Handa Medical Group, Inc. v. anthony oyogoa / Oluwa Clothing
Claim Number: FA1401001541385
Complainant is Handa Medical Group, Inc. (“Complainant”), represented by Mason Cole of Cole Sadkin, LLC, Illinois, USA. Respondent is anthony oyogoa / Oluwa Clothing (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <handamedicalgroup.com>, <handamedical.org>, and <handamedicalgroup.org>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2014; the National Arbitration Forum received payment on January 29, 2014.
On January 30, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <handamedicalgroup.com>, <handamedical.org>, and <handamedicalgroup.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 January 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2014 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@handamedicalgroup.com, postmaster@handamedical.org, postmaster@handamedicalgroup.org. Also on January 31, 2014, 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 February 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in the name HANDA MEDICAL GROUP and alleges that the disputed domain names are either identical or confusingly similar to the asserted trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides post secondary educational services to students seeking qualification as Medical Doctor (M.D.), Bachelor of Medical Science (B.S.) or Master of Business Administration (M.B.A.);
2. Complainant has filed a trademark registration with the United States Patent and Trademark Office for HANDA MEDICAL GROUP (Serial No. 86,134,124, filed December 3, 2013, claimed first use in commerce July 13, 2010);
3. The disputed domain names were registered in May 2013;
4. The domain names redirected Internet users to a website, www.medicalrotation.org that features links to companies and organizations in competition with Complainant. Later the disputed domain names redirected users to pornographic websites.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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, 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.
Even though Respondent provided no response to the Complaint and is in default, Complainant must still prove on the balance of probabilities the three elements of paragraph 4(a) of the Policy set out above.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)). It is equally well established that a pending application for registration is not sufficient to prove trademark rights (see Ascentive, LLC v. jiang lixin, FA 1413756 (Nat. Arb. Forum Dec. 7, 2011) finding that trademark application “does not sufficiently establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”).
Nonetheless, it is further established that for the purposes of the Policy, unregistered or so-called “common law” trade mark rights can exist through use and reputation if there is adequate proof of secondary meaning. However, it should be noted that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition asks at paragraph 1.7: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” In answer, the consensus view of UDRP panelists is that:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required …”
Complainant does not expressly lay a claim to common law trademark rights in the name HANDA MEDICAL GROUP. The Complaint makes no attempt to provide evidence of those rights and merely makes the sweeping claim the Complainant is “associated with well-known hospitals and clinics all over North America”. Although that USPTO Serial No. Serial No. 86,134,124 was only filed in December, 2013, Panel notes that it makes a first use in commerce claim from July 13, 2010. No value can attach to that claim before registration since the credibility of the claim is tested by the USPTO as part of the registration process. All that Panel can think is that, if better composed, the Complaint might have included proof of use of the name HANDA MEDICAL GROUP since mid-2010 which might have gone some way to proving unregistered rights.
As the evidence of record stands, there is no possible room for a finding of trademark rights and so Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.
No findings required (see Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
No findings required.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <handamedicalgroup.com>, <handamedical.org>, and <handamedicalgroup.org> domain names REMAIN WITH Respondent.
It is to be noted that this decision is made on a “without prejudice” basis, meaning that this Panel would not consider Complainant estopped from commencing new Administrative Proceedings under this Policy if Complainant felt that it could better prove trademark rights.
Debrett G. Lyons, Panelist
Dated: March 12, 2014
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