national arbitration forum

 

DECISION

 

Patterson Medical Holdings, Inc v. LifeTec Inc.

Claim Number: FA1102001370618

 

PARTIES

Complainant is Patterson Medical Holdings, Inc (“Complainant”), represented by James M. McCarthy of McDonnell Boehnen Hulbert & Berghoff LLP, Illinois, USA.  Respondent is LifeTec Inc (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <pattersonmedical.us> and <sammonspreston.us>, registered with GoDaddy.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, Judge Ralph Yachnin and Debrett Lyons as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 1, 2011; the Forum received a hard copy of the Complaint on February 4, 2011.

 

On February 2, 2011, GoDaddy.com, Inc. confirmed by e-mail to the Forum that the <pattersonmedical.us> and <sammonspreston.us> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  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 the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On February 9, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 1, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On March 11, 2011, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Carolyn Marks Johnson, Judge Ralph Yachnin and Debrett Lyons (chair) as Panelists.

 

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 names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant alleges rights in the trademarks PATTERSON MEDICAL and SAMMONS PRESTON and submits that the disputed domain names <pattersonmedical.us> and <sammonspreston.us> are legally identical, or at least confusingly similar, to the respective trademarks.

 

Complainant states that it and Respondent are competitors in the medical rehabilitation catalog and supply industry.  Complainant acknowledges that, for a period in the past, Respondent was a reseller of Complainant’s goods but alleges that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant refers to a contractual dispute between the parties and alleges that Respondent registered the disputed domain names in bad faith or used the names in bad faith.  In particular, Complainant alleges that both disputed domain names lead the Internet user to Respondent's website on which Respondent offers both its goods and the goods from a large number of Complainant's competitors.

 

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

So far as is relevant to the Discussion and Decision which follows, the Panel makes the following findings:

 

1.      Complainant and Respondent are competitors in the same business sector.

 

2.      Complainant is a wholly-owned subsidiary of Patterson Companies, Inc.

 

3.      Patterson Companies, Inc. owns U.S. Federal trademark registrations for PATTERSON MEDICAL and SAMMONS PRESTON and has authorized Complainant to use those trademarks.

 

4.      Complainant was put on notice of a potential legal claim by Respondent on November 21, 2005.

 

5.      Respondent registered the disputed domain names on November 23, 2005.

 

6.      Complainant sent Respondent a cease and desist letter with respect to use of the disputed domain names in June 2010 to which there has been no reply.

 

7.      Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

 

 

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[i].

 

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interests in respect of the domain name; and

(3) that 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 Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Policy ¶ 4(a)(i) requires a two-fold enquiry.  First, a threshold investigation of whether a complainant has rights in a trademark, followed by an assessment of whether the trademark and the domain name are identical or confusingly similar.

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i). 

 

Rights exist in the trademarks PATTERSON MEDICAL and SAMMONS PRESTON by reason of Federal trademark registration.^[ii]  By virtue of the relationship with its parent company, Patterson Companies, Inc., those rights extend to Complainant for the purposes of this Policy.

 

The remaining enquiry is whether the domain names are identical or confusingly similar to the respective trademarks.  In making that comparison it is broadly accepted that the usTLD, “.us”, can be disregarded as inconsequential.^[iii]  Nor is the omission of the spacing between the two words of the trademarks a distinguishing feature of the domain names.[iv]  Complainant therefore argues that the domain names are legally identical to the trademarks. 

 

Panel notes that the trademark registrations on which Complainant relies are either stylized renditions of the words or include graphic elements.  Whilst that might give rise to debate as to whether the compared terms are, for purposes of the Policy, “identical”, there is no question that the disputed domain names are confusingly similar to the respective trademarks.

 

Accordingly, Panel finds that Complainant has established the first element under the Policy in relation to both disputed domain names.

 

 

Rights or Legitimate Interests

 

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 rights or legitimate interests.^[v] 

 

The WHOIS data does not support any argument that Respondent might be commonly known by the disputed domain names.  There is no evidence that Respondent has any trademark rights.  Complainant has stated there to be no contractual relationship between it and Respondent, and Complainant has not authorized use of the trademarks to Respondent.

 

Policy ¶ 4(c)(i) provides that a use is legitimate if, prior to commencement of the dispute, the Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services.

Complainant referenced the respected UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001).  This Panel follows the majority view put forward in the Oki Data case that a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name even when there is no contractual relationship between the parties.  That said, the use must comply with strict criteria which are set out in that decision.[vi]

 

In this case it is not clear from the Complaint when Respondent stopped re-selling Complainant’s goods; however, it is reasonable to assume that this was before the registration of the disputed domain names in 2005.  There is no evidence of how the website first appeared, but the disputed domain names now resolve to a website promoting and offering for sale products that compete with Complainant’s products, or that are manufactured or sold by Complainant’s competitors.

 

The Panel finds that Respondent’s use of the disputed domain names for such a purpose is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor for that matter, a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).^[vii]

 

The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.  Respondent has made no submissions that it has rights or interests in the domain names and has not discharged the onus which then fell to it, and so Panel finds that Complainant has established the second limb under the Policy.

 

 

Registration and Use in Bad Faith

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).

 

Complainant contends that Respondent’s conduct falls under Policy ¶ 4(b)(iii) in that Respondent allegedly registered the domain names primarily for the purpose of disrupting the business of a competitor.

 

There is some evidence of that claim.  Certainly the domain names were registered only two days after Respondent sent a serious letter to the Complainant.  The Complaint is framed to create the inference that the registrations were motivated by a desire on the part of Respondent to seek retribution for a perceived wrong suffered at the hands of Complainant.  The Complaint quotes Respondent as stating that it will “do whatever [is] necessary”.

 

Complainant relies on the Affidavit of Mathew Levitt, GC at Patterson Companies Inc.  Annexed to that Affidavit is the November 2005 letter in question.  It is businesslike and courteous.  It refers to the alleged breach of covenant by an ex-employee of Respondent then working with Complainant.  Respondent states in the letter that it must “do whatever necessary” to enforce the non-compete agreement it had with that ex-employee.  There is no threat against Complainant per se.

 

 

Of itself, that evidence is in this Panel’s view insufficient to justify a finding that it is more likely than not that Respondent’s primary purpose in registering the disputed domain names was to disrupt Complainant’s business.

 

Complainant also contends that Respondent’s conduct falls under Policy ¶ 4(b)(iv).  It states that:

 

by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.

 

The Panel has already found a likelihood of confusion as between the domain names and the trademarks.  The Respondent is not selling Complainant’s goods and has given no explanation as to why it should need to use the trademarks.  The very purpose of the website is commercial.  In short, Respondent’s conduct falls squarely under Policy          ¶ 4(b)(iv). 

 

The Panel therefore finds that Complainant has also established this third limb of its case.

 

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 <pattersonmedical.us> and <sammonspreston.us> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Debrett Lyons

 

Judge Ralph Yachnin

 

 Hon. Carolyn Marks Johnson

 

 Panelists

 

Dated: 21 March 2011

 

 

 

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