Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration
Claim Number: FA1310001522801
Complainant is Dermtek Pharmaceuticals Ltd. (“Complainant”), represented by Keri Johnston of Johnston Law, Canada. Respondent is Sang Im / Private Registration (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <reversa.com>, registered with BRANDON GRAY INTERNET SERVICES, INC. DBA NAMEJUICE.COM.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2013; the National Arbitration Forum received payment on October 3, 2013.
On October 15, 2013, BRANDON GRAY INTERNET SERVICES, INC. DBA NAMEJUICE.COM confirmed by e-mail to the National Arbitration Forum that the <reversa.com> domain name is registered with BRANDON GRAY INTERNET SERVICES, INC. DBA NAMEJUICE.COM and that Respondent is the current registrant of the name. BRANDON GRAY INTERNET SERVICES, INC. DBA NAMEJUICE.COM has verified that Respondent is bound by the BRANDON GRAY INTERNET SERVICES, INC. DBA NAMEJUICE.COM 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 October 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2013 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@reversa.com. Also on October 21, 2013, 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 November 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
1. Policy ¶ 4(a)(i)
a. Complainant has continuously used the REVERSA mark in connection with skin lotion products in Canada since 1995 and in the United States since 1996.
b. Complainant has registered its REVERSA mark with both the Canadian Intellectual Property Office (“CIPO”) (TMA 443,694 registered June 9, 1995) and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,021,624 registered December 10, 1996).
c. Complainant owns and operates the <reversa.ca> domain name.
d. Respondent’s <reversa.com> domain name is identical to Complainant’s REVERSA mark.
2. Policy ¶ 4(a)(ii)
a. Respondent has never been commonly known by the <reversa.com> domain name.
b. Complainant has not in any manner authorized Respondent to use its marks.
c. Before any notice of this dispute, Respondent did not use the disputed domain name in connection with a bona fide offering of goods or services. See Complainant’s Annex 3, which purports to show <reversa.com> resolving to an error message reading “Error 400 – Bad Request” on each of several dates.
3. Policy ¶ 4(a)(iii)
a. Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
b. Respondent’s web site at <reversa.com> presently contains no content related to the domain name, instead generating the error message “400 Bad Request,” which identifies that the request cannot be fulfilled due to bad syntax. See Complainant’s Annex 6.
4. Complainant suggests that Respondent registered the <reversa.com> domain name on February 16, 2000.
5. The WHOIS information states that the <reversa.com> domain name was registered on July 29, 2007.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Dermtek Pharmaceuticals Ltd. of Dorval, Quebec, Canada. Complainant owns national and international registrations for the mark REVERSA and related variations which it asserts that is has used continuously since as early as 1995 in connection with the provision of its skin care goods. Complainant also markets its goods via the internet at its website <reversa.ca>.
Respondent is Mr. Sang Im/Private registration of Buffalo, New York, USA. Respondent’s registrar’s address is listed as Markham, Ontario, Canada. WHOIS data reflects a registration date for the disputed domain name of February 16, 2000.
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 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.
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 states that it has continuously used the REVERSA mark in connection with skin lotion products in Canada since 1995 and in the United States since 1996. Complainant presents evidence of its registration of the REVERSA mark with both the CIPO (TMA443694 registered June 9, 1995) and the USPTO (Reg. No. 2,021,624 registered December 10, 1996). Previous panels have agreed that registration with the CIPO and USPTO confers rights in a mark under Policy ¶ 4(a)(i). See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO). The Panel finds that Complainant has rights in the REVERSA mark for the purposes of Policy ¶ 4(a)(i).
Complainant urges that the <reversa.com> domain name is identical to Complainant’s REVERSA mark. The Panel notes that the disputed domain name incorporates Complainant’s mark in its entirety, merely appending the generic top-level domain (“gTLD”) “.com” and that the gTLD is irrelevant for purposes of distinguishing between domain names and protected marks. The Panel finds that Respondent’s <reversa.com> domain name is identical to Complainant’s REVERSA mark pursuant to Policy ¶ 4(a)(i). See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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). The Complainant has met this burden.
Complainant alleges that Respondent is without rights or legitimate interests in the <reversa.com> domain name, as Respondent has never been commonly known by that domain name. Complainant adds that it has not authorized Respondent to use its marks in any manner. The panel in IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) held that the respondent in that case failed to establish rights and legitimate interests in the <emitmortgage.com> domain name because the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it was commonly known by the domain name. The Panel here notes that Respondent has also failed to submit evidence that it is commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the <reversa.com> domain name as contemplated by Policy ¶ 4(c)(ii).
Complainant contends that before any notice of this dispute, Respondent did not use the disputed domain name in connection with a bona fide offering of goods or services. The Panel notes Complainant’s Annex 3, which purports to show <reversa.com> resolving to an error message reading “Error 400 – Bad Request” on each of several dates. According to the panel in Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005), a respondent’s non-use of a domain name that is identical to a complainant’s mark qualifies as neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel here finds that Respondent has failed to make an active use of the <reversa.com> domain name capable of satisfying Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), thus Respondent has neither rights nor legitimate interests in the domain.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet his burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. The Panel notes however that Complainant has failed to provide any evidence that Respondent has actually attempted to sell the <reversa.com> domain name to Complainant or to a third party.
Complainant next argues that Respondent’s inactive use of the website resolving from the disputed domain name demonstrates bad faith. Complainant notes that Respondent registered the disputed domain name in February 2000. Complainant asserts that Respondent’s web site at <reversa.com> contains no content related to the domain name, instead generating the error message “Error 400 - Bad Request,” which identifies that the request cannot be fulfilled due to bad syntax. See Complainant’s Annex 6. The Panel finds that such inactive use represents bad faith registration and use pursuant to 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 Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <reversa.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 19, 2013
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