1-800-411 - I.P. Holdings, LLC v. Mike Sedillio
Claim Number: FA1405001557664
Complainant is 1-800-411 - I.P. Holdings, LLC (“Complainant”), represented by Matthew S. Nelles of Broad and Cassel law firm, Florida, USA. Respondent is Mike Sedillio (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <1800-pain.info> and <1800-pain-miami.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2014; the National Arbitration Forum received payment on May 6, 2014.
On May 5, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <1800-pain.info> and <1800-pain-miami.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2014 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@1800-pain.info, and postmaster@1800-pain-miami.com. Also on May 7, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Complainant claims rights in the 1-800-411-PAIN mark pursuant to Policy ¶ 4(a)(i). Complainant uses the mark in connection with a medical, chiropractic, and lawyer referral service. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,885,749 registered Dec. 7, 2010). Respondent’s <1800-pain.info> and <1800-pain-miami.com> domain names are confusingly similar to the mark as they incorporate nearly the entirety of Complainant’s mark.
Respondent lacks rights and legitimate interests in the <1800-pain.info> and <1800-pain-miami.com> domain names under Policy ¶ 4(a)(ii). Respondent is not commonly known by the disputed domain names. Respondent is not using the subject domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The resolving website purports to offer the same type of referral services offered by Complainant, and the telephone number listed on the landing page leads to a voice mail box that is full.
Respondent’s use and registration of the disputed domain names demonstrate bad faith under Policy ¶ 4(a)(iii). First, Respondent’s use disrupts Complainant’s own business by promoting competing services. Second, Respondent’s use of the disputed domain names is for commercial gain and to mislead and divert Internet users away from Complainant to its competitors. And lastly, Respondent knew of Complainant’s rights in the mark.
B. Respondent
Respondent did not submit a response. The Panel notes that the <1800-pain.info> domain name was registered November 20, 2013, and the <1800-pain-miami.com> domain name was registered October 22, 2013.
C. Response to Interlocutory Order
In response to an Interlocutory Order, Complainant addressed the existence of the following third party owned trademark registrations: 1-800-PAIN-FREE, Reg. No. 2096757, 1-800-PAIN-LESS, Reg. No. 2384564, and 1800BACKPAIN, Reg. No. 4519387.
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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims to use the 1-800-411-PAIN mark in connection with a medical, chiropractic, and lawyer referral service. The Panel notes that Complainant is the owner of a trademark registration for this mark with the USPTO (Reg. No. 3,885,749, registered Dec. 7, 2010). The Panel agrees that Complainant’s USPTO registration satisfies the requirement of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <1800-pain.info> and <1800-pain-miami.com> domain names are confusingly similar to Complainant’s 1-800-411-PAIN mark as they incorporate nearly the entirety of that mark. With respect to the <1800-pain.info> domain name, the Panel notes that Respondent has deleted the “411” potion as well as two hyphens from Complainant’s mark. Similarly, the Panel notes that the <1800-pain-miami.com> domain name also drops the “411” portion and one hyphen and adds the geographic term “Miami.”
Previous panels have determined there was no confusing similarity in situations where the disputed domain name did not include the trademark in its entirety. See Dollar Fin. Group, Inc. v. Oakridge, FA 94977 (Nat. Arb. Forum July 17, 2000) (finding that the domain names, <tillpaydayloan.com>, <tillpaydayloans.com>, <untilpaydayloan.com>, and <untilpaydayloans.com> are not identical or confusingly similar to the complainant’s CASH ‘TIL PAYDAY and CASH ‘TIL PAYDAY LOANS trademarks and service marks); see also Thomas Cook Holdings Ltd. v. Aydin, D2000-0676 (WIPO Sept. 11, 2000) (finding that the domain name, <hot18to30.com>, is neither identical not confusingly similar to the complainant’s CLUB 18-30 trademark).
Additionally, in Delta T. Corporation v. Yan hui, FA 1449126 (Nat. Arb. Forum Aug. 7, 2012), the panel compared the <bigairfans.com> domain name with the BIG ASS FAN mark and found no confusing similarity. There, the panel noted that the substitution of the word “air” for the work “ass” was “significant since the other two words in the BIG ASS FAN mark appeared to be descriptive and the word “ass” appeared to be the dominant portion of the mark.” Similarly, in this case, the Panel determines that the “1-800” and “Pain” portions of the Complainant’s 1-800-411-PAIN mark appear to be descriptive, and the “411” mark appears to be the dominant portion of the registered mark. Since the domain names do not include the term “411”, they are not identical or confusingly similar to Complainant’s mark.
The record in this case includes statements provided by the parties pursuant to paragraph 12 of the Rules (See Paragraph 8 of the Supplemental Rules to ICANN’S Uniform Domain Name Dispute Resolution Policy “The Complaint, Response and additional written statements and documents provided in Paragraph 12 of the Rules and Paragraph 7 of the Supplemental Rules constitute the complete record to be considered by the Panel”). Said Paragraph 12 of the Rules provides the Panel with the right to request any further statements or documents from either of the Parties which the Panel may request at its sole discretion. Thus, the Opposer’s response to the Interlocutory Order, which requested statements pursuant to Paragraph 12 of the Rules, is also part of the record in this case.
As previously addressed, Complainant owns a registration for the mark 1-800-411-PAIN. The record of this proceeding shows the following trademark registrations owned by companies other than Complainant: 1-800-PAIN-FREE, Reg. No. 2096757; 1-800-PAIN-LESS, Reg. No. 2384564; and 1800BACKPAIN, Reg. No. 4519387. All of these registrations share the elements “1”, “800” and “PAIN” with Complainant’s registration. The only element distinguishing Complainant’s registration from these other registrations is the term “411”. As Respondent’s domain names <1800-pain.info> and <1800-pain-miami.com> do not contain the distinguishing element “411” of Complainant’s trademark registration, the Panel finds, for this reason as well, that these domains are not confusingly similar to Complainant’s mark.
Thus, Complainant has not satisfied Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <1800-pain.info> and <1800-pain-miami.com> domain names REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: July 21, 2014
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