Vision-Sciences Inc. v. Private Registrations Aktien Gesellschaft
Claim Number: FA0912001297252
Complainant is Vision-Sciences Inc. (“Complainant”), represented by Jeffrey
Sonnabend, of
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <endosheath.com>, registered with Network Solutions, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 4, 2009.
On December 3, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <endosheath.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 December 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 2009 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@endosheath.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
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:
1. Respondent’s <endosheath.com> domain name is identical to Complainant’s ENDOSHEATH mark.
2. Respondent does not have any rights or legitimate interests in the <endosheath.com> domain name.
3. Respondent registered and used the <endosheath.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vision-Sciences
Inc., holds a trademark registration with the United States Patent and
Trademark Office (“USPTO”) for the ENDOSHEATH mark (Reg. No. 1,849,840 issued
August 16, 1994) in connection with medical diagnostic equipment, specifically,
endoscopes for diagnoses of the lungs and internal organs of the digestive
track.
Respondent, Private Registrations Aktien Gesellschaft, is the registrant of the <endosheath.com> domain name. The disputed domain name was originally registered on January 10, 2000. The disputed domain name resolves to a web directory containing click-through links unrelated to Complainant.
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 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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 asserts rights in its ENDOSHEATH mark through
its holding of a trademark registration for the ENDOSHEATH mark with the USPTO (Reg. No. 1,849,840 issued August 16, 1994). The Panel finds that Complainant has
established rights in the ENDOSHEATH mark under Policy ¶ 4(a)(i) through its
trademark registration with the USPTO. See Expedia,
Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the
[complainant’s] mark is registered with the USPTO, [the] complainant has met
the requirements of Policy ¶ 4(a)(i).”); see
also Renaissance
Hotel Holdings, Inc. v. Renaissance
Complainant argues that
Respondent’s <endosheath.com> domain name is identical to Complainant’s ENDOSHEATH mark pursuant to
Policy ¶ 4(a)(i). Respondent’s disputed
domain name contains Complainant’s ENDOSHEATH mark in its entirety and adds the
generic top-level domain (“gTLD”) “.com.”
The Panel finds that the addition of a gTLD does not distinguish a
disputed domain name from a mark. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27,
2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to
Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is
irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Snow Fun, Inc. v.
O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain
name <termquote.com> is identical to the complainant’s TERMQUOTE mark). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <endosheath.com> domain name is identical to
Complainant’s ENDOSHEATH mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS information lists the registrant as “Private Registrations Aktien Gesellschaft.” There is no additional evidence in the record
that would indicate that Respondent is commonly known by the disputed domain
name. Without evidence to the contrary,
the Panel finds that Respondent is not commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name); see also
The disputed domain name resolves to a web directory containing click-through
links unrelated to Complainant. The
Panel finds that Respondent’s use is neither a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb.
Forum June 11, 2006) (finding that the respondent’s use of a domain name to
redirect Internet users to websites unrelated to a complainant’s mark is not a bona
fide use under Policy ¶ 4(c)(i)); see
also Constellation Wines
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent is using the disputed domain name to display links to unrelated websites attempting to intentionally attract Internet users seeking Complainant’s website. The Panel presumes that Respondent profits from the receipt of click-through fees by creating a strong likelihood of confusion with Complainant’s ENDOSHEATH mark. The Panel finds that this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <endosheath.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 20, 2010
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