Innomed Technologies, Inc. v. DRP
Services
Claim
Number: FA0312000221171
Complainant is Innomed Technologies, Inc., Boca
Raton, FL (“Complainant”) represented by David
L. Sigalow of Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.,
255 S. Orange Avenue, Suite 1401, Orlando, Florida 32801. Respondent is DRP Services, P.O. Box 71117, Jerusalem, Israel 91710
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <nasalaire.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on December 22, 2003; the Forum received a hard copy of the
Complaint on December 29, 2003.
On
December 29, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the Forum that the domain name <nasalaire.com> is
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
January 7, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
January 27, 2004 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@nasalaire.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
February 4, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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."
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 makes the following assertions:
1. Respondent’s <nasalaire.com>
domain name is identical to Complainant’s NASAL-AIRE mark.
2. Respondent does not have any rights or
legitimate interests in the <nasalaire.com> domain name.
3. Respondent registered and used the <nasalaire.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
filed a registration application for its NASAL-AIRE mark with the United States
Patent and Trademark Office (“USPTO”) on January 16, 2001 (Ser. No.
76/194461). The application was granted
registration on October 22, 2002 (Reg. No. 2640687). The NASAL-AIRE trademark is used in connection with medical
devices designed to cure a sleeping disorder, commonly known as ‘sleep
apnea.’ Complainant has used the mark
in this manner since January 1993.
Complainant
employs a variety of means to sell its NASAL-AIRE products, including a website
located at <innomedtechnologies.com>.
Complainant spends approximately $240,000 per year to promote its
NASAL-AIRE products and, as a result, Complainant has achieved a high degree of
customer recognition for its mark.
Respondent
registered the disputed domain name on October 16, 2002. Respondent uses the name to host a web page
that advertises products purportedly designed to treat sleep apnea. This web page consists of a series of
hyperlinks directing Internet users to these various products.
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."
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.
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.
Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the
mark. See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also FDNY Fire Safety Educ. Fund, Inc. v.
Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s
rights in the FDNY mark relate back to the date that its successful trademark
registration was filed with the U.S. Patent and Trademark Office).
The differences
between the disputed domain name, <nasalaire.com>, and
Complainant’s NASAL-AIRE mark are the omission of the hyphen and the addition
of the top-level domain, both of which are irrelevant for purposes of the
Policy. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May
18, 2000) (“the use or absence of punctuation marks, such as hyphens, does not
alter the fact that a name is identical to a mark."); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level
domain is without legal significance).
Therefore,
Complainant has established that the disputed domain name is identical to its
registered mark pursuant to Policy ¶ 4(a)(i).
Having failed to
respond to the Complaint, the Panel may infer that Respondent lacks rights to
and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names); see also Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where Respondent fails to respond).
In conjunction
with the above, there is no evidence in the record that Respondent is commonly
known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish
Country Store, FA 96209
(Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights
in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Furthermore, Respondent uses the disputed domain name, which
incorporates Complainant’s registered mark, to offer advertisements for and
links to products that compete with Complainant’s goods. Such use is not 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). See Computerized Sec.
Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(holding that Respondent’s appropriation of Complainant’s mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21,
2000) (finding that disputed domain names confusingly similar to another’s mark
and that are used to sell competing goods is illegitimate and not a bona fide
offering of goods).
Therefore,
Complainant has established that Respondent lacks rights to and legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The fact that
Respondent registered a domain name that contains a registered mark relating to
the cure of a sleeping disorder and Respondent subsequently provided
advertisements for and links to sites associated with sleeping disorder cures,
naturally suggests the conclusion that Respondent’s motivation for registration
was to siphon potential customers of Complainant to competing websites,
presumably for profit. Such
registration and use is strong evidence of bad faith pursuant to Policy ¶¶
4(b)(iii). See Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business
from Complainant to a competitor’s website in violation of Policy 4(b)(iii)); see
also S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
Likewise, the
rationale stated in the preceding paragraph also indicates that Respondent
intentionally used the disputed domain name to attract Internet users to its
website by creating a likelihood of confusion with Complainant’s mark pursuant
to Policy ¶ 4(b)(iv), evidencing bad faith registration and use. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that Respondent intentionally attempted to attract
Internet users to its website for commercial gain by creating a likelihood of
confusion with Complainant’s mark and offering the same services as Complainant
via his website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum
Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Therefore,
Complainant has established bad faith registration and use pursuant to Policy ¶
4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <nasalaire.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
February 18, 2004
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