Corpak Medsystems, Inc. v. Jim Chaky
Claim Number: FA0912001301033
Complainant is Corpak
Medsystems, Inc. (“Complainant”), represented by Kimberly N. Reddick, of K&L Gates LLP, Washington D.C.,
USA. Respondent is Jim Chaky (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <corpak.com>, registered with Namesdirect.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 31, 2009.
On December 31, 2009, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <corpak.com> domain name is registered with Namesdirect and that Respondent is the current registrant of the name. Namesdirect has verified that Respondent is bound by the Namesdirect 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 January 14, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 3, 2010 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@corpak.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <corpak.com> domain name is identical to Complainant’s CORPAK mark.
2. Respondent does not have any rights or legitimate interests in the <corpak.com> domain name.
3. Respondent registered and used the <corpak.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Copack Medsystems, Inc., develops, manufactures, and markets medical devices. Complainant began operation in 1981 and has used the CORPAK mark since that time to identify its products. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its CORPAK mark (e.g., Reg. No. 1,261,613 issued December 20, 1983).
Respondent registered the <corpak.com> domain name on November 11, 1999. Respondent has failed to make an active use of the disputed domain name. Respondent has offered to sell the disputed domain name to Complainant for $7,500.
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 has established rights in the CORPAK mark through its registration of the mark with the ("USPTO"). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <corpak.com> domain name is identical to Complainant’s CORPAK mark. The disputed domain name contains Complainant’s entire mark and merely adds the generic top-level domain (“gTLD”) “.com”, which fails to distinguish it from Complainant’s mark. See 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); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES). Thus, the Panel concludes that Respondent’s <corpak.com> domain name is identical to Complainant’s CORPAK mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied the elements of Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <corpak.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. Nonetheless, the Panel will examine the record against the UDRP requirements.
Complainant asserts that Respondent is not authorized to use the CORPAK mark. The WHOIS information identifies Respondent as “Jim Chaky.” Respondent offers no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <corpak.com> domain name. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Respondent’s <corpak.com> domain name fails to resolve to an active
website. Before Complainant contacted
Respondent, the disputed domain name failed to resolve to any website. Now the disputed domain name resolves to a
website with the phrase “coming soon.” The Panel finds Respondent’s failure to make
an active use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the
disputed domain name pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard
Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds
that the [failure to make an active use] 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 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 right or legitimate interest under
Policy ¶ 4(a)(ii)).
Respondent offered to sell the <corpak.com> domain name to Complainant for $7,500. The Panel finds Respondent’s offer to sell the disputed domain name to Complainant is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel concludes that the elements of Policy ¶ 4(a)(ii) have been satisfied.
Complainant alleges that Respondent offered to sell the <corpak.com> domain name to Complainant for $7,500. This amount likely exceeds Respondent’s
out-of-pocket costs in registration and maintenance of the disputed domain
name. Respondent’s offer to sell the
disputed domain name for more than Respondent’s costs constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under Policy ¶ 4(b)(i)); see
also Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's general offer of the disputed domain name
registration for sale establishes that the domain name was registered in bad
faith under Policy ¶ 4(b)(i).”).
Before Complainant’s initial contact with Respondent, the disputed domain name failed to resolve to any website. After Respondent’s receipt of a cease-and-desist letter, Respondent’s <corpak.com> domain name resolved to a website with the phrase “coming soon.” The Panel finds Respondent’s failure to make an active use of the disputed domain name provides further evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii)); see also 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 Policy).
The Panel finds 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 <corpak.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 23, 2010
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