Reliant Technologies, Inc. v.
Richard Jones
Claim Number: FA
0712001124524
PARTIES
Complainant is Reliant Technologies, Inc. (“Complainant”)
represented by Nancy J. Mertzel, of Thelen Reid
Brown Raysman & Steiner LLP of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fraxellasertreatment.us>, registered
with Enom,
Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on
On
On January 7, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 28, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for the usTLD Dispute
Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <fraxellasertreatment.us> domain name is confusingly similar to Complainant’s FRAXEL mark.
2.
Respondent does not have any rights or
legitimate interests in the <fraxellasertreatment.us>
domain name.
3.
Respondent registered and used the <fraxellasertreatment.us> domain name
in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Reliant Technologies, Inc., is a
leading manufacturing of lasers for dermatological treatment. Complainant has registered the FRAXEL mark
with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
2,974,491 issued July 19, 2005).
Complainant has used this mark in connection with their business in the
Respondent registered the <fraxellasertreatment.us> domain name
on September 19, 2007. The disputed
domain name is currently parked and displays information about the registrar. Additionally, Respondent has been the respondent
in several UDRP proceedings in which the disputed domain names were transferred
from Respondent to the respective complainants in those proceedings. E.g.,
First Mariner Bank v. Richard Jones, FA 692491 (Nat. Arb. Forum
DISCUSSION
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 the 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 the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) 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) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Dispute Resolution Policy, the Panel will draw
upon UDRP precedent as applicable in rendering its decision.
Identical
and/or Confusingly Similar
Complainant registered the FRAXEL
mark with the USPTO and therefore, has established rights to the mark pursuant
to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Complainant contends that the <fraxellasertreatment.us> domain name
is confusingly similar to the FRAXEL mark.
Respondent’s addition of the terms “laser” and “treatment” to the
registered mark is insufficient to distinguish the disputed domain name from
the registered mark because both terms are descriptive of Complainant’s
business. Also, because all domain names are required to
have a top-level domain, Respondent’s use of the country-code top-level domain
(“ccTLD”) “.us” does not distinguish the disputed domain name from
Complainant’s registered mark.
Therefore, the Panel finds that the <fraxellasertreatment.us>
domain name is confusingly similar to Complainant’s FRAXEL mark pursuant to
Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim,
FA 167964 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Complainant has the initial burden of proof to show that Respondent does not have rights or legitimate interests in the disputed domain name. When Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the <fraxellasertreatment.us> domain name. The Panel finds that Complainant has met the initial burden, and therefore has made a prima facie case under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.”).
Because Respondent failed to answer the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name. See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will examine all evidence in the record to determine if Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent
has never been authorized to use the FRAXEL mark. Complainant
contends that Respondent does not own any trademarks or service marks
reflecting the <fraxellasertreatment.us> domain name.
With no evidence to the contrary, the Panel finds that Respondent has no
trademark or service mark rights in the FRAXEL mark pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum
There is no evidence that Respondent
has ever been commonly known by the disputed domain name. Further, the WHOIS information does not
indicate that Respondent is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not
commonly known by the <fraxellasertreatment.us>
domain name pursuant to Policy ¶ 4(c)(iii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
The Panel also finds that
Respondent is currently not using the disputed domain name, as the <fraxellasertreatment.us> domain name
is parked. There is no evidence that
Respondent is preparing to use the disputed domain name in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iv).
Therefore, the Panel finds the Respondent lacks rights and legitimate
interests. See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that the respondent made preparations to use the domain name or one like
it in connection with a bona fide offering of goods and services before
notice of the domain name dispute, the domain name did not resolve to a
website, and the respondent is not commonly known by the domain name); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's passive holding of the domain name does not
establish rights or legitimate interests pursuant to [UDRP] Policy ¶
4(a)(ii).”).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent’s use of
the <fraxellasertreatment.us> domain name, which is confusingly
similar to Complainant’s FRAXEL mark, is likely to cause confusion to customers
searching for Complainant’s goods and services.
There may be uncertainty regarding Complainant’s affiliation, endorsement,
or sponsorship of Respondent’s website.
The Panel assumes Respondent is commercially benefiting from this
confusion. Based on the findings, the
Panel concludes that Respondent’s registration and use of the <fraxellasertreatment.us> domain name
constitutes bad faith under Policy ¶ 4(b)(iv).
See Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because
the respondent's sole purpose in selecting the domain names was to cause
confusion with the complainant's website and marks, its use of the names was
not in connection with the offering of goods or services or any other fair
use); see also Bank of Am. Corp. v. Out
Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that
“[s]ince the disputed domain names contain entire versions of Complainant’s
marks and are used for something completely unrelated to their descriptive
quality, a consumer searching for Complainant would become confused as to
Complainant’s affiliation with the resulting search engine website” in holding
that the domain names were registered and used in bad faith pursuant to UDRP ¶
4(b)(iv)).
Respondent is not currently making an active use of the website that resolves from the disputed domain name. Failure to make an active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the UDRP); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Additionally, Respondent has been
the respondent in several UDRP proceedings in which the disputed domain names
were transferred from Respondent to the respective complainants in those
proceedings. E.g., First Mariner Bank v. Richard Jones, FA 692491 (Nat. Arb.
Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the usTLD Dispute Resolution Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it is Ordered that the <fraxellasertreatment.us> domain name be TRANSFERRED from Respondent to Complainant.
Dated: February 19, 2008
Click Here to
return to the main Domain Decisions Page.
Click
Here to return to our Home Page