Reichert, Inc. v. Patrick Leonard and Pat
Leonard Surgical, Inc.
Claim Number: FA0604000672010
PARTIES
Complainant is Reichert, Inc. (“Complainant”), represented by Thomas E. Popek, of Hodgson Russ LLP, One M&T Plaza, Suite 2000, Buffalo, NY 14203. Respondents are Patrick Leonard and Pat Leonard Surgical, Inc. (“Respondent”), 12616 W. 62nd Terrace, Suite 115B, Shawnee, KS 66216. (Patrick Leonard is the president of Pat Leonard Surgical, Inc.; for purposes of this proceeding the Panel treats the two Respondents as a single entity.)
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tono-pen.com>
and <tonopen.com>, registered
with Brandon Gray Internet Services,
Inc. d/b/a Namejuice, and <tono-pen.net> and <tonopen.net>, registered with Network Solutions LLC.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
David E. Sorkin, Timothy D. O’Leary, and David P. Miranda as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 4, 2006; the National Arbitration Forum received a hard
copy of the Complaint on April 6, 2006.
On April 5, 2006, Brandon Gray Internet Services, Inc. d/b/a Namejuice confirmed
by e-mail to the National Arbitration Forum that the <tono-pen.com> and <tonopen.com> domain names are registered with Brandon
Gray Internet Services, Inc. d/b/a Namejuice and that the Respondent Patrick
Leonard is the current registrant of the names. Brandon Gray Internet Services, Inc. d/b/a Namejuice has verified
that Respondent is bound by the Brandon Gray Internet Services, Inc. d/b/a
Namejuice 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 April 6, 2006, Network Solutions LLC confirmed by e-mail to the
National Arbitration Forum that the <tono-pen.net> and <tonopen.net> domain names are registered with Network
Solutions LLC and that the Respondent Pat Leonard Surgical, Inc. is the current
registrant of the names. Network
Solutions LLC has verified that Respondent is bound by the Network Solutions
LLC 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 April 14, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 4, 2006 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@tono-pen.com, postmaster@tonopen.com,
postmaster@tono-pen.net and postmaster@tonopen.net by e-mail.
A timely Response was received and determined to be complete on May 4,
2006.
A timely Additional Submission was received from Complainant on May 8,
2006 and determined to be complete pursuant to the Forum’s Supplemental Rule 7.
A timely Additional Submission was received from Respondent on May 11,
2006 and determined to be complete pursuant to Supplemental Rule 7.
On May 11, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed David E. Sorkin, Timothy D. O’Leary, and
David P. Miranda as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant owns the trademark TONO-PEN, registration number 1,844,281
on the Principal Register of the U.S. Patent and Trademark Office, for
hand-held electronic tonometers that measure eye pressure. The mark was first used in commerce in 1985,
and it was registered in 1994; Complainant acquired it by assignment from its
previous owner in January 2006.
Complainant alleges that the four disputed domain names registered by
Respondent are identical or almost identical to Complainant’s TONO-PEN
mark. Respondent is using two of the
disputed domain names, <tono-pen.com>
and <tonopen.com>, to redirect Internet users to
Respondent’s primary website.
Respondent offers goods and services related to tonometers on that
website, including non-genuine tip covers and unauthorized repair services. Complainant alleges that such use gives rise
to a strong likelihood of confusion.
Complainant
further alleges that Respondent is not authorized to use its mark, that
Respondent’s registration and use of the disputed domain names occurred after
the first use of the mark by Complainant’s predecessor in interest, that
Respondent is not commonly known by the disputed domain names, and that these
facts together with the manner in which Respondent has used the disputed domain
names demonstrate that Respondent lacks rights or legitimate interests in
respect of the disputed domain names.
Finally, Complainant contends that the disputed domain names were
registered and are being used in bad faith.
Complainant notes that two of the disputed domain names, <tono-pen.net> and <tonopen.net>,
were registered on March 7, 2006, one day after Respondent received a
demand letter from Complainant’s counsel regarding Complainant’s claim to the
other two disputed domain names.
Thereafter, Respondent offered to sell all four disputed domain names,
together with a fifth domain name, <tonometer.com>,
for “a considerable amount more than ‘out-of-pocket expenses.’” Complainant also alleges that Respondent’s
use of two of the disputed domain names to redirect Internet users to its
website is evidence of bad faith, because Respondent intentionally attempts to
attract Internet users to its website by creating a likelihood of confusion
with Complainant’s mark. Complainant
asserts that Respondent’s website “misrepresents an affiliation or association”
with Complainant, citing a disclaimer that states Respondent “is only
associated as a supplier” of Complainant’s products, when in fact Respondent is
not an authorized supplier of genuine TONO-PEN products.
Respondent
contends that he has rights and legitimate interests in the disputed domain
names <tono-pen.com> and <tonopen.com> based upon his bona
fide offering of goods and services for TONO-PEN tonometers. He was the original sales representative for
the TONO-PEN product in the 1980s, and continuously since then has sold
products and services for the product.
He registered the disputed domain names <tono-pen.com> and <tonopen.com>
in 1998 for this purpose.
Respondent further alleges that Complainant’s predecessors in interest
were aware of and failed to act upon his registration of those domain names,
and thereby abandoned any claim thereto, at least for purposes of this
proceeding.
C. Additional Submissions
Complainant’s Additional Submission consists largely of points repeated
from its initial submission.
Complainant takes issue with Respondent’s abandonment claim, arguing
that Respondent’s “unclean hands” should bar it from raising such equitable
doctrines as laches or acquiescence.
Respondent’s Additional Submission similarly is comprised almost
entirely of points reiterated from its initial submission.
The Forum’s Supplemental Rule 7 sets forth a procedure for the
submission of additional statements and documents, but it does not confer upon
parties any right to have such submissions considered by a Panel.
[T]he
controlling provision is Paragraph 12 of ICANN’s Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”), under which discretion to request such
supplementation rests with the Panel.
In general, a Panel should consider additional submissions only in
exceptional circumstances, such as where they reflect newly discovered evidence
not reasonably available to the submitting party at the time of its original
submission or rebut arguments by the opposing party that the submitting party
could not reasonably have anticipated.
Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006)
(citations omitted).
In this case, with the possible exception of the abandonment argument
(which Complainant might not have anticipated, since it is based upon actions
and inaction of Complainant’s predecessors in interest), the Panel is unaware
of any “exceptional circumstances” warranting consideration of additional
submissions.
FINDINGS
The Panel finds that the disputed domain
names are identical or confusingly similar to Complainant’s trademark; that
Respondent lacks rights or legitimate interests in respect of the disputed
domain names; and that the disputed domain names were registered and are being
used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Abandonment, Laches, or
Acquiescence
As a threshold matter, the Panel considers Respondent’s argument that
Complainant’s predecessors in interest were aware of and failed to act upon his
registration of two of the disputed domain names, and thereby abandoned any
claim thereto. It does not appear to
the Panel that Respondent is arguing that Complainant is barred per se by laches, but rather merely that
the Panel should give appropriate consideration to the delay and related circumstances
in assessing whether Respondent has over time acquired rights or legitimate
interests in respect of the disputed domain names, and whether Respondent is
using the domain names in bad faith. In
this case, the Panel is unable to identify any developments occurring during
the relevant time period with any bearing upon either of these issues.
The disputed domain names are identical to
Complainant’s mark, but for the addition of a generic top-level domain suffix
(“.com” or “.net”), and in two instances the omission of a hyphen. Respondent does not dispute this
element. The Panel therefore finds that
the disputed domain names are identical or confusingly similar to Complainant’s
mark.
Complainant’s allegations as to rights or
legitimate interests are sufficient to shift the burden of production to
Respondent, although Complainant ultimately bears the burden of proof on this
and all other elements required by the Policy.
See Haemoscope Corp. v. Digital
Development Group, FA 542015 (Nat. Arb. Forum Sept. 30, 2005). Respondent claims that he has rights or
legitimate interests under Paragraph 4(c)(i) of the Policy based upon his use
of two of the disputed domain names to promote his bona fide offering of
goods and services for TONO-PEN tonometers.
The Panel notes, however, that Respondent does not claim to offer genuine TONO-PEN tonometers or accessories. While the record before the Panel is rather bare, it appears that
Respondent merely offers third-party goods (and, to a lesser extent, services)
that he markets for use with TONO-PEN tonometers. In the view of a majority of the Panel, this activity does not
give rise to rights or legitimate interests in the disputed domain names. See
Nextel Communications Inc. v. Geer,
FA 477183 (Nat. Arb. Forum July 15, 2005).
The Presiding Panelist disagrees with the
above conclusion, taking the position that the Respondent has a tenable
argument that its use of the mark is a nominative fair use, and therefore this
issue turns upon a legitimate trademark dispute that is not susceptible to
adjudication under the Policy. See id. (Sorkin, dissenting).
Nor is Respondent’s claim that he was a
TONO-PEN sales representative in the 1980s relevant here. To prevail on this element, Respondent must
have rights or legitimate interests in
the present. See Glenn Hugh, Inc. v. Sporn Co., FA 515478 (Nat. Arb. Forum Aug.
29, 2005).
The Panel concludes, by a majority, that
Complainant has sustained its burden of proving that Respondent lacks rights or
legitimate interests in respect of the disputed domain names. The Presiding Panelist dissents from this
conclusion for the reasons set forth above.
Finally, Complainant must show that
Respondent registered and is using the disputed domain names in bad faith in
order to prevail. Under Paragraph 4(b)
of the Policy, the following circumstances, if found by the Panel to be
present, serve as evidence of bad faith:
(i)
the domain name
was acquired primarily for the purpose of selling it to the trademark owner or
a competitor thereof at a profit;
(ii)
the domain name
were registered to prevent the trademark owner from reflecting the mark in a
corresponding domain name, if the registrant has engaged in a pattern of such
conduct;
(iii)
the domain name
was registered primarily to disrupt a competitor’s business; or
(iv)
the registrant
has attempted to use the domain name for commercial gain by creating a
likelihood of confusion with the trademark as to the registrant’s website or
products.
It appears to the Panel that the two domain
names registered in 1998, <tono-pen.com> and <tonopen.com>, were registered primarily for the purpose of
marketing third-party accessories and services for use with TONO-PEN tonometers. The other two names, <tono-pen.net> and <tonopen.net>, appear to have
been registered for the same purpose, and possibly also to provide Respondent
with additional leverage in his dispute with Complainant.
In the view of a majority of the Panel,
Respondent’s use of the disputed domain names falls within the fourth
circumstance set forth above. The
domain names corresponding to Complainant’s mark are used to attract users to
Respondent’s website, where Respondent offers third-party accessories that
compete directly with the genuine accessories offered for sale by
Complainant. Furthermore, the
disclaimer on Respondent’s website contributes to this confusion. The statement that Respondent “is only
associated as a supplier” of Complainant’s products could be interpreted to
mean that Respondent offers genuine TONO-PEN tonometers or accessories for
sale, or that Respondent supplies accessories to Complainant for resale under
the TONO-PEN mark. Based upon the evidence
before the Panel, it appears that both of these claims are in fact false, and
that Respondent has not been a “supplier” of Complainant’s products since long
before it registered any of the disputed domain names.
The majority therefore finds that the
disputed domain names were registered and are being used in bad faith. The Presiding Panelist would decline to
reach a finding on this issue, having taken the view that the Complaint should
fail on the preceding element.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tono-pen.com>,
<tonopen.com>, <tono-pen.net> and <tonopen.net>
domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Presiding Panelist
Timothy D. O’Leary, Panelist
David P. Miranda, Panelist
Dated:
May 24, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum