ADMINISTRATIVE PANEL DECISION
Madmann Trademark Holding Company, Ltd. v. Alchemy Healing
Case No. DBIZ2002-00218
1. The Parties
The Complainant in this administrative proceeding is Madmann Trademark Holding Company, Ltd. (“Madmann”), a California corporation having a place of business in Beverly Hills, California, United States of America. The Respondent is Alchemy Healing, an entity of unknown corporate status having an address located in Goodlettsville, Tennessee, United States of America.
2. The Domain Name and Registrar
The domain name involved in this proceeding is .
The Registrar with whom the domain name is registered is Register.com, Inc. of New York, New York, United States of America.
3. Procedural History
On April 28, 2002, Madmanns Complaint was filed by e-mail with the World Intellectual Property Organization Arbitration and Mediation Center (“the Center”) for decision in accordance with the Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on May 11, 2001 (the “STOP”), the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the “STOP Rules”), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the “WIPO Supplemental STOP Rules”). See, STOP Rules, Paragraph 3(b)(c). The Center received a hardcopy of Madmanns Complaint on May 2, 2002.
It appears that the Complaint was filed in accordance with the requirements of the STOP Rules and the WIPO Supplemental STOP Rules, that payment was properly made, and that Madmann has complied with the formal filing requirements. WhoIs search results for the domain name filed with the Complaint confirm that Register.com, Inc. is the Registrar for the contested domain name.
After reviewing the case file, the Panel deems that Alchemy Healing was properly notified in accordance with the STOP Rules.
On May 16, 2002, the Center notified the parties of the commencement of this administrative proceeding, giving Alchemy Healing until June 5, 2002, to file its Response to Madmanns Complaint. On June 4, 2002, Alchemy Healing filed by e-mail its Response to Madmanns Complaint with the Center. The Center acknowledged its receipt of Alchemy Healings Response on the same day.
On June 7, 2002, the Center contacted the undersigned to solicit interest in being the Sole Panelist who would decide this matter After clearing potential conflicts of interest, the undersigned notified the Center on June 11, 2002, of the ability and availability to serve as Sole Panelist for this matter. On June 11, 2002, the undersigned submitted to the Center a Statement of Acceptance and Declaration of Impartiality and Independence. Thus, the Administrative Panel for this proceeding was properly constituted.
On June 12, 2002, the Center forwarded to the undersigned the case file for this proceeding. On that same date, a Notification of Appointment of Administrative Panel and Projected Decision Date was sent by the Center to the Parties. The Center notified the Parties that the undersigned would be the Sole Panelist to decide this matter.
4. Factual Background
Complainant Madmann states that it is part of the AOL Time Warner Group, an internationally known company specializing in, among other activities, the media, entertainment and communications industries. One of AOL Time Warner Groups divisions is Complainant Madmann, which also, apparently, is linked to the Maverick Recording Company. Maverick Recording Company (marketed by Warner Bros. Records, Inc., Warner Music Group) is claimed by Madmann to be a well known global brand. Madmann states that Maverick Recording Company is associated with musical recording artists such as Madonna, Alanis Morisette, Deftones, Erasure, Michelle Branch and Prodigy. Maverick Recording Company, says Madmann, also has produced soundtrack albums for motion pictures such as “Austin Powers The Spy Who Shagged Me,” “Jackie Brown,” “Lock Stock and Two Smoking Barrels,” and “Not Another Teen Movie.”
Complainant Madmann asserts ownership of two United States, three United Kingdom and one CTM registration for the mark MAVERICK in International Classes 9, 16, 41 and 42; except that the CTM registration is limited to classes 9, 16 and 41. Attached to the Complaint is a printout of one of Madmanns trademark registrations from the U.S. Patent and Trademark Offices TARR online data base. Complainant, and its sister corporation Warner Bros., allege ownership of several domain names in the <.com>, <.info> and <.biz> top level domains for second level domain names incorporating the term “Maverick.”
Complainant Madmann also attaches to its Complaint the results of a Google search showing references to Maverick Records, MarketMaverick.com, Maverick Creations, Maverick Magazine, Maverick Boat Company and Maverick the television Western. Madmann produced this set of search results apparently to show the Panel that Maverick Records appears as the first two references in the Google search. The Panel notes that the search results provided are only the first 10 of a total of approximately 610,000 “hits” from the Google search.
According to Madmanns investigation, Respondent’s main business activity is the promotion of workshops, services, articles and products designed to promote a feeling of better quality of life. Respondent, it is alleged, offers products for sale on its website aimed to produce feeling of energy and a “higher vital life force.” Madmann also asserts that Alchemy Healing is linked in some fashion to the Alchemical Hypnotherapy Center purportedly sponsored by a Ms. Marilyn Clevenger. Respondent is further alleged to be the Registrant for several <.com>, <.biz> and <.info> domain names employing the term Alchemyhealing. Madmann alleges that Alchemy Healings business activities reveal no connection with the Maverick name.
Respondent answered Madmanns Complaint through its administrative contact, Gary Hoffman. Mr. Hoffman acknowledges receiving an e-mail when Alchemy Healing applied to register the domain name. This e-mail notified Alchemy Healing of two Intellectual Property Claims filed by Wrangler Apparel Corporation and Madmann with respect to intellectual property rights in the term “Maverick.” In accordance with NeuLevel, Inc.s IP Claim/STOP Procedures, Alchemy Healing was warned that, if it proceeded with the registration of the domain name, it may face potential claims brought either by Wrangler and/or Madmann.
Mr. Hoffman claims that he conducted independent Internet search engine searches for matches on the term “Maverick.” Mr. Hoffman claims, but does not provide proof of, over two thousand total matches for the term “Maverick” when this term was searched through “Google,” “Copernic,” “Yahoo,” and “Yellowpages directory.com.” Mr. Hoffman provided links to several operational websites employing the term Maverick, including those operated by a private individual (Lawrence Goulet), Ford Motor Company, a boating company, a vacation touring company and an Internet service company. Mr. Hoffman also refers the Panel to the “Dallas Mavericks” name used by a basketball team associated with the National Basketball Association in the United States.
Mr. Hoffman admits that his business, Alchemy Healing, has nothing to do with the name Maverick. Alchemy Healing, Mr. Hoffman acknowledges, is a completely different type of business from that which will be associated with the Maverick name. However, Mr. Hoffman disclaims any relationship with Ms. Marilyn Clevenger of the Alchemical Hypnotherapy Center.
Mr. Hoffman claims that he registered the domain name for his wife, Frances Hoffman, who has been operating a public relations and promotions firm, Maverick Enterprises, in the State of Tennessee for the past three (3) years. Mr. Hoffman alleges that his wife, Frances, asked him to register the domain name for her, and that it was Mr. Hoffmans plan and intent to transfer his domain name to Mrs. Hoffmans business. However, this transfer allegedly has been “blocked” due to the filing of the instant STOP proceeding by Madmann.
In support of his, and his wifes, intentions, Mr. Hoffman attaches to Alchemy Healings Response the following:
(1) Schedule C Profit/Loss Statements, filed by Mrs. Hoffman with the U. S. Internal Revenue Service for the years 1999, 2000 and 2001 (all showing that, for these years, Mrs. Hoffman was operating her public relations firm at a loss),
(2) A sample “void” check bearing the legend “Maverick Enterprises, Owner Frances W. Hoffman,”
(3) A letter from Mrs. Hoffman to Mr. Hoffman, dated May 8, 2002, requesting that be transferred to Maverick Enterprises when, and if, the instant STOP proceeding is resolved in Alchemy Healings favor,
(4) A request-to-transfer form, with respect to the domain name, dated May 8, 2002,
(5) A State of Tennessee registration for the mark “Maverick” registered to “Maverick Consulting Services, Inc.” on May 31, 2002,
(6) An online request for incorporation filed on April 27, 2002, by Frances Hoffman for the corporate name “Maverick Consulting Services, Inc.” (which request was granted on May 2, 2002), and
(7) A screen print of a web site appearing at the URL www.FrancesHoffman.com promoting Maverick Consulting Services, Inc. as a company that “work(s) with companies that want to make great hiring decisions and with schools and career centers who want to find the best company match for individuals.”
5. Parties Contentions
Madmann asserts that (i) the contested domain name is identical to a trademark or service mark in which Madmann has rights; (ii) Respondent has no rights or legitimate interests in the respect of the contested domain name; and (iii) the domain name was registered in bad faith.
Alchemy Healing “vigorously disagree(s) with all three contentions raised by Madmann.” Mr. Hoffman points out that the domain name was awarded to him in a lottery-style entry. Alchemy Healing submitted the “winning entry,” and Madmann should not have exclusive rights to any and all Maverick domain names by virtue of the assertion of Madmanns trademark rights in the term MAVERICK.
6. Discussion in Findings
Paragraph 15(a) of the STOP Rules instructs this Panel to “decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principle of law that it deems applicable.”
Paragraph 4(a) of the STOP requires that the complainant must prove each of the following three elements to obtain an order that a .BIZ domain name should be transferred:
(i) the contested domain name is an identical to a trademark or service mark in which the complainant has rights;
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name; and
(iii) the contested domain name has been registered or is being used in bad faith.
In an administrative proceeding pursuant to the STOP, STOP Rules, and WIPO Supplemental STOP Rules, the complainant must prove that each of three elements is present. STOP, Paragraph 4(a). STOP Paragraph 4(b) lists a set of circumstances, without limitation, if found by Panel to be present, to be evidence of the registration or use of the domain name in bad faith. On the other hand, Paragraph 4(c) of the STOP lists a set of circumstances, without limitation, if found by the Panel to be proved based upon its evaluation of all evidence presented, to be evidence of the Registrants right to, or a legitimate interest in, the contested domain name. The Panel shall now proceed to weigh the evidence presented against the requirements of the STOP.
The Domain Name is Identical to a Service Mark in which Complainant has rights
Madmann asserts, and Alchemy Healing does not seriously contest, that the domain name is identical to the MAVERICK service mark in which Madmann has rights. Therefore, Paragraph 4(a)(i) of the STOP has been satisfied.
Respondent has Sufficiently Shown that it has Rights or Legitimate Interests in Respect of the Contested Domain Name
The Panels analysis of whether Alchemy Healing has rights and/or legitimate interests in the contested domain name presents a close question. However, Alchemy Healing has come forward with facially sufficient evidence to support its rights and/or legitimate interests in the contested domain name.
The circumstances for proving rights or legitimate interests in respect of a domain name, as provided in the STOP, Paragraphs 4(c)(i) to (iii), expressly state and/or contemplate that these rights or legitimate interests must have existed before the domain name registrants notice of a dispute.
It is not readily apparent from the case file when Alchemy Healing applied to register the domain name. However, it is clear that Mr. Hoffman received a notice of two IP claims with respect to the domain name on September 16, 2001. The two IP claimants were Wrangler Apparel Corporation and Complainant Madmann. Mr. Hoffman decided to proceed in the face of this notification from NeuLevel, and ultimately obtained the registration for the domain name on March 27, 2002.
Madmann filed its Complaint with the Center on April 28, 2002, and Mr. Hoffman was simultaneously notified of this filing on the same day. Judging by the attachments to Alchemy Healings Response, Mr. and Mrs. Hoffman engaged in a flurry of activity shortly after the filing of Madmanns Complaint, including: a letter agreement of transfer exchanged between Mr. and Mrs. Hoffman on May 8, 2002, the filing of a transfer request on the same date, a state trademark registration obtained on May 31, 2002, and incorporation papers filed with the State of Tennessee on April 27, 2002. All of these activities occurred after the filing and notification to Mr. Hoffman of Madmanns STOP Complaint. The sample check and screen print for Mrs. Hoffmans business online, both bearing the Maverick name, are not dated, and facially cannot determine respondents right or legitimate interest in respect of the contested name before the critical date(s).
What saves the day for Alchemy Healing, as well as for Mr. and Mrs. Hoffman, are the Internal Revenue Service filings from 1999 to 2001. On their face, these filings (which bear no facial evidence of forgery) demonstrate an asserted right and/or legitimate interest in the “Maverick Enterprises” name prior to any date on which Alchemy Healing or its underlying proprietor, Mr. Hoffman, were made aware of Madmanns rights in the term “Maverick.” The Panel notes Mr. Hoffmans claim in the Response that he is an officer of Maverick Consulting Services, Inc. that he is the husband of Frances Hoffman, and that he registered the domain name on Mrs. Hoffmans behalf. Therefore, Paragraph 4(a)(ii) of the STOP has not been satisfied.
There is Insufficient Proof That Respondent Has Registered the Contested Domain Name in Bad Faith
Due to the filings of IP claims and the institution of this STOP proceeding, there has not yet been an opportunity for the domain name to be used either in a bad faith or bona fide good faith manner. There has been no proof that either Mr. Hoffman or any other representative of Alchemy Healing has offered to sell the contested domain name to Madmann at any price, reasonable or otherwise. In fact, Complainant Madmann states in its Complaint that it “can only look to establish bad faith registration.”
Given the manner in which the NeuLevel, Inc. IP Claim/STOP Proceeding procedure works, Alchemy Healing and Mr. Hoffman were certainly aware of Madmanns interest in the MAVERICK mark before electing to proceed with the completion of their registration of the domain name. However, this knowledge, in and of itself, cannot establish bad faith registration of the contested domain name.
The Panel takes judicial/administrative notice that the term “Maverick” is a defined dictionary term. For example, the American Heritage Dictionary of the English language (Houghton Mifflin Co. 1981) defines “Maverick” as “1) an unbranded or orphaned range calf or colt, traditionally considered the property of the first person who brands it, (2) a horse or steer that has escaped from a herd, 3a) one who refuses to abide by the dictates of his group; a dissenter and 3b) one who resists adherence to or affiliation with any single organized or a faction; an independent.” Further, evidence submitted by both parties shows that the term Maverick has been used as a mark, name, domain name or (arguably) a source of origin of the goods and/or services of several third parties unaffiliated with either Complainant or Respondent.
Under the circumstances, particularly given the facially reasonable grounds for Respondents registration of the contested domain name, the Panel cannot on the record before it ascribe bad faith to Alchemy Healings registration of the domain name. The Woodlands Operating Company L.P. et ano. v. James Nelson, WIPO Case No. DBIZ2001-00046, (April 20, 2002) (“[I]t appears that Respondent could have registered the domain name in good faith with the reasonable belief that its proposed use would not infringe Complainants trademark rights.”); Immediate Software fA1/4r Marketing Und Media and Uwe Czaia. v. Emmediate, WIPO Case No. DBIZ2001-00007, (February 13, 2002)(“The Respondent has come forward with an explanation as to why it selected the domain name and that explanation appears to the Panel to be a rational one. The Panel finds that the Complainants has failed [sic] to prove that the Respondent either registered the domain name in bad faith or is using it in bad faith.”). Therefore, Paragraph 4(a)(iii) of the STOP has not been satisfied.
The Panel finds that Complainant Madmann Trademark Holding Company Ltd. has not met its burden of proof under the STOP, Paragraphs 4(a)(i) to (iii). Therefore, the Panel DENIES the relief requested in the Complaint. Because Respondent has demonstrated on the present record that it has legitimate rights to the contested domain name, the Panel herein DISMISSES the Complaint and further holds that NO SUBSEQUENT CHALLENGES under the STOP against the domain name that is the subject of this Panels decision shall be permitted.
Jonathan Hudis Sole Panelist
Dated: June 26, 2002