Bedfont Scientific Ltd v. Innovative Medical Marketing of Virginia
Claim Number: FA1211001470743
Complainant is Bedfont Scientific Ltd (“Complainant”), represented by Robert Lowe, United Kingdom. Respondent is Innovative Medical Marketing of Virginia (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bedfontusa.com>, registered with GoDaddy LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2012; the National Arbitration Forum received payment on November 19, 2012.
On November 14, 2012, GoDaddy LLC confirmed by e-mail to the National Arbitration Forum that the <bedfontusa.com> domain name is registered with GoDaddy LLC and that Respondent is the current registrant of the name. GoDaddy LLC has verified that Respondent is bound by the GoDaddy LLC 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 November 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 2012 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@bedfontusa.com. Also on November 20, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
A. Complainant
This Complaint is based on the following factual and legal grounds as specified under UDRP Rule 3(b)(ix) and UDRP Para 4(a).
[a.] The bedfontusa.com domain name is confusingly similar to Complainant’s trademark “Bedfont” within the meaning of UDRP Rule 3(b)(ix) for the following reasons:
i)
Complainant’s
trademark “Bedfont” has been used by Complainant to establish and use
bedfont.com as the Complainant’s official domain name and consumer accessible
website. This is well known as Complainant’s website within the industry.
ii)
Bedfontusa.com
incorporates the trademark name “Bedfont”.
iii)
“Bedfont”
is not a word used in usual vocabulary outside of a small area of the medical
manufacturing and/or devices industry. It is not at present in any English
language dictionary. “Bedfont” is therefore a unique word and provides that its
use in “bedfontusa.com” is confusingly similar to the trademark.
iv) Respondent uses the bedfontusa.com domain and associated @bedfontusa.com email addresses in order to redirect internet users and potential consumers to the website of their own website which is an unlicensed distributor of Complainant’s products. The use of “Bedfont” is therefore clearly being abused for the purpose of confusing potential consumers and directing them away from licensed and approved distributors.
v) The only additional text to the “Bedfont” trademarked text is “USA” which confusingly suggests that the domain represents Complainant’s interests in the United States of America. The Respondent in no way represents Complainant’s interests in the United States of America.
vi) Complainant operates in the United States of America through licensed distributors, Respondent is not presently a licensed distributor and does not represent or direct to a licensed distributor.
[b.] Respondent should be considered as having no right or legitimate interest in respect of the bedfontusa.com domain name within the meaning of UDRP rule 3(b)(ix)(2) for the following reasons:
i)
While
Complainant acknowledges that Respondent was permitted, by agreement, from 1
February 1995, to distribute Complainant’s products as “Bedfont Scientific
(USA)” through a limited Trade Name License such agreement was terminated
through mutual agreement on 18 January 2010 with permission to use the
trademark name expiring after a grace period ending 12 May 2010.
ii)
The
Trade Name License Agreement did not grant permission to Respondent to shorten
or abbreviate the trading name “Bedfont Scientific USA” as the Respondent has
chosen to do when registering “BedfontUSA.com”
iii)
The
Trade Name License Agreement did not permit for the Respondent’s registration
or management of any website or email domains using the abbreviation
“Bedfontusa”.
iv)
Bedfontusa.com
is being maintained and used by Respondent in order to deceive consumers into
believing that Respondent remains a licensed distributor of Complainant’s
products.
v)
Respondent
is using email addresses associated with the bedfontusa.com domain name to
divert customers to an alternate website, also held by Respondent which is
selling Complainant’s products without license.
vi)
Redirection
by Respondent to Respondent’s own unlicensed distributor website is severely
detrimental to Complainant’s reputation, revenue and the reputation and
revenues of Complainant’s licensed distributors with particular emphasis on
distributors within the United States of America.
vii)
Respondent,
having mutually agreed with Complainant to cease use of the bedfontusa.com
domain name from 12 May 2010 is knowingly continuing infringe on the
trademarked name and knowingly continuing to deceive consumers.
viii)
Respondent
has refused to acknowledge to the Complainant that Respondent is the owner of
the bedfontusa.com domain name. In fact, Respondent frequently denies
association with the domain
ix) Respondent has sought to avoid legal challenge from Complainant by employing the services of Domains by Proxy LLC, a company providing services to protect the identity of the registered owners through the “WhoIS” publically accessible index.
x) Respondent’s Managing Director has claimed to have transferred/disposed ownership of the bedfontusa.com domain name and to be unaware of the current owner despite having transferred ownership to his own company. Complainant believes this to be a blatant attempt to avoid legal action in regard to Respondent’s actions to such an extent that Respondent is clearly knowingly infringing the trademark through continued use of the bedfontusa.com domain.
xi) Respondent knowingly attempted to deceive Complainant through use of the services provided by Domains by Proxy LLC which required Complainant to request information from the third party, delaying proceedings.
xii) Continued use of the bedfontusa.com domain breaches the terms of the Mutual Agreement to terminate the Trade Name License and has continued past the expiry of the Trade Name License agreement
[c.] Respondent has used the bedfontusa.com domain name in bad faith within the meaning of UDRP Rule 3(b)(ix)(3) for the following reasons:
i)
The
bedfontusa.com domain name expired on 22 September 2012. Before this time
Respondent sought to renew ownership in knowing breach of the “Bedfont”
trademark having signed a mutual agreement to cease use of the trademark before
this time.
ii) Respondent sought to use the services of Domains by Proxy LLC, a company providing services to protect the identities of the registered website owners through the “WhoIs” public index in order to continue to infringe the trademark and avoid legal action from the Complainant despite knowing a dispute has been in place since May 2010 having been notified by the Complainant.
iii) Respondent has and continues to intentionally attempt to attract internet users for commercial gain by continuing to use the confusingly similar domain and email addresses as the Trademark in order to forward such internet users to its own, unlicensed website.
iv) Respondent has refused to negotiate the continued use of Bedfontusa.com by refusing to acknowledge ownership.
v) Respondent did not reply in any form to a final cease and desist letter from the Complainant which has given rise to this proceeding.
vi) Respondent is not a licensed distributor of Bedfont products and the continued sale of products from the Respondent. The Respondent is therefore not receiving training or new devices from Complainant and as a result is causing deterioration of the Complainant’s good name within the industry.
vii) Respondent is purposefully driving down the prices of Complainant’s products causing severe market consequences to the detriment of market efficiency and the viability of commercial success to Complainant’s distributors globally, with particular emphasis on the United States of America.
a. Complainant’s United States distributor would typically sell the products involved for over USD 7000, Respondent’s bid gave a 49% discount, receiving an unmanageably low profit which risks setting a precedent in the market, endangering the life of the Complainant and the Complainant’s distributors.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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."
Paragraph 4(a) of the Policy requires Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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.”).
Complainant has presented the Panel with its United States Patent & Trademark Office (“USPTO”) trademark registration for the BEDFONT mark (Reg. No. 2,028,439 registered January 7, 1997). This registration is sufficient evidence to establish Complainant’s rights in the mark under Policy ¶4(a)(i). See 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).
Complainant contends the <bedfontusa.com> domain name is confusingly similar to its BEDFONT mark within the meaning of Policy ¶4(a)(i), noting Respondent’s domain name is comprised of Complainant’s BEDFONT mark and the geographic term “usa.” The disputed domain name also affixes the generic top-level domain (“gTLD”) “.com,” but a gTLD cannot distinguish a disputed domain name under Policy ¶4(a)(i) because it is a required part of a domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The addition of a geographic identifier, the Panel notes, also cannot distinguish a disputed domain name. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The Panel concludes Respondent’s <bedfontusa.com> domain name is confusingly similar to Complainant’s BEDFONT mark within the meaning of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the <bedfontusa.com> domain name for the purposes of Policy ¶4(c)(ii) based upon the WHOIS information. The WHOIS information for the <bedfontusa.com> domain name indicates the domain name registrant is “Innovative Medical Marketing of Virginia.” It seems clear Respondent is not commonly known by the disputed domain name for the purposes of 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).
Complainant concedes it licensed Respondent to distribute Complainant’s products as “Bedfont Scientific (USA)” from February 1, 1995 through January 18, 2010, but asserts the subsequent grace period permitting Respondent’s continued use of the name expired on May 12, 2010. Complainant claims Respondent continues to distribute Complainant’s products using the <bedfontusa.com> domain name as its storefront. Respondent’s use of the disputed domain name to facilitate the unauthorized distribution of Complainant’s products constitutes neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also UVA Solar GmbH & Co. K.G. v. Kragh, D2001-0373 (WIPO May 7, 2001) (finding that a former distributor of the complainant’s products maintained rights and legitimate interests in respect to a domain name during the duration of its distributorship agreement, but such rights and interests ceased upon termination of the agreement). Respondent relinquished all of its rights to Complainant’s mark in writing some time ago.
It should be noted the domain name was registered using a privacy service. Respondent (as the non-disclosed beneficiary of the registration) cannot acquire any rights to the domain name because Respondent has not publicly disclosed its identity.
The Panel finds Policy ¶4(a)(ii) satisfied.
Apparently, Respondent was allowed under its 1995 distributor’s agreement to register a domain name (the matter was not explicitly addressed in the agreement). Complainant does not claim the initial registration was in bad faith.
This would normally end the inquiry because Complainant cannot prove bad faith registration and use. The UDRP is not an available procedure to resolve domain name disputes with former distributors who RIGHTFULLY registered a domain name, see The Mark Travel Corporation v. ATHS d/b/a Snug Harbor Travel, Claim Number: FA0304000154644 (5/29/2003). Likewise, the UDRP is not an available procedure to resolve domain name disputes with former web designers who RIGHTFULLY registered a domain name.
Respondent registered the domain name using a privacy service (with Respondent being the undisclosed beneficiary of the bare trust). This raises the rebuttable presumption of bad faith registration and use in a commercial context. Respondent has done nothing to rebut this presumption. The Panel finds the requisite bad faith registration and use.
While Respondent did not submit a formal response to the proceeding, Respondent claimed in various emails to the case administrator (and Complainant) that Respondent has no interest in the domain name and does not own the domain name. The Panel is more than willing to make Respondent’s statement true.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <bedfontusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, January 2, 2013
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