A.M. SURGICAL, INC. v. Aneel Sarfraz / SOFTECH
Claim Number: FA1503001610622
Complainant is A.M. SURGICAL, INC. (“Complainant”), represented by J. Roger Williams, Jr. of Andrews Kurth LLP, District of Columbia, USA. Respondent is Aneel Sarfraz / SOFTECH (“Respondent”), Alkhobar, Saudi Arabia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amsurgical.biz>, registered with OnlineNIC, Inc.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 20, 2015; the Forum received payment on March 20, 2015.
On March 22, 2015, OnlineNIC, Inc. confirmed by e-mail to the Forum that the <amsurgical.biz> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, Inc. 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 March 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 2015 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@amsurgical.biz. Also on March 26, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
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 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 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
(i) Complainant uses the A.M. SURGICAL mark in connection with surgical instruments for use in endoscopic surgical procedures; surgical and medical apparatus and instruments for use in general surgery; medical and surgical apparatus and instruments, namely, orthopedic fixation devices used in orthopedic transplant and/or implant surgery. Complainant has registered the A.M. SURGICAL mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,633,541, registered June 9, 2009), which demonstrates its rights in the mark. The <amsurgical.biz> domain name is confusingly similar to the A.M. SURGICAL mark because the mark incorporates the A.M. SURGICAL mark in its entirety and merely omits punctuation and spacing, while adding the “.biz” generic top-level domain (“gTLD”).
(ii) Respondent does not have any rights or legitimate interests in the <amsurgical.biz> domain name. Respondent is not commonly known by the <amsurgical.biz> domain name. Further, Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor is Respondent making any legitimate noncommercial or fair use. Rather, the <amsurgical.biz> domain name resolves to a site which purports to sell goods in direct competition with Complainant. Respondent has also harmed Complainant’s reputation by offering adult oriented materials for sale on the infringing site.
(iii) Respondent is using the <amsurgical.biz> domain name in bad faith. Respondent has intentionally attracted Internet users to its site for commercial gain by registering and using a domain name which is confusingly similar to Complainant’s A.M. SURGICAL mark and the goodwill associated with the mark. Further, Respondent registered the disputed domain name with actual and/or constructive knowledge of the marks and Complainant’s rights in the mark.
B. Respondent
Respondent did not submit a Response in this proceeding. The Panel notes that the <amsurgical.biz> domain name was registered on September 3, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 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 uses the A.M. SURGICAL mark in connection with surgical instruments for use in endoscopic surgical procedures; surgical and medical apparatus and instruments for use in general surgery; medical and surgical apparatus and instruments, namely, orthopedic fixation devices used in orthopedic transplant and/or implant surgery. Complainant claims to have registered the A.M. SURGICAL mark with the USPTO (e.g., Reg. No. 3,633,541, registered June 9, 2009), and argues that such trademark registrations evince rights pursuant to Policy ¶ 4(a)(i). Past panels have found where a complainant holds a legitimate trademark registration with the USPTO, such a registration is sufficient to demonstrate the complainant’s rights in the mark pursuant to a Policy ¶ 4(a)(i) analysis. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Next, Complainant argues that the <amsurgical.biz> domain name is confusingly similar to the A.M. SURGICAL mark because it incorporates the A.M. SURGICAL mark in its entirety and merely omits punctuation (two periods in “A.M.”) and spacing, while adding the “.biz” gTLD. Panels have seen such alterations to a mark as insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Memoirs, Inc. v. Patel, FA 98244 (Nat. Arb. Forum Aug. 28, 2001) (finding the domain name to be confusingly similar where a period was omitted from the I.MEMOIRS mark and the gTLD “.com” was added); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, this Panel agrees that the <amsurgical.biz> domain name is confusingly similar to the A.M. SURGICAL mark pursuant to Policy ¶ 4(a)(i).
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); 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.”).
Complainant maintains that Respondent does not have any rights or legitimate interests in the <amsurgical.biz> domain name. Complainant asserts this argument by contending that Respondent is not commonly known by the <amsurgical.biz> domain name. The Panel notes that the relevant WHOIS information merely lists “Aneel Sarfraz / SOFTECH” as registrant of record. See Compl., at Attached Ex. 2. The Panel is reminded that Respondent failed to submit any additional evidence to the record for the Panel’s consideration. In light of Respondent’s failure, the Panel agrees that there is insufficient evidence to find Respondent as commonly known by the <amsurgical.biz> domain name under 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).
Further, Complainant argues that Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor is Respondent making any legitimate noncommercial or fair use. Rather, the <amsurgical.biz> domain name resolves to a site which purports to sell goods in direct competition with Complainant. See Compl., at Attached Ex. 4. Complainant further contends that Respondent has also harmed Complainant’s reputation by offering adult oriented materials for sale on the infringing site. Id. at pp. 22-23. Panels have seen where a respondent registered a website confusingly similar to a complainant’s mark, in which respondent is purporting to sell products in direct competition with complainant, such use is neither bona fide nor is it a legitimate noncommercial or fair use, including when respondent is apparently selling adult-oriented materials. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also McClatchy Mgmt. Servs., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that the respondent’s use of the disputed domain names to divert Internet users to a website that features adult-oriented material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use). Thus, this Panel agrees that Respondent’s use of the <amsurgical.biz> domain name is 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).
Complainant argues that Respondent is using the <amsurgical.biz> domain name in connection with a bad faith attraction for commercial gain through utilizing the good faith associated with Complainant’s A.M. SURGICAL mark. The Panel’s attention is directed to Complainant’s Exhibit 4, which includes various screenshots of the disputed <amsurgical.biz> domain name. The Panel agrees that Respondent’s attempts to sell surgical equipment, which can be seen to directly compete with Complainant’s business, creates a likelihood of confusion as to the source, sponsorship, or affiliation associated with the A.M. SURGICAL mark and therefore constitutes bad faith under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Lastly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the A.M. SURGICAL mark. Complainant argues that Respondent's offering of competing products at the resolving website, and Complainant’s position as a well-established player in the surgical equipment market indicate that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel infers that Respondent had actual knowledge of Complainant's mark and rights due to the fame of the Complainant’s mark and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amsurgical.biz> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 29, 2015
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