Budi Purnomo Hadisurjo d/b/a
Optik Melawai and Apotik Melawai v. Rudhy Buntaram
Claim Number: FA0809001223813
PARTIES
Complainant is Budi Purnomo Hadisurjo d/b/a Optik
Melawai and Apotik Melawai (“Complainant”), represented by Laura
R. Wanek, of Greer, Burns & Crain, Ltd.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <apotikmelawai.com>, <apotik-melawai.com>,
<opticmelawai.com>, and <optikmelawai.com>,
registered with Register.com, Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Hon. Carolyn Marks Johnson, Hon. R. Glen Ayres and Debrett Lyons (chair) as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 9, 2008; the
National Arbitration Forum received a hard copy of the Complaint on September 11, 2008.
On September 10, 2008, Register.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <apotikmelawai.com>, <apotik-melawai.com>,
<opticmelawai.com>, and <optikmelawai.com> domain
names are registered with Register.com, Inc.
and that Respondent is the current registrant of the names. Register.com,
Inc. has verified that Respondent is bound by the Register.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 September 17, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 7, 2008 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@apotikmelawai.com, postmaster@apotik-melawai.com, postmaster@opticmelawai.com, and postmaster@optikmelawai.com by e-mail.
A timely Response was received and determined to be complete on October 7, 2008.
On October 17, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson, Hon. R. Glen
Ayres and Debrett Lyons as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts trademark rights and alleges that the disputed
domain names are identical / confusingly similar to its trademarks.
Complainant alleges that Respondent has no
rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent
registered and used the disputed domain names in bad faith.
B. Respondent
Respondent does not challenge Complainant’s trademark rights, nor the
claim of identity / confusing similarity to the disputed domain names. Respondent denies it acted in bad faith and
relies on arguments which at best might show it to have a legitimate interest
in the domain names and which are addressed in the Discussion which follows.
FINDINGS
Complainant has two relevant businesses in
Both OPTIK MELAWAI and APOTIK MELAWAI have
been registered as trademarks in
Respondent registered the domain names, <opticmelawai.com> and <optikmelawai.com>,
in September 1999 and the <apotikmelawai.com>
and <apotik-melawai.com>
domain names in March 2000.
The domain names do not resolve to active
websites. The <opticmelawai.com> domain name has no web resolution; the
remaining three disputed domain names resolve to holding pages that state that a
website is either “coming soon” or “under construction.”
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs the 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.”
Paragraph 4(a) of the Policy requires that Complainant must prove each
of the following three elements in relation to each domain name in order to
justify transfer:
(1) the domain name registered by Respondent is
identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is
being used in bad faith.
Complainant has rights in the trademarks
acquired through registration, if not also through use[ii]. Moreover, applying the principles developed
and now broadly accepted under the Policy, the disputed domain names are either
identical, or confusingly similar to, the relevant trademark[iii]. For the purposes of comparison, former
decisions have held that the generic top-level domain (gTLD) can be disregarded
as trivial and have held the elimination or addition of hyphens to be inconsequential. Additionally, obvious phonetically identical
substitutions, such as the replacement of the letter “k” in Complainant’s
trademark by a “c” in the disputed domain, do not avoid a finding of confusing
similarity.
The Panel has no hesitation in finding that
Complainant satisfies the first element of the Policy in respect of all four
disputed domain names.
Under paragraph 4(a)(ii) of the Policy, Complainant
has the burden to establish that Respondent has no rights or legitimate
interests in the domain names.
Nevertheless, it is well settled that Complainant need only make out a prima
facie case, after which the onus shifts to Respondent to demonstrate its rights
or legitimate interests[iv].
Paragraph 4(c) of the Policy states that any of the following circumstances which if found by
the Panel to be proved based on its evaluation of the evidence, demonstrate
rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute,
your use of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering
of goods or services; or
(ii)
you (as an individual, business, or other organization) have been
commonly known by the domain name, even if you have acquired no trademark or
service mark rights; or
(iii) you
are making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue.
The WHOIS
data does not support any argument that Respondent might be commonly known by
the domain name[v]. Complainant has stated there to be no
relationship between the parties. Respondent
has made no comment on those matters and the
Panel is entitled to accept all reasonable allegations in the Complaint as true
unless the evidence is clearly contradictory[vi].
None of the domain names resolve to an active
website. Respondent has held the domain
names since 2000 or earlier and so the Panel finds that Respondent is not using
the domain names and infers that it has made no preparations to use them in
connection with a bona fide offering of goods or services[vii].
Complainant has established its trademark
rights. Respondent submits that those
rights are territorially limited to
The Panel finds that Respondent has no rights
or legitimate interests in the domain names and so Complainant has established
the second limb of the Policy.
Paragraph 4(b) of the Policy sets out
the circumstances which shall be evidence of the registration and use of a
domain name in bad faith. They are:
(i) circumstances indicating that you have
registered or you have acquired the 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 or service mark or to a
competitor of that complainant, for valuable consideration in excess of your
documented out‑of‑pocket costs directly related to the domain name;
or
(ii) you have registered the domain name in
order to prevent the owner of the trademark or service mark from reflecting the
mark in a corresponding domain name, provided that you have engaged in a
pattern of such conduct; or
(iii) you
have registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv) by using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
website or other on‑line location, by creating a likelihood of confusion
with the complainant's mark as to the source, sponsorship, affiliation, or
endorsement of your website or location or of a product or service on your
website or location.
What is noteworthy about paragraphs 4(b)(i)-(iv)
is that they are cases of both registration and use in bad faith. Paragraph 4(b) is not exhaustive and
other instances of bad faith might be in evidence but, in those instances, the
Panel must be able to find both bad faith registration and bad faith use. It is therefore logical to first test the
facts against the Policy itself.
Complainant’s principal allegations are that
Respondent’s conduct falls under paragraphs 4(b)(ii) and (iii).
So far as paragraph 4(b)(ii) is
concerned, Complainant’s uncontradicted evidence is that it has used the
trademarks APOTIK MELAWAI since 1971 and OPTIK MELAWAI since 1981. The disputed domain names <optikmelawai.com> and <opticmelawai.com> were
registered in 1999 and the domain names <apotikmelawai.com>
and <apotik-melawai.com> were
registered in 2000. Paragraph 4(b)(ii) has two aspects – (a)
Respondent must have registered the domain name in order to prevent the owner
of the trademark from reflecting the mark in a corresponding domain name, (b) Respondent
must have engaged in a pattern
of that conduct. Complainant has an
online presence at <melawai.com>. Complainant’s
evidence shows that its businesses are known collectively as The Melawai
Group. Public information available to
the Panel shows that the domain name <melawai.com> was registered in
August 1997, before Respondent registered any of the disputed domain
names. The Panel concludes that although
<melawai.com> might have been registered for Complainant’s flagship
website, in all probability Complainant would have desired to register <apotikmelawai.com> and <optikmelawai.com> had they
remained available for registration.
Likewise, <opticmelawai.com>
and <apotik-melawai.com> could
have presented themselves as acceptable alternatives. The Panel can reasonably infer that
Respondent registered the domain names in order to prevent Complainant from
doing so. Moreover, former decisions
under the Policy have held that a handful of competitive registrations constitute
a pattern of abusive behaviour[viii].
Should there be any doubt surrounding
Respondent’s motives, Complainant’s evidence shows that in 1996 Respondent
registered the domain name <optikseis.com>. Optic Seis is the name of another large
optical retailer in
The Panel accordingly finds bad faith use
under paragraphs 4(b)(ii) and (iii) of the Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <apotikmelawai.com>, <apotik-melawai.com>,
<opticmelawai.com>, and <optikmelawai.com> domain
names be TRANSFERRED from Respondent to Complainant.
Debrett G Lyons
Hon. Carolyn Marks Johnson (Ret.)
Hon. R. Glen Ayres
Panelists
Dated: October 28, 2008
[i] Complainant asserts rights in the APOTIK MELAWAI mark through registration of the mark with the Indonesian Patent and Trademark Office (“IPTO”) (Reg. No. 274,447 originally issued April 29, 1992; renewed as Reg. No. 514,268 issued August 14, 2002). Likewise, Complainant asserts rights to the OPTIK MELAWAI mark through its corresponding IPTO trademark registration (Reg. No. 274,448 originally issued April 29, 1992; renewed as Reg. No. 514,269 issued August 14, 2002). The Panel may find that these trademark registrations adequately confer rights in the APOTIK MELAWAI and OPTIK MELAWAI marks to Complainant pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Group Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Mason Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel also concludes that Complainant’s trademark registration of its mark provides ample basis to conclude that it has rights in the mark.”).
[ii] See State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)). The principle applies to registrations with other national regulatory bodies.
[iii] See 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 the purpose of
determining whether it is identical or confusingly similar); see also Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO July
3, 2002) (finding the <phizer.com> domain name phonetically
equivalent and confusingly similar to the PFIZER mark). See Diesel
v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding
<vindiesel.com> to be identical to complainant’s mark because “simply
eliminat[ing] the space between terms and add[ing] the generic top-level domain
(“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name
from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant
for purposes of the Policy); see also Bond
& Co. Jewelers, Inc. v.
[iv] See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624; see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
[v] See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
[vi] 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).
[vii] See Bloomberg L.P. v. SC Media Servs. &
Info. SRL, FA 296583
(Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating
Complainant’s mark and is not using the <bloomberg.ro> domain name in
connection with an active website. The
Panel finds that the passive holding of a domain name that is identical to
Complainant’s mark is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb.
Forum May 22, 2007) (concluding that the respondent had no rights or legitimate
interests in the <worldgyms.com> domain name because it contained no
substantive content, just the phrase “coming soon” and a picture of someone
working out); see also Hewlett-Packard Co. v. Rayne, FA
101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction”
page hosted at the disputed domain name did not support a claim of rights or
legitimate interests under Policy ¶ 4(a)(ii)).
[viii] See EPA
European Pressphoto Agency B.V. v.
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