National Arbitration Forum

 

DECISION

 

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.

 

B. Respondent

 

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.

 

Identical and/or Confusingly Similar

 

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.

 

Rights or Legitimate Interests

 

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.

 

Registration and Use in Bad Faith

 

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

 

 

 

 

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