dealings with each other, with the Canadian Intellectual Property Office, with the US Patent and Trademark Office, and in this proceeding. Many of these issues need not be decided -- and, indeed, are not appropriate for decision -- in this proceeding. Issues concerning unclean hands before the Canadian and US trademark offices are best decided by those offices in opposition or cancellation proceedings, with reference to domestic law.
When the seed is separated from the chaff in the parties' allegations, the following facts stand uncontradicted :
1) Complainant holds an exclusive license to use the TEENFLO mark in Canada and the US, and has used that mark since at least 1991;
2) Respondent was paid thousands of dollars by the Complainant for various technology consulting services between January 1994 and July 1997 (which includes the date on which Complainant's two websites were registered, allegedly with the help of Respondent). To accomplish its assigned tasks, Respondent had intimate knowledge of the Complainant's business. The parties' business relationship deteriorated and was terminated in approximately July 1997, after which date there remained a dispute over payment for Respondent's services; and
3) Respondent registered the disputed domain name after its consulting services were terminated by Complainant, and has offered to transfer the domain name to the Complainant for US$15,000.00.
Based on these undisputed facts, this Panel will review the factors set forth in UDRP Policy 4(a).
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and used in bad faith.
The question before this Panel is whether the Complainant has satisfied the requirements of Paragraph 4(a) with respect to these three elements, all of which must be proved by Complainant.
The TEENFLO.COM Domain Name is Identical to
It is clear that the disputed domain name, TEENFLO.COM, contains the mark TEENFLO. The only question for this panel under UDRP 4(a)(1) is whether the Complainant has rights in the TEENFLO mark.
Respondent alleges that the Complainant cannot maintain this action because it is not the current owner of the above-referenced Canadian and US trademark registrations for the TEENFLO mark. Respondent also contends that Complainant should be precluded from adding La Société Teenflo, the current owner and licensor of the TEENFLO mark, as a complainant in this action. This Panel need not reach whether La Société Teenflo can be or need be added as a party to this proceeding, because it finds that Complainant has rights in TEENFLO mark, regardless of whether La Société Teenflo is a co-complainant.
UDRP 4(a)(1) does not require that Complainant hold a registration for a trademark or service mark; it requires only that the Complainant has rights in the mark that is identical or confusingly similar to the disputed domain name. Therefore, it does not matter whether the Complainant is the owner of the Canadian and US trademark registrations for the TEENFLO mark; it does not matter whether those registrations even exist.
The Complainant has an exclusive license to use - and, indeed, it uses -- the TEENFLO mark on certain wares in a defined geographic region, in which the licensor is not resident. Commonly accepted principles of agency law hold that an exclusive licensee may stand in the shoes of the licensor for many purposes. As an exclusive licensee under a written license agreement, this Panel finds that the Complainant has rights in the TEENFLO mark, sufficient to satisfy UDRP 4(a)(1).
The Respondent Has No Rights or Legitimate Interests in the Domain Name,
Due to the circumstances of this case, it is appropriate first to discuss whether the Respondent acted in bad faith in registering and using the TEENFLO mark and domain name, and then to determine whether there is any evidence of rights or legitimate interests that may justify Respondent's registering TEENFLO as a trademark and a domain name.
As noted above, it is undisputed that Respondent was paid thousands of dollars by the Complainant for various technology consulting services between January 1994 and July 1997, based on a sampling of invoices and check payments produced by Complainant. It also is plausible, based on the timing and the wide variety of technical assistance rendered, that Respondent helped to design and register Complainant's two websites, as alleged by Complainant and undenied by Respondent. Furthermore, to accomplish its assigned tasks, it would have been necessary for Respondent to have had intimate knowledge of the Complainant's business. Accordingly, it cannot be disputed that, prior to applying for trademark registration of the TEENFLO mark and registration of the TEENFLO.COM domain name, Respondent knew of the Complainant's use of the TEENFLO mark in marketing to teenage consumers or persons who may buy goods for teenagers.
This Panel therefore finds that Respondent acted in bad faith in registering the TEENFLO.COM domain name.
This Panel also finds that Respondent has used the domain name in bad faith. The evidence shows that Respondent offered to transfer the domain name to the Complainant for US$15,000.00. Furthermore, despite Respondent's attempts to show that TEENFLO is a popular root word in other domain names, a review of Respondent's Rebuttal Attachment 4 shows that TEENFLO is used only in Complainant's and Respondent's domain names. All other matches show TEENFLO as a string of letters that form part of other words, such as TEENFLOWERS.COM, TEENFLOOD.COM, or TEENFLORIDA.COM. Finally, Respondent clearly chose the TEENFLO.COM domain name in an effort to attract teenagers or persons who may buy goods for teenagers, and to seek commercial gain from potential customers searching for Complainant's goods.
Given Respondent's knowledge of Complainant's mark prior to adopting TEENFLO for Respondent's own use, this Panel finds that Respondent has no rights in or legitimate interest in the TEENFLO mark or domain name, despite Respondent's attempt to obtain a Canadian registration for the TEENFLO mark for retail sale of microcomputer hardware and software services.
The Panel notes that neither party appears to be wholly above board with respect to the allegations made in this proceeding and the presentation of allegedly supporting arguments and evidence. However, in weighing the overall conduct of each party, this Panel concludes that the balance tips against Respondent, who knew of Complainant's preexisting rights in the TEENFLO mark, yet chose to trade under it.
Accordingly, this Panel finds that Complainant has met all the requirements of UDRP 4(a), and directs that Network Solutions, Inc. shall transfer the TEENFLO.COM domain name to Complainant.
Date: July 3, 2000
McLean, Virginia, USA
(s) Sandra A. Sellers
Attachment 1: printout of http://www.teenflo.com/
1) July 2, 2000 is a Sunday, so the decision will be rendered by Monday, July 3, 2000.