Adam Daniel Helfman, CFA v. Parallax Enterprises, LLC
Claim Number: FA1512001653500
Complainant is Adam Daniel Helfman (“Complainant”), represented by Neil Fernandes, Arizona, USA. Respondent is Parallax Enterprises, LLC (“Respondent”), represented by Duane Hylton of Legal Services, Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <asclepius.com>, registered with Network Solutions, 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on December 22, 2015; the Forum received payment on December 22, 2015.
On December 22, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <asclepius.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 December 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2016 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@asclepius.com. Also on December 29, 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.
A timely Response was received and determined to be complete on January 18, 2016.
On January 25, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has rights in the ASCLEPIUS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,201,898, registered on September 4, 2012), for Software as a Service (SAAS) featuring software for medical practice management and IT database management in the field of healthcare, insurance and legal costs, in Class 42. Respondent’s <asclepius.com> domain name (the Domain Name) is identical to the ASCLEPIUS mark because it contains the entire mark, verbatim, along with the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <asclepius.com> domain name. In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the Domain Name was formerly used to redirect Internet users to Respondent’s website at <parallaxenterprises.com> and is currently inactive.
Notwithstanding the assertions on Respondent’s website that CHaRM and Parallax Enterprises are registered trademarks of Respondent, according to the USTPO, both of those logo registrations are dead, with an abandonment date of March 26, 2013. Further, the State of Maryland Department of Assessments and Taxation issued a certificate dated December 24, 2015 that the Respondent, Parallax Enterprises LLC, is not in good standing, having failed to file a Form 01 for the year 2015. Printouts from the USTPO and State of Maryland to that effect are attached as Annexes to the Complaint.
Policy ¶ 4(a)(iii)
Respondent uses the Domain Name in bad faith because it is currently inactive. Respondent’s bad faith is further demonstrated through the totality of the circumstances, including Respondent’s own website claiming to use the ASCLEPIUS mark and claiming to hold other trademarks even though the USPTO lists them as abandoned.
B. Respondent
Policy ¶ 4(a)(i)
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii)
Respondent has been using the ASCLEPIUS mark since June 17, 2011 in conjunction with its Consolidated Healthcare and Resource Management (CHaRM) product, which is a technical procedure and information enhancement system designed to provide medical professionals with coordinated information about the medical procedures in which they are engaged. Respondent uses ASCLEPIUS as the name of the Health Insurance Portability and Accountability Act (“HIPPA”)-compliant repository that supports the CHaRM hardware and software. Respondent obtained the Domain Name on January 25, 2012 with the intent to use it in conjunction with its CHaRM product. Respondent has a Patent issued by the USPTO for its CHaRM product, No. US 8,930,214 B2, dated January 6, 2015 (filed June 18, 2012), describing how the ASCLEPIUS element functions in relation to the overall CHaRM program. It is currently seeking approval for CHaRM from the U. S. Food and Drug Administration (FDA), as a medical device for hospitals to purchase and use to provide greater compliance tools and avoid mistakes that put human lives at risk in the operating suite.
Policy ¶ 4(a)(iii)
Respondent in in the process of seeking FDA approval for its CHaRM program. It intends to use the Domain Name in connection with that program when such approval is received. Obtaining FDA approval is a lengthy process, but upon approval the CHaRM product will be commercially viable. Respondent’s use of “Asclepius” in June of 2011 predates Complainant’s registration of the ASCLEPIUS mark in September of 2012.
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.
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant has rights in the ASCLEPIUS mark through its registration with the USPTO (Reg. No. 4,201,898, registered on September 4, 2012). See, Annex 1 to Complaint. Accordingly, Complainant has rights in the ASCLEPIUS mark within the meaning of Policy ¶ 4(a)(i). See, Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Respondent’s <asclepius.com> domain name consists of only Complainant’s ASCLEPIUS mark, along with the gTLD “.com.” It is thus identical to the ASCLEPIUS mark within the meaning of Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show that it does. 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 interest in the 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 denies that it intentionally misdirected Internet traffic to its website at <parallaxenterprises.com>. More importantly, however, it demonstrates that it was using “Asclepius” as the name of an element of its CHaRM program, which is a technical procedure and information enhancement system designed to provide medical professionals with coordinated information about the medical procedures in which they are engaged. By the time this proceeding was filed Respondent had developed its program well beyond the conceptual stage, having received a Patent for it from the USPTO, and having filed an application for FDA approval. The diagrams and the written text of the Patent itself show clearly how the Asclepius element is to function and how it relates to the overall CHaRM program. The first page of the Patent reflects that the application was filed in June of 2012. There is no evidence that Respondent knew of Complainant or its rights in its ASCLEPIUS mark at that time, nor is there any evidence that Respondent was attempting to benefit commercially from the reputation and goodwill of Complainant by its use of the name Asclepius or its registration of the Domain Name. Asclepius is the Greek god of medicine and it is not unusual that, being in a field closely related to, if not directly supporting, the practice of medicine, Respondent would choose that name for use in its CHaRM program and be attracted to the Domain Name for the same reason.
Policy ¶ 4(c)(i) provides that a respondent can demonstrate rights or legitimate interests to a domain name if, before any notice to it of a dispute about the domain name, it used or made demonstrable preparations to use “the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.” While the Domain Name itself appears to be inactive at the present time, Respondent is actively pursuing FDA approval for its CHaRM program, and “Asclepius,” which is certainly a name corresponding to the Domain Name within the meaning of Policy ¶ 4(c)(i), is an integral part of that program. It appears that Respondent has demonstrated precisely the circumstances contemplated by Policy ¶ 4(c)(i) as regards its use of “Asclepius.” Respondent did not address the evidence submitted by Complainant to the effect that it had abandoned its USPTO logo registrations for CHaRM and Parallax Enterprises LLC, or its lack of good standing as a limited liability company in the State of Maryland, but its Response to the Complaint clearly indicates that it has not abandoned its plans or intent to bring CHaRM to full development as a commercially viable product upon receipt of FDA approval. Neither party offered any evidence as to when or if Complainant contacted Respondent about the Domain Name prior to filing this proceeding but the Panel can and does infer that had Complainant initiated the dispute prior to June 2012 when Respondent filed its Patent application, he would have said so, and indeed would have commenced these proceedings some time ago. As stated above, it appears that Respondent has fit itself within the circumstances described in Policy ¶ 4(c)(i), and has thus established its rights and legitimate interest to the Domain Name.
Registration and Use in Bad Faith
Considering the findings of the Panel with respect to Rights and Legitimate Interests, the Panel need not and does not address the issue of bad faith registration and use of the Domain Name.
The Complainant having failed to establish all three elements required under the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <asclepius.com> domain name REMAIN WITH Respondent.
Charles A. Kuechenmeister, Panelist
Dated: February 3, 2016
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