Small Giant, LLC v. Physicians Select Supplements, Inc
Claim Number: FA0708001059469
Complainant is Small Giant, LLC (“Complainant”), represented by Linda
C. Dolan,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <physiciansselect.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 9, 2007.
On August 9, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <physiciansselect.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August
15, 2007, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 4, 2007
by which Respondent could file a
response to the Complaint, was transmitted to Respondent via e-mail, post and
fax, to all entities and persons listed on Respondent's registration as
technical, administrative and billing contacts, and to postmaster@physiciansselect.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant has continuously used the PHYSICIANS SELECT mark in connection with its nutritional supplements and cosmetics business since February 1996.
The PHYSICIANS SELECT mark is registered with the United States Patent and Trademark Office (“USPTO”)(Reg. No. 2,134,049, issued February 3, 1998).
Respondent’s <physiciansselect.com> domain name was registered on April 7, 2002.
The same domain name resolves to commercial website offering herbal supplements in competition with the business of Complainant.
Having been misled by Respondent’s domain name and related web site, many of the customers of Respondent have complained to Complainant for not receiving products they ordered, but never received, from Respondent.
Respondent’s <physiciansselect.com> domain name is substantively identical to Complainant’s PHYSICIANS SELECT mark.
Respondent does not have any rights or legitimate interests in the domain name <physiciansselect.com>.
Respondent registered and uses the <physiciansselect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent 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.
Complainant has sufficiently established its rights in the
PHYSICIANS SELECT trademark through its registration with the USPTO. See
Comparing the disputed domain name with the competing mark,
we note that Respondent’s <physiciansselect.com> domain name merely omits the space between
PHYSICIANS and SELECT in the mark and adds the generic top level domain
(“gTLD”) “.com.” The omission of a space
and inclusion of a gTLD are disregarded in a Policy ¶ 4(a)(i)
analysis. Thus Respondent’s disputed
domain name is substantively identical to Complainant’s mark. See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution
Sept. 25, 2000) (finding that the
<croatiaairlines.com> domain name is identical to the complainant's
CROATIA AIRLINES trademark); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the
top level of the domain name, such as “.net” or “.com”, does not affect the
domain name for purposes of determining whether it is identical or confusingly
similar under Policy ¶ 4(a)(i)).
The Panel therefore concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must initially make out a prima
facie case showing that Respondent has no rights or legitimate interests in
the domain name at issue. See VeriSign Inc.
Respondent has failed to submit a response to the Complaint. We may therefore presume that Respondent has no rights or legitimate interests in the <physiciansselect.com> domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Respondent’s failure to respond means that Respondent has not presented
any circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).
See also Bank of Am. Corp. v.
McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002):
Respondent's failure to respond not only
results in its failure to meet its burden, but also will be viewed as evidence
itself that Respondent lacks rights and legitimate interests in the disputed
domain name.
We will nonetheless consider the available evidence with respect to the factors listed in Policy ¶ 4(c) before making this determination.
In this connection, we first note that Respondent’s WHOIS contact information lists “Physicians Select” as its administrative contact, but Respondent’s domain name was registered after Complainant was issued a USPTO trademark registration. Moreover, Respondent has not replied to the Complaint in this proceeding. Absent affirmative evidence to the contrary, we therefore conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004): “In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.” See also Skyline Displays, Inc. v. Hangzhou Skyi Display Equip. Co., FA 187706 (Nat. Arb. Forum Oct. 14, 2003): “Despite the fact that Respondent lists itself as Hangzhou Skyi Display Equipment Co., Ltd. in its WHOIS contact information, there is no evidence presented to the Panel showing that Respondent is commonly known by the <skyidisplay.com> domain name prior to registering the domain name.”
We also observe
that Respondent does not deny Complainant’s allegation to the effect that
Respondent’s <physiciansselect.com> domain name is substantively identical to Complainant’s
PHYSICIANS SELECT mark and that Respondent offers on the related web address herbal
supplements in competition with the business done by Complainant under its
mark. Likewise, Respondent does not deny
the allegation that its customers have complained to Complainant when they have
not received the products they ordered from the subject web site. This being so, we conclude that Respondent’s use
of the disputed domain name is neither a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that a
respondent’s use of a complainant’s entire mark in domain names makes it
difficult to infer a legitimate use); see also Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that a respondent’s use of the domain
names <thechipmerchant.net>, <chipmerchant.com>, and
<chipmerchant.net> was illegitimate because the domain names were
“virtually identical” to a complainant’s mark, did not constitute a bona
fide offering of goods or services, and implied that that respondent
intended to trade off of that complainant’s “goodwill and reputation” to sell
competing goods); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003):
It is neither a bona fide offerings [sic] of
goods or services, nor an example of a legitimate noncommercial or fair use
under Policy ¶¶ 4(c)(i) & (iii) when the holder of
a domain name, confusingly similar to a registered mark, attempts to profit by
passing itself off as Complainant . . . .
The Panel thus concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent does not deny the allegation of the Complaint that it is operating a commercial website that resolves from the <physiciansselect.com> domain name. Moreover it is evident from the uncontested evidence presented that Respondent benefits from the likelihood of confusion for Internet users seeking Complainant’s website that instead reach Respondent’s website. This is evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when the domain name resolves to commercial websites and that respondent fails to contest the complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where a respondent directed Internet users seeking a complainant’s site to its own website for commercial gain); further see MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent registered a domain name confusingly similar to a complainant’s mark and the domain name was used to host a commercial website that offered services similar to those offered by that complainant under its mark).
In addition, it appears that Respondent registered the <physiciansselect.com>
domain name with at least constructive knowledge
of Complainant’s rights in the PHYSICIANS
SELECT trademark by virtue of
Complainant’s prior registration of that mark with the United States Patent and
Trademark Office. Registration of a
confusingly similar domain name despite such constructive knowledge is, without
more, evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002).
For these reasons, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <physiciansselect.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 21, 2007
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