Robert A. Scrivano v. James Walker

WIPO Arbitration and

Mediation Center

ADMINISTRATIVE PANEL

DECISION

Robert A. Scrivano v. James Walker

Case No. D2004-0037

1. The Parties

The Complainant is Robert A. Scrivano ("Complainant"), of Sacramento,

California, United States of America, represented by Malovos & Mendoza,

LLP, C/O Joanna R. Mendoza, Malovos & Mendoza, LLP, United States of America.

The Respondent is James Walker ("Respondent"), of Loomis, California,

United States of America. Since Respondent did not submit a formal Response

in this proceeding, Respondent did not submit to the Center any contact information

other than that which is found in the WHOIS record for the domain name at issue.

2. The Domain Name and Registrar

The domain name at issue is <assetsandaging.com> ("Domain Name").

The Registrar with which the Domain Name is registered is Network Solutions,

Inc. ("Registrar"), Herndon, Virginia, United States of America.

3. Procedural History

The Complaint was filed with the World Intellectual Property Organization Arbitration

and Mediation Center (the "Center") on January 16, 2004.

On January 19, 2004, the Center transmitted by email to Network Solutions,

Inc. a request for registrar verification in connection with the Domain Name

at issue. Also on January 19, 2004, the Center received by email a

supplemental submission from Complainant. On January 20, 2004, Network

Solutions, Inc. transmitted by email to the Center its verification response

confirming that Respondent is listed as the registrant and providing the contact

details for the administrative, billing, and technical contact. On January 20, 2004,

Respondent transmitted an email to the Center, stating that he had transferred

ownership of the Domain Name to Assets and Aging, Inc., a Nevada corporation.

On January 21, 2004, the Center added Complainant’s supplemental submission

to the Complaint. The Center verified that the Complaint (including the supplemental

submission) satisfied the formal requirements of the Uniform Domain Name Dispute

Resolution Policy (the "Policy"), the Rules for Uniform Domain Name

Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental

Rules").

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally

notified Respondent of the Complaint (including the supplemental submission),

and the proceedings commenced on January 21, 2004. In accordance with

the Rules, Paragraph 5(a), the due date for the Response was February 10, 2004.

No formal Response was filed with the Center before the due date. On January 27, 2004,

Richard King ("King") transmitted an email responding to the Complaint

on behalf of either Respondent or Assets and Aging, Inc. ("Submission").

Also on January 27, 2004, the Center transmitted by email a reply

to King, stating that a formal Response was still due on or before February 10, 2004.

On February 5, 2004, the Center emailed the parties regarding the

issue of the ownership of the Domain Name, stating that the Domain Name belonged

to the original registrant, Respondent, and that the Complaint would run against

Respondent, not King or the entity Assets and Aging, Inc. On February 6, 2004,

the Center received a revised Registrar Verification from Network Solutions,

Inc. On February 11, 2004, the Center transmitted by email to the

parties a Notification of Respondent Default.

The Center appointed Carol Anne Been as the sole panelist in this matter on

February 20, 2004. The Panel finds that it was properly constituted.

The Panel has submitted the Statement of Acceptance and Declaration of Impartiality

and Independence, as required by the Center to ensure compliance with the Rules,

Paragraph 7.

The Transmission of Case File to Administrative Panel was dated February 20, 2004.

English is the language of the proceeding. In the Notification of Appointment

of Administrative Panel, the Projected Decision Date for the Administrative

Panel to forward the decision to the Center was set for March 5, 2004.

4. Factual Background

a. The following facts are asserted by Complainant in the Complaint and are

not disputed.

Complainant

Complainant is an individual residing in Sacramento, California, United States

of America. Complainant is an independent senior-care planning consultant and

the sole proprietor of the business known as "Assets and Aging," also

located in Sacramento, California. Complainant is the host of a radio program

called "Assets and Aging" that is broadcast on Sunday mornings on

the radio station KFBK 1530 AM throughout Northern California. The radio program

has been broadcast on KFBK since September, 1998.

Complainant’s radio show provides information to the listening audience about

long-term care benefits, Medi-Cal (a federal- and state-funded health insurance

program for low-income residents), and similar issues affecting senior citizens.

Respondent occasionally appeared as a guest on Complainant’s radio program as

an attorney specializing in elder care law. In late July, 1999, Complainant

and Respondent entered into an informal business relationship under the business

name "Assets & Aging." Complainant handled the filing of the necessary

paperwork to conduct business under the name of "Assets & Aging."

At the end of 2000, the business relationship was dissolved by mutual agreement

with Respondent withdrawing from the business. The dissolution was not formalized

in writing until September 18, 2001. Under the terms of the written

dissolution agreement, Respondent agreed to transfer all his ownership rights

in "Assets & Aging" back to the sole ownership of Complainant.

The agreement was in the form of a letter from Respondent to Complainant, stating

that "for valuable consideration which is hereby acknowledged, I James

Walker, hereby transfer my ownership to Bob Scrivano of Assets & Aging to

his sole property." A copy of the letter is attached to the Complaint as

Exhibit F.

In late 2001 or early 2002, Respondent started broadcasting his own radio program

on the same radio station, and on the same day of the week, as Complainant’s

radio program.

Complainant discovered that the Domain Name was registered and used by Respondent

in October, 2003, through a series of email correspondence between Complainant

and Respondent. In those emails, Respondent told Complainant that he had purchased

the Domain Name and about 30 other domain names that all point to Respondent’s

website. Respondent offered to sell the Domain Name to Complainant for $15,000.

Respondent

Respondent is an individual, doing business both as Senior Care Advocates and

as Elder Law Offices, with a principal place of business located in Loomis,

California. After the dissolution of the business relationship between Complainant

and Respondent, Respondent began hosting a radio program on radio station KFBK

1530 AM on Sunday afternoons throughout Northern California. Respondent’s radio

program, named "Senior Care Advocates," primarily focuses on providing

information about long-term health care benefits for senior citizens. Respondent

operates a website for the "Senior Care Advocates" radio program,

which is located at the domain name <seniorz.org>.

Respondent registered the Domain Name on May 18, 2001. At one time,

the Domain Name allegedly led to a website that created a direct link to Respondent’s

website for "Senior Care Advocates" at "www.seniorz.org".

The Domain Name currently leads the viewer to a screen that uses Complainant’s

trade name, "Assets and Aging," and displays a prominent advertisement

and link to the "Senior Care Advocates" website to obtain further

information about Respondent’s services.

In the period immediately preceding the commencement of this administrative

proceeding, Respondent and counsel for Complainant engaged in a series of correspondence,

copies of which are attached to the Complaint as Exhibit H, in which Respondent

denied that the assignment of his ownership rights in Complainant’s Assets &

Aging business included the rights in the Domain Name.

b. The following facts are asserted on behalf of Respondent in the Submission

by Richard King.

Respondent transferred the Domain Name to a Nevada corporation known as Assets

and Aging, Inc. on January 20, 2004. Assets and Aging, Inc. is a valid

business entity recognized by Nevada’s Secretary of State. On January 19, 2004,

the Domain Name was transferred from Network Solutions, Inc. to another registrar,

Godaddy.com. The proper owner of the Domain Name is Assets and Aging, Inc.,

a company that has a legitimate interest in using the Domain Name to promote

its "online identity." King is the technical adviser for Respondent;

all correspondence shall be directed to him in connection with this dispute.

In fact, the Center has treated King as a co-correspondent for Respondent, by

providing notice to both Respondent and King.

The claimed Domain Name transfer from Respondent to Assets and Aging, Inc.

was declared by the Center as a breach of Section 8 of the Policy, and the Center

arranged to return the ownership of the Domain Name back to the original registrant,

Respondent.

5. Parties’ Contentions

A. Complainant’s Contentions

i. Domain Name Identical

Complainant contends that the Domain Name is identical to Complainant’s business

name, with the only difference being the addition of ".com" to Complainant’s

business name. Complainant alleges that Respondent’s use and registration of

the Domain Name infringes upon Complainant’s rights in its business name "Assets

and Aging," and unlawfully interferes with Complainant’s business for commercial

gain at Complainant’s expense. Complainant argues that he has tied his business

name to his services since September, 1998, through his weekly radio program.

As a result, Complainant believes he has common law trademark protection in

his business name.

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

Complainant alleges that Respondent has no rights or legitimate interests in

the Domain Name. Complainant contends that Respondent is merely using the Domain

Name to direct Internet users to Respondent’s competing "Senior Care Advocates"

website. Complainant argues that Respondent obtained the Domain Name only after

dissolution of Respondent’s business relationship with Complainant by mutual

agreement. Between the time of the dissolution of the business relationship

in late 2000 and the time the dissolution was put in writing on September 18, 2001,

Respondent registered the Domain Name. Complainant alleges that during this

time, Respondent provided assurances to Complainant that Respondent was not

using Complainant’s name for his own business. Complainant asserts that Respondent’s

written confirmation in the dissolution document in September, 2001, that he

transferred all of his ownership interest in the "Assets & Aging"

business to Complainant, was made with the knowledge that Respondent already

had registered the Domain Name. Yet Respondent withheld information about the

Domain Name from Complainant at the time of the execution of the dissolution

document.

With regard to Respondent’s assertion that the Domain Name no longer belongs

to Respondent but to a Nevada corporation known as Assets and Aging, Inc., Complainant

alleges that there are no records in Nevada that indicate that Assets and Aging,

Inc. is registered to do business in the state. Complainant asserts that neither

Respondent nor Assets and Aging, Inc. has a legitimate interest in the "Assets

and Aging" name other than to capitalize on misdirected Internet users

looking for Complainant who are led to Respondent’s website as a result of the

use of the Domain Name and the use of the name "Assets and Aging"

on the current webpage at the Domain Name.

iii. Domain Name Registered or Used in Bad Faith

Complainant alleges that Respondent registered and is using the Domain Name

in bad faith.

Complainant contends that Respondent’s actions in registering and using the

Domain Name were a concerted attempt to withhold the Domain Name from Complainant

and to profit from confused members of the public looking for Complainant or

Complainant’s services offered under his business name.

Complainant alleges that Respondent registered the Domain Name only after

Respondent ceased his participation in the "Assets & Aging" business

relationship with Complainant. Complainant further alleges that Respondent later

executed a written agreement transferring all his ownership interest in the

business back to Complainant, without disclosing the Domain Name registration,

also showing evidence of bad faith.

Complainant further contends that Respondent acted in bad faith by offering

to sell Complainant the Domain Name for $15,000.

B. Respondent’s Contentions

Respondent has not filed a Response and thus has not contested the allegations

of the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires Complainant to prove that:

(i) the Domain Name is identical or confusingly similar to a service mark in

which Complainant has rights;

(ii) Respondent has no legitimate interest in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. The Domain Name is identical to a trademark in which Complainant has rights

Complainant has alleged that he has common law rights in the trademark ASSETS

AND AGING. Complainant has used this mark to identify his services since at

least as early as September, 1998, when Complainant’s radio program was first

broadcast in Northern California. Complainant is in the United States where

secondary meaning arises from longstanding, substantially exclusive and continuous

use of a mark. Furthermore, it is well-established that a trademark need not

be registered by a government authority in order to give a party legal rights

in the mark. See, e.g., Jeanette Winterson v. Mark Hogarth, WIPO

Case No. D2000-0235 (May 22, 2000); Adobe Systems Incorporated

v. Domain OZ, WIPO Case No. D2000-0057

(March 22, 2000); Desert Schools Federal Credit Union v. Symlink

Communications, LLC, WIPO Case No. D2001-0528

(July 4, 2001).

Respondent registered the Domain Name in May, 2001. The Domain Name is identical

to Complainant’s mark. The addition of ".com" does not alter the mark

and does not alter the functional identity to the Complainant’s mark. See, e.g.,

Advanced Book Exchange Inc. v. Argyle Emporium, WIPO

Case No. DAU2003-0004 (November 13, 2003); Museum of Science

v. Asia Ventures, Inc., WIPO Case No.

D2003-0691 (October 20, 2003).

Therefore, the Administrative Panel holds that the Domain Name is identical

to Complainant’s mark, ASSETS AND AGING, in which Complainant has common law

legal rights.

B. Respondent has no legitimate interest in respect of the Domain Name

Respondent has not set forth any evidence of circumstances of the type described

in Paragraph 4(c) of the Policy, or of any other circumstances indicating a

right or legitimate interest in the Domain Name. Respondent has provided no

evidence of announcements or other publicity concerning his business. Respondent

or his business is not known by the Domain Name; in fact, Respondent or his

business is known by the name of his competing radio show, "Senior Care

Advocates." Respondent has not submitted a Response to justify his purchase

of the Domain Name shortly after he had terminated his business relationship

with Complainant at the end of 2000.

If Respondent acquired any rights in the mark through participation in the

business relationship with Complainant, he disclaimed them by withdrawing from

the business in 2000 before he registered the Domain Name, which he confirmed

in writing on September 18, 2001.

Respondent’s use of the Domain Name is without any legitimate interest since

Respondent operates his own informational radio program known as "Senior

Care Advocates," and has no legitimate purpose to use the name of a competing

program as a domain name, other than to capitalize on the good will and popularity

of Complainant’s trademark and business name for Respondent’s commercial gain.

Further, Respondent’s attempt to transfer ownership of the Domain Name to an

entity known as Assets and Aging, Inc. appears to have been calculated to bolster

his position or delay the proceedings, in either case a tacit acknowledgment

that Respondent does not have a legitimate interest in owning and using the

Domain Name.

Therefore, the Administrative Panel holds that Respondent has no rights or

legitimate interests in the Domain Name.

C. The Domain Name has been registered and is being used in bad faith

Respondent registered the Domain Name after the Complainant first began

his use of the mark ASSETS AND AGING in connection with his radio program in

September, 1998, and after Respondent appeared on Complainant’s program.

Respondent’s registration of the Domain Name also came after the parties

had mutually agreed that Respondent would withdraw from the "Assets &

Aging" business. Respondent was well aware of the name "Assets &

Aging" and of Complainant’s ownership interest when he registered the Domain

Name. The evidence also points to the fact that Respondent deliberately misled

Complainant, through repeated assurances, to believe that all rights in the

business "Assets & Aging" (including the business name) would

be owned by Complainant, as reflected in a series of emails attached to the

Complaint as Exhibit F.

With knowledge of Complainant’s mark, Respondent registered and used the Domain

Name to capitalize on Complainant’s rights to misdirect the public and for Respondent’s

own commercial gain.

Further, prior decisions have held that a respondent’s offer to sell the domain

name to a complainant is evidence of bad faith. See, e.g., Harrods

Limited v. Chris Brick, WIPO Case No.

D2003-0876 (January 2, 2004). Paragraph 4(b)(i) of the Policy

states as one example of bad faith the registration of a 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 … in

excess of [respondent’s] documented out-of pocket costs directly related to

the domain name." As the Harrods decision stated, "[a] generally

applied test is therefore whether a Respondent has attempted to sell the domain

name for a sum in excess of the Respondent’s out of pocket expenses in registering

the domain name." See id. In this case, Respondent offered to sell

the Domain Name to Complainant for $15,000, a sum clearly in excess of Respondent’s

out-of-pocket expenses in registering the Domain Name.

Respondent’s attempt to transfer the Domain Name to another entity during the

pendency of these administrative proceedings is further evidence of bad faith.

The fact that the entity is known as Assets and Aging, Inc. is more than mere

coincidence. Respondent’s breach of the Policy as a result of his attempted

transfer of the Domain Name during the pendency of this proceeding is further

evidence of bad faith.

The above facts indicate bad faith under Section 4(b)(ii), (iii), and (iv)

of the Policy, in the absence of any contrary indication from Respondent. See,

e.g., Edmunds.com, Inc. v. Ult. Search Inc., WIPO

Case No. D2001-1319 (February 1, 2002).

Thus, the Administrative Panel finds that Respondent had notice of Complainant’s

trademark and business name well before he registered the Domain Name,

posted a website at the Domain Name using Complainant’s mark directing the public

to his own website offering similar and competing services to those which are

offered by Complainant, offered to sell the Domain Name to Complainant, and

attempted to evade a potential loss under these procedures by purportedly transferring

ownership of the Domain Name during this proceeding to an entity using Complainant’s

mark in its name, which together provide evidence of bad faith registration

and use of the Domain Name.

Therefore, the Administrative Panel concludes that Respondent registered and

used the Domain Name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 5 of the Rules, the Administrative Panel orders that the Domain Name registered

by Respondent James Walker be transferred to Complainant Robert A. Scrivano.

(i) The Domain Name is identical to a trademark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect to the Domain

Name; and

(iii) the Domain Name has been registered and is being used in bad faith by

Respondent.

Carol Anne Been

Sole Panelist

Dated: March 5, 2004