ADMINISTRATIVE PANEL DECISION

1. Parties and Contested Domain Name

The Complainant is Gerald Wills, a partner in the California-based Puck Technologies. Puck Technologies produces a device that it sells under the trademark WHIZZINATOR.  Complainant has a pending trademark application for the WHIZZINATOR mark.  Respondent is Innovative Research Technology and the registrant of the contested domain name, <whizzinator.com>.  Respondent produces a competing device sold under the mark URINATOR, and appears to be located in the state of Tennesee.

2. Procedural history

The electronic version of the Complaint Form was filed on-line through eResolution’s website on April 16, 2001. Some minor changes had to be brought by the Clerk’s Office to the Complaint Form. The hardcopy of the modified Complaint Form and annexes were received on May 3.  Payment was received on April 16, 2001.

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 essential contact information for Respondent;

-          Verify whether the contested domain name resolved to an active Web page;

-          Verify whether the Complaint was administratively compliant.

This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Melbourne IT, D/B/A Internet Names Worldwide, the Whois database contains all the required contact information, the contested domain name resolves to an active 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’s Office fulfilled all of its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on May 7, 2001.  This date is the official commencement date of the administrative proceeding.

On June 8, 2001, the parties were notified that Ms. Jessica Litman had been appointed as the panelist in this case and that a decision was to be, save exceptional circumstances, handed down on June 21, 2001.

3. Factual Backgrounds

Both of the parties market devices designed to enable their customers to evade urine screening tests.  The devices, intended to be worn under the customers’ clothing, consist of heated plastic pouches attached to tubes.  Customers are instructed to fill the pouches with reconstituted synthetic urine.  Both devices allow customers to simulate urination during screening tests, while delivering the synthetic fluid instead of actual urine.  Respondent introduced its device, the URINATOR, in December of 1998.  Respondent advertises its device in High Times and other magazines.  Complainant’s company, Puck Technology, introduced its device, the WHIZZINATOR, in August of 1999.  Complainant’s device differs from Respondent’s in that it uses a different heat source and includes a prosthetic penis intended to fool close observers. 

In August of 1999, an ad for Complainant’s WHIZZINATOR appeared in High Times magazine.  Respondent saw the ad and became concerned that the name WHIZZINATOR infringed its unregistered trademark URINATOR. Respondent’s Mike Smith spoke with Dennis Catalano, a partner in Puck Technology, on August 19 and again on August 20 to protest the WHIZZINATOR name.  Smith also complained that the overall look of the ad was confusingly similar to Respondent’s URINATOR ads.  Respondent then registered the <whizzinator.com> domain name.

Over the following months, Respondent again telephoned  Puck Technology to complain about its WHIZZINATOR ads and, in October of 1999, wrote a letter demanding that Puck Technology cease and desist infringement of the URINATOR mark and pay compensation for past infringement.  Respondent also posted a web page at <www.whizzinator.com>.  The website announces that “WHIZZINATOR.COM HAS GONE OUT OF BUSINESS," because its competitor’s product was superior:

Note:

WHIZZINATOR.COM HAS GONE OUT OF BUSINESS !

That's right - unfortunately Whizzinator.com has bit the dust !

The competition unfortunately kicked our ass - or to put it another way, they kicked us in the big useless pecker that we had !

However, if you really need a product that will work please click below                           The Whizz Pack

The Whizz Pack is manufactured by Respondent, which sells it from the <whizzpack.com> domain. The page includes a link to <www.whizzpack.com>. 

Complainant filed an application to register his WHIZZINATOR trademark on October 14, 1999.  That application is still pending.  According to exhibits submitted by Respondent, the U.S. Patent and Trademark Office approved the mark for publication in the Official Gazette on May 7, 2001, but has not yet published it for opposition.

4. Parties' Contentions

Complainant argues that Respondent registered the <whizzinator.com> doman name in bad faith after reading his company’s ad and learning of its product, and has used the domain to divert Complainant’s business to Respondent’s site. 

Respondent argues that Complainant’s first sales of WHIZZINATOR devices took place in September of 1999.  Therefore, Respondent insists, Complainant had no trademark rights in WHIZZINATOR at the time that Respondent registered the <whizzinator.com> domain.  Moreover, Respondent claims, the WHIZZINATOR mark is not a valid trademark, both because it is confusingly similar to Respondent’s URINATOR trademark, and because it will be “found to consist of or comprise of immoral, deceptive or scandalous matter,” in violation of 15 U.S.C. § 1052.  

Respondent also claims that, in June of 1999, it considered adopting “Whizzinator” as a mark for its own product, and was forced to rename that product “Whizz Pack” when it learned that Complainant “had stolen our name for the new product.”  Therefore, it argues, its registration of the <whizzinator.com> domain name and its use of it to refer prospective customers to its Whizz Pack site should be deemed good faith registration and use.

Finally, Respondent argues that “[t]here has been long-term animosity between our two companies since Puck Technology entered the urine-testing marketplace. Puck Technology used their current website in bad faith by slanderously misrepresenting our product in a comparison.”  Respondent attaches two ads comparing the Whizzinator to the Urinator.  Both ads claim that the Whizzinator is the superior device because it includes a prosthetic penis and the Urinator does not. 

5. Discussions and Findings

Complainant has the burden under section 4 of the UDRP to show that the Respondent's domain name is identical to or confusingly similar to its trademark, that Respondent has no rights or legitimate interests in the domain name, and that Respondent has both registered and used the domain name in bad faith.

A.        Similarity of domain name to mark:

Complainant has shown that he holds legal trademark rights in WHIZZINATOR.  Although his registration application is still pending, he has used the mark in connection with sales of his product in commerce since September, 1999.  Under United States law, registration is not a prerequisite for trademark protection.  See Two Pesos v. Taco Cabana, 505 U.S. 763  (1992). Complainant has demonstrated common law trademark rights based on his bona fide use of the mark in commerce. 

Respondent alleges that complainant does not have a valid trademark because the WHIZZINATOR mark is unregistrable under 15 U.S.C. § 1052.  This is so, Respondent argues, both because the mark comprises scandalous matter and because it is confusingly similar to the name of Respondent’s product.  I find this argument to be without substance. 

Respondent does not dispute that the domain name is identical to Complainant’s trademark.

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

Paragraph 4(c) of the UDRP provides that any of the following factors may demonstrate a  registrant’s  rights or legitimate interests in its domain name:

(i) before any notice to you of the  dispute, your use of, or  demonstrable preparations to use,  the  domain name or a name  corresponding to the domain  name in connection with a bona fide   offering of goods or services;  or 

 (ii) you (as an individual, business,  or other organization) have been  commonly known by the domain  name, even if you have acquired  no trademark or service mark  rights; or

 (iii) you are making a legitimate  noncommercial or fair use of the  domain name, without intent for  commercial gain to misleadingly  divert consumers or to tarnish the  trademark or service mark at  issue.

Although Respondent alleges that it made plans to use Whizzinator as a product name two months before it became aware of Complainant’s use of the name, it presented no evidence of  its use or preparations for use.  It does not allege to have been known by the Whizzinator name.  The use it is currently making of the domain name cannot fairly be characterized as noncommercial or fair; rather the current site seems designed to misleadingly divert consumers for commercial gain.

I therefore find that Complainant has demonstrated that Respondent has no rights or legitimate interests in the domain name.

C. Bad Faith Registration and Use:

Section 4(b) of the UDRP provides:

the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the 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 or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

 (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

There is no evidence that Respondent registered the domain name primarily for the purpose of selling it to the complainant.   Although it seems clear on this record that Respondent registered the domain name in order to prevent complainant from using it to sell its competing product, there is no showing that Respondent has engaged in a pattern of such use.  Complainant has, however, demonstrated both that Respondent registered the domain name primarily for the purpose of disrupting a competitor’s business and that Respondent has used the domain name in an effort “to attract, for commercial gain, Internet users to [its] web site… by creating a likelihood of confusion with the complainant's mark.”

I therefore find that Respondent registered and has used the domain name in bad faith.

6. Conclusion

I find that the <whizzinator.com> domain name is identical or confusingly similar to Complainant’s trademark, that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent registered and used the domain name in bad faith.  I therefore order that the <whizzinator.com> domain name be transferred to complainant.

7. Signature