WIPO Arbitration and Mediation Center

1.1 The Complainant is Rubbermaid, Inc., a corporation organized and existing under the laws of the State of Ohio, United States of America, having its principal place of business at 1147 Akron Road, Wooster, Ohio 44691, United States of America.

1.2 The Respondent is Venture-Q, LLC, as successor to BusinessVision, an entity with an address at P.O. Box 14649, Fremont, California 94539, United States of America.

The domain name at issue is <carex.com>.

The domain name is registered with Network Solutions, Inc. ("NSI"), in Herndon, Virginia, United States of America.

3.1 A Complaint was submitted electronically to the WIPO Center on November 14, 2001, and the signed original together with four copies was received on November 19, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated November 20, 2001.

3.2 On November 21, 2001, NSI confirmed by e-mail that the domain name at issue is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.

3.3 The WIPO Center determined that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

3.4 No formal deficiencies having been recorded, on November 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI, and ICANN), setting a deadline of December 12, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondents participation in these proceedings.

3.5 On November 29, 2001, the WIPO Center received a Request for Extension of Response Deadline for an additional 14 days in which to file the Response and to which request the Complainant agreed. On November 30, 2001, the WIPO Center notified the parties that Respondent had until December 28, 2001, in which to file a Response.

3.6 A Response was received electronically on December 20, 2001, and in hardcopy on December 27, 2001. The Respondent elected a three-member Panel, and the required fees were paid on time and in the required amount by the Respondent. An Acknowledgment of Receipt (Response) and a Request for Panelists (Complainant) were sent by the WIPO Center on December 28, 2001.

3.7 On February 14, 2002, the WIPO Center Sent a Notification of Panel Appointment, appointing the Hon. James A. Carmody, G. Gervaise Davis, Esq., and M. Scott Donahey, Esq., each of whom had previously submitted a Statement of Acceptance and Declaration of Impartiality and Independence. M. Scott Donahey was appointed Presiding Panelist. And at the same time, the projected decision date was notified as February 28, 2002.

3.8 On February 3, 2002, the time in which the decision was to be delivered was extended to March 14, 2002.

4.1 Complainant first registered the CAREX mark with the United States Patent and Trademark Office ("USPTO") in connection with canes on May 18, 1976, showing a first use on June 16, 1975. Complainant also registered the CAREX mark with the USPTO in conjunction with various medical devices and appurtenances on February 4, 1992, showing a first use in commerce in April 1982 (Complaint, Annex C).

4.2 Complainant has advertised the mark extensively and health products bearing the CAREX mark are widely available in retail pharmacies throughout the United States.

4.3 Complainant notified Respondent of its interest in the mark by certified letter dated February 22, 2000 (Complaint, Annex D). Telephone conversations between Complainant's representative and Respondent's principal ensued.

4.4 Respondent registered the domain name at issue on November 24, 1999 (Complaint, Annex A). Beginning on November 20, 2001, Respondent has used the domain name at issue to resolve to a web site. The web site states that "carex research" was formed in 1991 to provide clients with independent research on high technology business. At page 2, it has contact details for placing an order (Response, Annex 12).

4.5 Respondent has registered numerous other domain names, none of which appear to obviously correspond to a well-known trademark, and all of which could be termed merely descriptive.

4.6 Complainant's representative and Respondent's principal have had several telephone conversations during which Complainant contends Respondent promised to submit a proposal for resolution of the dispute and Respondent contends no such promises were made.

4.7 Respondent submitted a declaration of the sole proprietor of Respondent, stating that Respondent is the legal successor to BusinessVision, the registrant of the domain name at issue (Response, attached Declaration, Para. 2).

4.8 In his Declaration, Respondent states: "I am not an attorney and am only generally familiar with trademark law, and I did not conduct any trademark investigations or consult with any trademark attorney before I began my domain name search." (Response, Declaration, Para. 6)

4.9 On November 21, 1999, three days before Respondent registered the domain name at issue, Respondent registered the domain names <exacum.com> and <atriplex.com>. Response, Annex 6, Exhibits 2 and 3. Respondent contends that all three names were registered for possible use in Respondent's business (Response, Declaration, Paras. 8-10).

4.10 Respondent contends that he sent a fax to his attorney with instructions regarding his business plans (Response, Declaration, Para. 12).

4.11 Respondent's principal attaches as an exhibit to his Declaration "a true and correct copy of a letter I faxed to [my attorney]." (Id., and Exhibit 5). Exhibit 5 bears a handwritten notation "Faxed on 11/29/1999." However there is no evidence of actual transmittal, such as the date, time, and number stamp normally affixed to a transmittal by a facsimile machine.

4.12 The document reads in pertinent part: "This is the info. relevant to my new company formation discussed on 11/23/1999.

1. Company name (in desired priority):

(a) EXACUM, LLC
(b) ATRIPLEX, LLC
(c) CAREX, LLC

* * *

3. Requested name searches and intent-to-use name registrations (to be done immediately upon the name availability confirmation):

(a) Company name (LLC entity)
- USA
- Internationally (need an advice)

(b) Company name
- Federal trademark
- Internationally (need an advice)

Note: I have already reserved the website [sic] domain names for all three company names. My understanding is that such a registration will cover all colors. Please advise if I should also claim a specific color.

4. Goods and services

(a) Goods (Class 16)

-- Reports on specific companies (Company Reports) providing an integrated view of a company's business.

-- Reports on specific industry and market subjects (Industry/Market Research Reports)

-- Newsletter providing information updates for the offered reports

(b) Services (Classes 35 and 42?)

-- Consulting services related to the above reports

-- Business management consulting (Class 35)

-- Industry/Market research consulting (Class 42?)

I would like to assure that the classification of Goods and Services is broad enough to give me a maximum flexibility.

Please advise me if I should get in touch with the trademark attorney on this subject." (Response, Declaration, Exhibit 5)

4.13 Respondent's principal stated that in Late December 1999 he selected "Carex "as the primary service mark and name for the new company, and at that time began to work with developers of web sites to develop a web site for <carex.com> (Response, Declaration, Paras. 14-15). Respondent attaches notes of the meeting with the developer and an email from the developer documenting the meeting (Response, Declaration, Exhibits 6 and 7). Nowhere in either document is the name, "Carex" mentioned.

4.14 Exhibit 8 to Respondent's Declaration is a composite exhibit consisting of twenty-six pages of emails and notes taken by Respondent's principal (Response, Declaration, Para. 16). There is one unidentified reference to "Carex research," on a document dated October 7, 2000, almost eight months after Respondent had been notified by Complainant of its mark and the existence of a dispute. A review of the pages reveals that they obviously were prepared in contemplation of a business called "Venture-Q" and a web site to be constructed using <venture-q.com>, and nowhere do they reference <carex.com>.

4.15 Respondent's principal underwent surgery sometime in March and again in May 2000, and Respondent was unable to return to work until June 26, 2000 (Response, Declaration, Para. 21). During that period, Respondent's principal received another letter from Complainant, dated April 24, 2000, which, because of his illness, he faxed to his attorney to handle. (Id.) A copy of the "fax" is attached to the declaration as Exhibit 10. Again, although there is a handwritten notation "4/27/2000 faxed" on the document, there are no indicia of facsimile transmission that one would expect to see (Response, Declaration, Exhibit 10). Admittedly, the attorney never responded to the April 24, 2000 letter from Complainant. (Response, Declaration, Para. 21).

4.16 Respondent received a telephone message from Complainant on June 1, 2000, indicating Complainant wanted the domain name at issue (Response, Declaration, Para. 22). Respondent states that "I am informed and believe my attorney . . . returned [the] phone call on or about June 26, 2000, and left a voice mail message, but that [Complainant] did not return his call."

4.17 At some point in time after he returned to work on June 26, 2000, Respondent's principal decided to use CAREX as a subsidiary mark (Response, Declaration, Para. 25). On September 19, 2000, Respondent filed a trademark and service mark application for the VENTURE-Q mark (Response, Declaration, Para. 28). On October 4, 2001, Respondent first used <venture-q.com> to resolve to a web site (Response, Declaration, Para. 36). Beginning November 20, 2001, Respondent has used <carex.com> to link to the <venture-q.com> web site.

4.18 Respondent currently uses the CAREX mark on mailers, business cards, stationary and other materials, and has asserted, although Respondent has not furnished documentary evidence, that Respondent has reserved the business name "Carex" with the Secretary of State of the State of California.

5.1 Complainant contends that Respondent has registered a domain name which is identical to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

5.2 Respondent admits that the domain name at issue is identical or similar to marks in which Complainant has rights, but contends that Respondent has rights and legitimate interests in the use of the domain name, and that Respondent has not registered and is using the domain name in bad faith.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."

Since both the Complainant and Respondent are domiciled in the United States, and since United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

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 rights or legitimate interests in respect of the domain name; and,

(3) that the domain name has been registered and is being used in bad faith.

Nowhere does the Policy discuss trademark infringement or an infringement analysis. Such an approach is not contemplated by the Policy. To the extent that the dissent's analysis is based on a trademark infringement analysis, it is beside the point.

Respondent admits that the domain name at issue is identical to Complainant's trademark.

Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name at issue. Respondent contends that it has rights and legitimate interests in respect of the domain name. On this issue, the majority adopts the test for burden of proof enunciated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. While the Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights and to or legitimate interests in the domain name at issue. "Concrete evidence" consists of more than mere assertions by the Respondent that it has such evidence, even if such assertions are made under oath. "A panel is not required to blindly accept assertions offered by a respondent, any more than it is required to accept unsupported assertions offered by a complainant. It is especially important under this procedure to test respondent's assertions for evidentiary support and credibility, since normally the complainant has no opportunity to counter the respondent's assertions, while the respondent does have the opportunity to counter those of the complainant." (Id., at 6.14). "Concrete evidence" is "[e]vidence in the form of documents or third party declarations" in support of Respondent's assertions. (Id.) And see, generally, Id., at 6.11-6.15.

In the present case Complainant has asserted that Respondent is not commonly known by the domain name, that Respondent has not used the domain name at issue to resolve to a web site (which was true as of the date Complainant filed its Complaint, November 19, 2001), and that Respondent had made no use of the domain name until notified of the dispute by Complainant. This presents a prima facie case and shifts the burden to Respondent to produce concrete evidence of rights or legitimate interests in the domain name at issue. The majority believes that Respondent fails to present such concrete evidence.

Respondent asserts that since as early as November 1999, Respondent has made bona fide preparations to rename his business "Carex." Respondent, however, produces no concrete evidence of such preparations. Respondent produces no third party declarations, even though much of what Respondent argues is uniquely in the knowledge of his web site developer and his attorney. Respondent's documentary evidence is not time-stamped and date stamped facsimile transmissions, but rather documents that Respondent asserts were faxed.

Even if accepted as concrete evidence, Respondent's documentary evidence, far from supporting Respondent's contention, actually contradicts it. There is no mention of "Carex" in the notes and emails of Exhibit 8 until October 2000. The notes and emails of Exhibit 8 overwhelmingly support the adoption by Respondent of "Venture-Q" for Respondent's business name and web site location. October 2000 is more than seven months after Respondent received notice of this dispute.

Moreover, Respondent asserted that he is not a lawyer and is only generally familiar with trademark law, and for this reason he did not do a trademark search prior to registering the domain name at issue. Even if the Majority were to disregard the fact that many registrars have a trademark search link available on the registration site to enable potential registrants to do free searches of at least the USPTO database, Respondent betrays more knowledge of trademark law than that possessed by the average lawyer. Exhibit 5 to Respondent's principal's declaration is a "fax" he reportedly sent to his attorney, which "fax" allegedly confirmed trademark search instructions Respondent had orally conveyed to that attorney the day before Respondent registered the domain name at issue. In that "fax," Respondent instructs his attorney to do a trademark and "intent-to-use" search, specifying particular classes to be searched by number of class in both Goods and Services, instructing the attorney to assure that the classification is broad enough to give Respondent maximum flexibility. The degree of knowledge of the trademark system that such instructions display is one far beyond the knowledge of the average lawyer and bespeaks intimate knowledge of the trademark system.

Respondent admittedly did not use the domain name to resolve to a web site until twenty-one months after Complainant had notified Respondent of its trademark rights, and indeed only after Complainant had filed its Complaint. It would appear that Respondent used Complainant's repeated good faith attempts to resolve the matter to provide time in which Respondent could create "evidence" for this proceeding.

For all of the above reasons, the majority feels that Respondent has failed to show that Respondent has rights and legitimate interests in respect of the domain name at issue.

For some of the same reasons set out above, the majority believes that the domain name was registered and is being used in bad faith. Respondent makes numerous excuses for its failure to respond to Complainant's letters and calls. Respondent attempts to lay off responsibility for such miscommunication on third-party agents, but fails to submit declarations from these agents of Respondent. Respondent did not use the domain name at issue to link to a web site until almost two years after learning of the dispute, and indeed not until one week after Complainant had filed its Complaint.

The web site itself appears spurious and merely created for "evidentiary" purposes in this proceeding. The web page contains no pricing information whatsoever. Yet the second page thereof purports to enable the user to order Respondent's services. No reasonable business looking for research would place an order on Respondent's online web site based on the information provided there.

Finally, Respondent, whose knowledge of trademark procedures seems superior to that of general legal practitioners, allegedly failed to do a trademark search prior to registering the domain name at issue, despite the fact that most registration web sites contain a link for trademark searches to be done online and free of charge. Moreover, the day before Respondent registered the domain name at issue, he orally ordered his attorney to do a detailed trademark search. These detailed oral instructions were confirmed in a document prepared less than a week later and allegedly "faxed" to Respondent's attorney (Response, Declaration, Exhibit 5). The instructions demonstrate that Respondent knew very well at the time he registered the domain name at issue how to conduct a sophisticated trademark search. Had he done even the simplest online search, Respondent would have learned of Complainant's trademark rights.

All of these facts when taken together suggest that Respondent proceeded to attempt to create evidence of good faith use only after learning of Complainant's trademark rights in the domain name at issue. The majority believes that the above conduct evidences bad faith registration and use on the part of Respondent. See, e.g., Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Accordingly, the majority finds that Respondent has registered and is using the domain name in bad faith.

For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical the trademark in which the Complainant has rights. The majority of the Panel find that Respondent has no rights or legitimate interests in respect of the domain name and that Respondent has registered and is using the domain name at issue in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the majority orders that the domain name <carex.com> be transferred to the Complainant.

M. Scott Donahey
Presiding Panelist

Hon. James A. Carmody
Panelist

Dated: March 19, 2002

With regret, I dissent from the decision of the majority of the Panel on the issues of Respondents legitimate right to use the domain <carex.com> and on the findings of bad faith registration and use. I do so on the issue of Respondents rights to use the domain for reasons that take some explanation, and on the bad faith issues simply because there is absolutely no evidence produced by the Complainant to support such a conclusion. There is, however, no question that the Complainants trademarks on "Carex" are identical for purposes of the UDRP with the domain <carex.com>, the first hurdle that must be overcome; it is on the second and third tests set up in the UDRP -- the right to use the domain and the bad faith issues -- that I would rule Complainant has not come even close to meeting its burden. I would rule for the Respondent here because of Complainants utter failure to meet either of these tests.

Notwithstanding the default case of Telstra, D2000-0003, cited by the majority, even that case requires some modicum of evidence to find bad faith registration and use. As Telstra says at the end of Paragraph 7.11:

While my dissent will make no difference in what I consider an unfair and unjustified result -- a result based on supposition and suspicion and not evidence -- I have taken the time to register this dissent in the hope that other Panels will find my reasoning of help in avoiding such results in other cases. The majority feels, in good faith, that its suppositions are correct, and they may be, but I have to base my decisions on facts and the law as I understand them, not on suspicions. The Respondents allegations and defenses are not totally consistent, but neither are the Complainants allegations and suspicions.

I dissent from the finding and conclusion that Respondent has no right or legitimate interest in the domain, for the simple reason that had Respondent engaged an expert trademark attorney to conduct a detailed trademark search and to opine on the issue of possible infringement by Respondents use of the domain for his specialized economic and industry consulting services versus the Complainants trademarks on rubber goods for crutch tips and medical and nursing use, there is not an experienced trademark lawyer anywhere who would have concluded that Complainant had a valid infringement complaint. Given the international classification system for trademarks that permits multiple uses and multiple classes of use for marks that have not become famous and uniquely distinctive, Respondent would prevail in a trademark infringement action, without question, based on the information before us. There was no evidence presented here to show that Complainants mark is famous or well known outside its field of use, it is not unique, and no one could reasonably conclude that there is any likelihood of confusion between diverse uses of the registered mark and the domain name.

This is important to point out because the stated purpose of the UDRP and the whole ICANN domain name dispute process is to prevent "abusive registrations" where a party is attempting to preempt the trademark owner from use of a domain, to sell it to the trademark owner, attempting to use the domain to confuse the public, or to divert business from the Complainant and his business (Policy Para. 4(b)). There is not one scintilla of evidence in this case that shows such facts or conduct. Respondent is not a competitor of Complainant, did not offer to sell the name to Complainant, did not intend to use it to compete, does not use it to compete or prevent its use by Complainant, and is not using it in a manner that confuses anyone. The UDRP is not supposed to be a substitute for trademark infringement actions.

The simple fact is that Complainant chose not to register the domain at issue for its own use for a period of over four years while it could have, and then suddenly when someone else decides to use it for a valid, non-competitive, legal business purpose, Complainant instantly objects to its use, before Respondent even can develop a website for its use and before Complainant even knew what use the domain was intended for. If this is not reverse domain name hijacking by a large corporate Complainant, then there is no such activity recognized under the UDRP cases. I believe a suspicion of bad faith by the Complainant here is as equally feasible as the suspicions of the majority of the Panel here, if we are to base UDRP decisions on suspicion rather than evidence.

It is likely that the term "Carex" was initially selected by Complainant because it suggests "care" in the sense of medical or nursing assistance; not because it was the botanical name for a flower which is the stated reason that Respondent registered three botanical names for plants as domain names for possible use by Respondent. Carex is not a famous or distinctive mark, and is merely a family of marks for medical or nursing type equipment. The Complainant does not own this word in the sense that no one else can ever use it for another type of business; it merely has the right to exclude uses of it that are likely to confuse consumers, as I understand the trademark laws. The decision of the majority here effectively gives the Complainant ownership and the exclusive right to use this word. This result defies common sense and the trademark laws of the world.

I am concerned with the effect of the decision of the majority here since it seems to hold that if a trademark owner objects to a new business adopting a domain name that is the same as its trademark, the domain name owner has no right to consider its use, along with other names, unless it is put into instant use or unless the registrant already has an established business using that name. I have previously made this point in a dissent in another domain name decision. (See WIPO Case No. D2000-0054, J. Crew International, Inc. v. crew.com, April 20, 2000). This philosophy would prevent all uses of domain names that are similar to registered trademarks for any new business not ready to put up a website immediately upon registration of the domain name. This is simply not the law nor the purpose of the UDRP. It is also unfair to small and new businesses, because it gives existing trademark owners a significant, retroactive advantage in the selection and use of domain names.

Furthermore, the majority fails to give any credence to Respondents explanation that the name was one of at least three being considered for use in an established business thinking about changing its name, when the principal became ill for a number of months and was unable to do much about this decision during that time. Merely because the Respondent did not promptly respond to demands that it turn over the name, and because it took the Respondent nearly a year to post its website and use the domain to direct inquirers to its website, the majority concludes that Respondent never really intended to use the domain and must have registered it in bad faith. I am at loss to understand how this leap of logic explains the fact that the Respondent also registered two other non-trademark flower names that it did not use. Does this mere suspicion about the reason for delayed use of the domain name <carex.com> not suggest, logically, that there must also be other trademark owners out there holding marks on these other flowers whom Respondent also sought to take advantage of? The question answers itself.

I submit that for a Complainant to prevail on the issue of lack of right or legitimate interest in a name selected by a Respondent, there must be more than an allegation, unsupported by any facts, that the Respondent had no right to use the name because it did not have an established business using that name and that, regardless of the reason, the domain was not used until one day after a Complaint was filed. Even the unfortunate and often miscited Telstra case does not support the conclusion the majority reaches here.

As this is merely a Dissent, I will not further pursue what I perceive as the errors in the conclusion of the majority on the subject of bad faith registration and use, except to note a couple of factors I feel are ignored by the majority. First, the UDRP Policy Para. 4(a)(iii) requires evidence of bad faith registration AND use. The majority assumes bad faith registration, relying on Telstra, because it took nearly a year for Respondent to resolve its website to the <carex.com> domain, and then the majority founds its conclusion of bad faith use on the basis that "The website itself appears spurious . . . . No reasonable business looking for research would place an order on Respondents online web site based on the information provided there." [Majority, Paragraph 6, subparagraph 7.]

Respectfully, I do not read the UDRP rules and the decisions to date as permitting a Panel to base its conclusion of bad faith use on whether it believes the web site is good advertising or good business judgment. It is evident from reading the web site that the author of it has a somewhat unusual writing style both on the site and in its description of its reports, but it seems unwise and unjustified, in my judgment, for the Panel to base findings of bad faith use on writing styles and content, however unusual or untraditional.

I find myself with feelings parallel to those expressed in the recent decision in Also Holding AG v. Netdojo, WIPO Case No. D2001-1470, February 28, 2002, where even in default of a response by the Respondent that Panel denied the requested transfer, stating that: "[T]he Panel cannot infer bad faith from the paucity of evidence presented by Complainant and therefore, despite some misgivings about the Respondents conduct, declines to do so." The Complainant, as the moving party, had an affirmative obligation to make out a clear case on all three required elements. It did not do so, in my opinion, on the latter two elements discussed here.

In conclusion, I am mindful that the majority panelists have reviewed and reached decisions in many hundreds of other domain name cases more than I, so in the final analysis their suspicions of the Respondent may be correct. It is just that I would prefer to base my decisions on evidence and the law, rather than risking my suspicions being wrong and unfair to the Respondent. If we were wrong, the trademark owner would still have a valid basis for a trademark infringement case, if such really exists; here the Respondents small business has no practical remedy except an expensive declaratory judgment action, which is not cost effective, regardless of the outcome. At any rate, if there is a dearth of evidence in a matter such as this, the burden of going to court, where more facts can be discovered, should be on the Complainant.

G. Gervaise Davis III
Dissenting Panelist

Dated: March 19, 2002