Semira Bayati, M.D., Inc. v. ARTHUR BENJAMIN / COMPREHENSIVE GLOBAL SOLUTIONS CORP
Claim Number: FA1612001707508
Complainant is Semira Bayati, M.D., Inc. (“Complainant”), represented by Arthur R. Petrie, II, California, USA. Respondent is ARTHUR BENJAMIN / COMPREHENSIVE GLOBAL SOLUTIONS CORP (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allaboutdrbayati.com>, 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 Forum electronically on December 14, 2016; the Forum received payment on December 14, 2016.
On December 15, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <allaboutdrbayati.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 December 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2017 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@allaboutdrbayati.com. Also on December 19, 2016, 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 January 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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
Complainant asserts trademark rights in DRBAYATI.COM and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name 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 is a surgeon practicing in the United States;
2. the disputed domain name was created on October 11, 2016 and is currently parked with its Registrar.
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.
Paragraph 4(a)(i) of the Policy requires, as a threshold matter, proof of trademark rights. Complainant claims to have trademark rights in DRBAYATI.COM for use in connection with cosmetic and plastic surgery services.
Proof of trademark rights under paragraph 4(a)(i) requires evidence of a registration with a national trademark authority[i], or proof of unregistered or so-called common law trademark rights acquired through use and reputation[ii].
The Complaint states that:
“Complainant has continuously used the trademark/service mark in commerce since at least May 18, 2000. (See annexes 12 and 13). Accordingly, complainant has common-law rights in the trademark/service mark dating to that first use. Further, Complainant has applied to register the trademark/service mark with the United States Patent & Trademark Office. (See Annex 13).”
There is no proof of use of the trademark at all, still less proof of continous use of the trademark since May 2000.
Annex 13 to the Complaint shows details of a pending trademark application before the United States Patent and Trademark Office for the trademark (Serial Number 87205977, filed October 17, 2016). The consensus view of UDRP panelists is that pending applications for trademark protection do not demonstrate rights.[iii] This Panel agrees with that view.
Annex 12 to the Complaint is a copy of WhoIs data for the domain name <drbayati.com>, created on May 18, 2000. That is not a substitute for proof of use of the term as a trademark, nor a substitute for proof of reputation.[iv]
In short, the Complaint fails to establish trademark rights. Accordingly, the Panel finds that Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.
No findings required.[v]
No findings required.[vi]
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 <allaboutdrbayati.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: January 25, 2017
[i] See, for example, 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)).
[ii] See, for example, Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (FORUM July 27, 2015) holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”.
[iii] See, for example, ValueVapor LLC v. Vicki Oxman, FA 1542157 (FORUM Mar. 20, 2014) denying complainant’s rights under Policy ¶ 4(a)(i) as “[t]here is no evidence of a registered trademark and it has long been held that a pending application for registration is not sufficient to prove trademark rights.”
[iv] See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, at paragraph 1.7: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” (http://www.wipo.int/amc/en/domains/search/overview2.0).
[v] See, for example, Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (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; see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i).
[vi] Ibid.
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