WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Familiar Limited v. CTD Technologies, Inc.
Case No. D2001-1009
1. The Parties
Complainant is Familiar Limited, a commercial company incorporated in the United Kingdom, with its principal place of business at 100 Longwater Avenue, Greenpark, Reading, Berkshire, RG2 6GP in the United Kingdom.
The named Respondent is CTD Technologies, Inc., a commercial U.S. company, having a place of business at 3091 W. Galbraith Rd., Cincinnati, OH 45239, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <familiar.com>. The Registrar is Network Solutions, Inc.
3. Procedural History
a) The Center received Complainant's Complaint by e-mail on August 8, 2001, and by hard copy on August 13, 2001.
b) On August 10, 2001, a request for registrar verification was sent by the Center to the Registrar requesting confirmation that it had received a copy of the Complaint from Complainant, that the domain name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the domain name and advice as to the current status of the domain name. Confirmation was received from the Registrar on August 13, 2001, that it had received a copy of the Complaint on August 10, 2001, that the domain name <familiar.com> was registered with it, that CTD Technologies, Inc. was the current registrant and that the NSI Service Agreement, Version 5 was in effect and applied to the domain name. Complainant has stated that this registration agreement incorporates the Uniform Domain Name Dispute Resolution Policy (the "Policy"). The Registrar also provided contact details for the domain name registrant and the registrantís technical, administrative and billing contacts.
c) By an e-mail letter sent to Complainant on August 14, 2001, the Center requested confirmation that not only a copy of the Complaint, but also all annexes to the Complaint, had been sent to Respondent in electronic form or in hard copy. On the same day, August 14, 2001, Complainant sent an e-mail letter to the Center advising that complete electronic copies of the annexes were e-mailed to Respondent as of August 9, 2001.
d) On August 15, 2001, the Center forwarded Notification of Complaint and Commencement of Administrative Proceeding to CTD Technologies, Inc., sent to the e-mail addresses provided by the Registrar for that companyís technical, administrative and billing contacts, and also to the e-mail addresses provided in the Complaint.
Hard copies of the Notification of Complaint and Commencement of Administrative Proceeding with enclosures were also forwarded by the Center by post/courier to the address of CTD Technologies, Inc. provided by the Registrar, namely 3091 W. Galbraith Rd., Cincinnati, OH 45239, United States of America.
The Notification of Complaint and Commencement of Administrative Proceeding was also forwarded to Complainant at the e-mail address it had provided.
The Notification of Complaint and Commencement of Administrative Proceeding confirmed the date on which the Complaint had been received by the Center and that the formal requirements had been satisfied and advised that the formal date of the Commencement of Administrative Proceeding was August 15, 2001. The Notification of Complaint and Commencement of Administrative Proceeding further stated that Respondent had twenty calendar days from the date it received this Notification in which to submit a Response, the last day for sending its Response to Complainant and to the Center being September 4, 2001.
Furthermore, the Notification of Complaint and Commencement of Administrative Proceeding provided that, if the Response were not sent by the above date, Respondent would be considered in default, that an Administrative Panel would still be appointed to review the facts in the dispute and to decide the case, and that the Administrative Panel would have discretion to decide whether to consider a late filed Response and to draw such inferences from Respondentís default as it considered appropriate.
e) On September 5, 2001, as no Response had been received by the Center, the Center forwarded Notification of Respondent Default to the technical, administrative and billing contacts for CTD Technologies, Inc., at the e-mail addresses provided by the Registrar and to those provided in the Complaint. Notification of Respondent Default was forwarded by the Center by e-mail to Complainant.
f) On September 13, 2001, Notification of Appointment of the Administrative Panel and Projected Decision Date ("the appointment notification") was sent to Complainant by e-mail and by e-mail to the technical, administrative and billing contacts for CTD Technologies, Inc. The appointment notification informed the parties that the Administrative Panel would consist of a single member, Joan Clark, Q.C., who had signed and forwarded to the Center a Statement of Acceptance and Declaration of Impartiality and Independence. The appointment notification also stated that the expected decision date was September 27, 2001.
g) On September 10, 2001, the Center received an unsigned Late-Filed Response, acknowledged receipt of the Late-Filed Response and informed the parties that the Panel would have the discretion whether to take the filing into consideration. Upon being advised by the Center that a Late-Filed Response had been received, the Panel informed the Center that she would accept the Late-Filed Response since it was only a few days late. The Response was accordingly forwarded by the Center to the Panelist on September 14, 2001.
h) In response to an enquiry to the Center, the Panel received confirmation from the Center that Complainant was copied on the Response and further that Complainant has had also received a copy of the e-mail sent to the Panel on September 14, 2001, transmitting the Late-Filed Response to the Panel for consideration. The Panel is satisfied that Complainant has been aware of and received a copy of the Late-Filed Response and further was aware that the Panel had accepted to receive and read the Late-Filed Response.
4. Factual Background and Partiesí Contentions
In its Complaint, Complainant Familiar Limited states that it was established as a commercial company incorporated in the United Kingdom on June 16, 1991, under number GB 569 9658 55.
The Complaint states that the domain name <familiar.com> is identical to Complainantís legal trading name Familiar and similar to its legal company name Familiar Limited. Complainant further states that it has been trading for ten years since its inception in June 1991 in the business markets of enterprise software development and Internet technology consultancy and training. Complainant states it is in the process of registering the trademark FAMILIAR in the U.K. Patent and Trademarks Office for various trademark classes relating to the business in which it is engaged as above-mentioned.
In a series of copies of e-mail communications and annexes to the Complaint Complainant sets forth the history of its relationship with CTD Technologies, Inc. The first communication was on March 10, 1999 when, according to the Complaint, Complainant discovered that CTD Technologies, Inc. owned the domain <familiar.com> and, in an e-mail letter from Andrew D. Forkes on behalf of Complainant, forwarded an enquiry to CTD Technologies, Inc. asking whether Complainant could purchase the domain name <familiar.com> since Complainantís name was "Familiar Limited". Complainant also stated in its first e-mail that it noted that CTD Technologies, Inc. was not actually using the domain name, or had not used it for a while, and asserted that Complainant was not a large company, being a team of three to be precise, and could obviously not afford a large sum to purchase the domain name.
In the reply of March 10, 1999 CTD Technologies, Inc., in an e-mail signed by Mike Brown, describing himself as Founder/CEO of CTD Technologies, Inc., stated that the domain name was originally registered to complement a software product that this company had in development, but which project had since been cancelled. Mr. Brown saw no problem with transferring the domain name to Complainant, stated that CTD Technologies, Inc. was also a small company of nine employees and proposed that "we do things the old-fashioned way and barter". He wrote that he was a collector of brewery labelled glassware and enquired as to whether Complainant would be willing to send him a pint glass or mug from a U.K. brewery in exchange for the rights to the domain name.
In subsequent correspondence Complainant agreed to acquire the beer glasses and forward them to CTD Technologies, Inc. More jocular and friendly correspondence ensued by e-mail in which CTD Technologies, Inc., by Mr. Brown, made statements such as "we should start the agonizing process of dealing with InterNIC. One of us must complete the template to transfer the domain name and generate a tracking number; I do not recall which party must do so, but will investigate".
Shortly thereafter, Complainant sourced and shipped four ale glasses to CTD Technologies, Inc. The latter acknowledged their receipt with considerable pleasure. Mr. Brown, as Founder/CEO of CTD Technologies, Inc., instructed this companyís administrative contact to enter a record into its DNS to point <www.familiar.com> to the address "220.127.116.11". In subsequent e-mails, such as that of March 23, 1999, CTD Technologies, Inc. in an e-mail from Mr. Brown stated that it would continue to maintain the DNS record until the change was effected and suggested that if Complainant wished it could add an MX record for mail forwarding and further that Complainant could start using <familiar.com> for its routine business.
On April 8, 1999 CTD Technologies, Inc. through Mr. Brown advised Complainant "paperwork in motion, at the mercy of the Ďdot comí people" and added that he needed "technical/zone contact for the domain name (your ISP), and the name server info that will be hosting it. We can go ahead and modify the essentials and then let them catch up to us". After further communications and after Complainant had again contacted Mr. Brown, on August 23, 1999 CTD Technologies, Inc. again through Mr. Brown advised Complainant in an e-mail "I understand your frustration. Letís do this for now, strictly as an intermediate step. I can go ahead and change the contact info for Admin/Tech/Billing to the parties you designate", and further "Iíll resubmit the letter to transfer the registration to Familiar".
Following further e-mails from CTD Technologies, Inc. to similar effect, in an e-mail of October 7, 1999 to Complainant Mr. Brown stated "You guys now have control. Iíll start the legal paperwork to effect change in registrant this week." He also enclosed an e-mail he had received from Domain Name Registration Accounts which reported "Modifications for the domain name registration shown below have been completedÖ." The last e-mail in this series attached to the Complaint is one dated October 25, 1999 from CTD Technologies, Inc. to Complainant stating "I need the complete legal name of your company, the name and formal title of a responsible signatory within your company, and the complete mailing address for your company. Once I have this, weíll formalize the transfer of the domain at long last".
Complainant avers that the information requested was forwarded and that Complainant considered the domain name transferred.
According to the Complaint, for two years Complainant made use of the domain name on a daily basis since acquiring its use from the then "managers" of CTD Technologies, Inc. During that period Complainant states it constantly sought to increase the recognition of its domain name via its business branding, publications, working processes, customer communications, stationery, websites and advertising. Complainant also avers that "The URL <www.familiar.com> has been used in most or all Familiar communications and publications and is widely associated with Familiar Limited."
In a second series of copies of e-mails annexed to the Complaint Complainant attaches an e-mail of August 1, 2001, to John P. Hart II (described elsewhere by Complainant as "current CEO of CTD") in confirming the agreement which Mr. Andrew Forkes on behalf of Complainant and Mr. Mike Brown on behalf of CTD Technologies, Inc. had made regarding the transfer of the domain name and requesting that CTD Technologies, Inc. sign the registrar transfer form to complete the transfer.
By an e-mail of August 3, 2001, Mr. Hart advised Complainant:
"I donít have good news for you. Mike Brown was never in a fiduciary position to execute a sale of <familiar.com> his wife owned the company, thatís why the transaction never occurred. When we purchased the assets of CTD Technologies, Inc. We (sic) purchased this name and 148 others. Connect the Dots, Inc. listed this domain for sale 45 days ago and have since received several lucrative bids. Should you wish to bid on this domain, please do so."
Mr. Forkes, on behalf of Complainant, replied asking Mr. Hart to reconsider and stated:
"The agreement was made in good faith, and we can display much evidence as to it (sic) use over the last two years. All the links from the domain refer to our own suppliers, and we can demonstrate payment for the domains usage & registrationÖ"
Further e-mails ensued between the parties during which Mr. Hart stated that "we are the legal owner of this name and a legal document executing our ownership is in place. Mike Brown unfortunately used you for his own personal gain". When Complainant enquired as to how much he was looking for, Mr. Hart advised that a high bid of $33,000.00 had been received for the domain name.
Complainant states that recently, (August 6, 2001), which was subsequent to the correspondence with Mr. Hart, all the IPTAGS of the domain name at the current registrar were changed without any notification, formal or otherwise, to Complainant. Complainant considers this to have been a hostile act which disabled its use of the domain name completely, and therefore its customersí ability to use the domain name for communication, service, e-mail or website.
Complainant avers that Respondent has no legitimate interests in the domain name in dispute as it has not attempted to make use of, or preparations for or to promote the domain in any way since Respondent was acquired by new owners. Complainant reiterates that CTD Technologies, Inc. had previously agreed to the transfer of the domain name and "exchanged goods of value" with the previous management of that company. Further, Complainant asserts that Respondent is using the domain name in bad faith.
Complainant requests the Administrative Panel to issue a decision that the domain name in dispute <familiar.com> be transferred to Complainant.
The Late-Filed Response consists of a text covering half a page, headed by the title "ICANN: Response". The title is followed by seven numbered paragraphs which state that the name <familiar.com> is and was always intended to be used in conjunction with an ongoing project with Connect-the-Dots, Inc., that the last communication with Mike Brown (of CTD Technologies, Inc.) concerning this domain transfer was October 25, 1999, more than a year before the company was sold, and that the company was sold in October of 2000, that ownership of <familiar.com> was transferred with the assets of the company, and that no communication was attempted with Connect-the-Dots, Inc. until August of 2001.
There is no signature on the Response, and the Center has been unable to provide the Panel with a document showing the senderís name and address. However the Panel has observed from a screen print of the authorship window for the Response that it originated from Connect-the-Dots, Inc., not from CTD Technologies, Inc.
5. Discussion and Findings
The circumstances of this case are novel, in the experience of this Panel. The following facts have been established to the satisfaction of the Panel:
1. Familiar Limited, a U.K. company, was incorporated in 1991;
2. The domain name <familiar.com> was registered with Network Solutions, Inc. in 1996 in the name of CTD Technologies, Inc. which is still the registrant of the domain name;
3. Complainant Familiar Limited entered into an agreement with CTD Technologies, Inc. in 1999 to purchase the domain name for a consideration which was duly delivered and acknowledged;
4. Despite attempts made by CTD Technologies, Inc. the transfer of the registration of the domain name to Complainant was never effected with the Registrar Network Solutions, Inc.;
5. Over a two-year period until August 1999, CTD Technologies, Inc. recognized the agreement to convey the name to Complainant and arranged for Complainant to enjoy the use of the domain name by creating links to Complainant;
6. Connect-the-Dots, Inc. purchased the assets of CTD Technologies, Inc. including the domain name <familiar.com> and 148 others and listed the domain name <familiar.com> for sale, probably in June 2001 (since in his letter of August 3, 2001, Mr. Hart stated the domain name was listed for sale 45 days previously);
7. When contacted by Familiar Limited on August 1, 2001, Connect-the-Dots, Inc. refused to recognize the prior agreement of CTD Technologies, Inc. to convey the domain name to Familiar Limited;
8. Connect-the-Dots, Inc. stated in correspondence produced by Complainant that it had received several lucrative bids for the domain name, the highest bid being $33,000, suggested Familiar Limited bid on the domain name and stated it was willing to discuss terms.
The evidence is clear from the correspondence produced by Complainant and from the Response by Connect-the-Dots, Inc. that the assets of CTD Technologies, Inc. including the domain name in issue were sold to Connect-the-Dots, Inc. The evidence also shows that after acquiring the domain name Connect-the-Dots, Inc. listed it for sale seeking "lucrative" bids and offered to discuss terms with Complainant for the sale or lease of the domain name to the latter.
In this unusual situation while CTD Technologies, Inc. was served with the Complaint the Response was filed by a different entity, Connect-the-Dots, Inc., declaring itself to be the owner of the domain name and clearly in control of same.
Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following in order that Respondent be required to submit to a mandatory administrative proceeding:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and
(ii) Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances, without limitation, each of which, if proven, shall demonstrate Respondentís rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.
a) Identity or Confusing Similarity of the Domain Name to a Trademark or Service Mark in Which Complainant Has Rights
The Panel finds that the domain name <familiar.com> is identical to the trading name and unregistered trademark FAMILIAR of Complainant in which Complainant has rights.
The criterion under i) above for requiring Respondent to submit to a mandatory administrative proceeding has been met.
b) Rights or Legitimate Interests of Respondent in the Domain Name
The Response has failed to establish CTD Technologies, Inc.ís use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services, that it has been commonly known by the domain name or that it has been making a legitimate, non-commercial or fair use of the domain name without intent for commercial gain. The same conclusions apply to Connect-the-Dots, Inc., which filed the Response.
The Panel concludes that the criterion under (ii) above has been satisfied.
c) Registration and Use of the Domain Name In Bad Faith
The third criterion under paragraph 4(a) of the Policy is that the domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy provides several circumstances which, in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of the domain name in bad faith.
The Panel finds that Connect-the-Dots, Inc. acquired the domain name from CTD Technologies, Inc., the named Respondent which did not respond to the Complaint. Connect-the-Dots, Inc. declared itself the owner of the domain name, filed the Response and is clearly in control of the domain name. The Panel also finds that Connect-the-Dots, Inc., the holder of the domain name, acted in bad faith in that it acquired and has used the domain name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant or a competitor for an exaggerated consideration, contrary to paragraph 4(b)(i) of the Policy.
The Panel concludes that the criterion under (iii) above has been satisfied.
In view of the foregoing, the Panel finds:
(a) the domain name <familiar.com> is identical to Complainantís trading name and unregistered trademark FAMILIAR in which Complainant has rights;
(b) The Respondent has no rights or legitimate interests in the domain name in dispute;
(c) The particular circumstances of the case are evidence of the registration and use of the domain name in bad faith.
The Panel orders that the domain name <familiar.com> be transferred to Complainant.
Dated: November 5, 2001