Neuronetics, Inc. v. Kelly Roman
Claim Number: FA1108001402576
Complainant is Neuronetics, Inc. (“Complainant”), represented by Jacqueline Lesser of Woodcock Washburn, LLP, Pennsylvania, USA. Respondent is Kelly Roman (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <neurostar.org>, registered with Wild West Domains, Inc. (R120-LROR).
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2011; the National Arbitration Forum received payment on August 10, 2011.
On August 11, 2011, Wild West Domains, Inc. (R120-LROR) confirmed by e-mail to the National Arbitration Forum that the <neurostar.org> domain name is registered with Wild West Domains, Inc. (R120-LROR) and that Respondent is the current registrant of the name. Wild West Domains, Inc. (R120-LROR) has verified that Respondent is bound by the Wild West Domains, Inc. (R120-LROR) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@neurostar.org. Also on August 19, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant makes the following assertions:
1. Respondent’s <neurostar.org> domain name is identical to Complainant’s NEUROSTAR mark.
2. Respondent does not have any rights or legitimate interests in the <neurostar.org> domain name.
3. Respondent registered and used the <neurostar.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Neuronetics, Inc., is a medical device company that develops non-invasive therapies for psychiatric and neurological disorders using MRI-strength magnetic field pulses. One of its products, NEUROSTAR, is a transcranial magnetic stimulation system that offers a non-intrusive form of neuromodulation. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its NEUROSTAR mark (Reg. No. 3,187,054 registered December 19, 2006).
Respondent, Kelly Roman, registered the <neurostar.org> domain name on July 12, 2011. Complainant fails to provide evidence of Respondent’s use of the disputed domain name.
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, Neuronetics, Inc., contends that it has rights in its NEUROSTAR mark and provides evidence of its trademark registration with the USPTO (Reg. No. 3,187,054 registered December 19, 2006) to support this contention. In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panels found that a trademark registration with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Complainant has established rights in its NEUROSTAR mark for the purpose of Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <neurostar.org> domain name is identical to Complainant’s NEUROSTAR mark pursuant to Policy ¶ 4(a)(i). The Panel finds that the disputed domain name differs from Complainant’s mark only by the addition of the generic top-level domain (“gTLD”) “.org.” Such an addition is not relevant to a Policy ¶ 4(a)(i) analysis, according to previous panels’ decisions in Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000), and SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008). Consequently, the Panel holds that Respondent’s <neurostar.org> domain name is identical to Complainant’s NEUROSTAR mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <neurostar.org> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds that Complainant has not made a prima facie case. Complainant does not specifically allege how Respondent uses the <neurostar.org> domain name. Complainant vaguely claims that Respondent is using the disputed domain name to compete with Complainant, but does not state what that competing use is and does not provide screen shots of the resolving website. Complainant presents substantial allegations about the previous disputed domain name holder’s use: to provide hyperlinks to Complainant’s competitors and to sell the disputed domain name to Complainant. However, the Panel finds that it is only able to consider evidence of use by the named Respondent in this case and that Complainant’s evidence of the previous holder of the disputed domain name is irrelevant to this dispute. Therefore, the Panel concludes that Complainant has failed to present sufficient evidence of Respondent’s use of the disputed domain name and finds that Complainant has not made a prima facie case under Policy ¶ 4(a)(ii). See O.C. Seacrets, Inc. v. S. TradeWINs, Inc., FA 328042 (Nat. Arb. Forum Oct. 29, 2004) (“Complainant has provided no evidence as to the use of the <jamaicausa.com> domain name and has merely asserted that Respondent has no rights or legitimate interests, which is not sufficient to support a finding that Respondent lacks rights or legitimate interests.”); see also Claessens Prod. Consultants BV v. Claessens Int’l Ltd., FA 238656 (Nat. Arb. Forum Apr. 23, 2004) (finding that Complainant failed to meet its burden pursuant to Policy ¶ 4(a)(ii) where Complainant neglected to state how Respondent used the disputed domain name in the Complaint).
The Panel finds that Policy ¶ 4(a)(ii) has not been satisfied.
As noted above, Complainant has failed to provide evidence of Respondent’s use of the disputed domain name. Thus, the Panel further concludes that Complainant failed to demonstrate that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Because Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <neurostar.org> domain name REMAIN WITH Respondent.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 29, 2011
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