DSN Software, Inc. v. Rob Bay
Claim Number: FA1910001865961
Complainant is DSN Software, Inc. (“Complainant”), represented by Martin L. Laurence, Washington, United States. Respondent is Rob Bay (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <practicesnapshot.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.
Alan L. Limbury as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 9, 2019; the Forum received payment on October 9, 2019.
On October 10, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <practicesnapshot.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 October 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 2019 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@practicesnapshot.com. Also on October 11, 2019, the Forum attempted to serve Respondent with the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, by transmitting to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On November 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
By Order dated November 11, 2019 the Panel granted Respondent a 20-day deadline extension due to lack of proper service. Respondent filed a timely Response within the additional time given.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of incontestable United States trademark “Practice Snapshot”, No. 3,125,584, registered on the USPTO Principal Register on August 8, 2006 in International Class 9 for:
“Computer software for use in health care provider offices for performing accounting, billing, patient scheduling, management of patient records, electronic insurance claims submission, and analysis of the financial status and patient composition of the health care practice, and associated user manuals [sold] together therewith”.
The disputed domain name <practicesnapshot.com> (“the domain name”) is a facsimile of Complainant’s incontestable registered trademark. It resolves to a website of Dental Intelligence Inc., (“Dental Intelligence”) of which Respondent is a principal. That website advertises a product with the name Practice Snapshot in the very same or confusingly similar channel of trade, namely dental office practice management.
Respondent’s use of the domain name has not been in connection with a bona fide offering of goods or services. Respondent knew or should have known of Complainant’s registration and use – a simple search of the USPTO data base would have revealed and confirmed the same (said registration providing constructive notice and exposing Respondent to being labelled a “willful” infringer). Respondent’s reckless behavior makes it obvious he avoided registration and has endeavored to trade on Complainant’s reputation and good will in less than a bona fide manner by surreptitiously engaging distributors to cloak his/their internet advertising with camouflaging prefixes (i.e., Patterson Practice Snapshot and ACT Dental Practice Snapshot). In correspondence, Respondent essentially admits infringing use of the corresponding trademark but begs indulgence alleging Complainant’s abandonment of the same; founding the latter contention solely on Respondent’s previously-mentioned cursory search of the internet for instances of the mark’s use. Moreover, neither Respondent or his affiliates are (i) commonly known by the domain name or (ii) making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has registered the domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name and has engaged in a pattern of such conduct, including by redirecting the domain name to www.dentalintel.com/license, a web page displaying an infringement of Complainant’s registered mark and depicting an infringing-named product in the same channel of trade.
Respondent’s illicit use of the domain name intentionally attempts to attract, for commercial gain, Internet users to the immediately-ensuing, forwarded web site and other on-line locations (including to Respondent’s distributors who follow Dental Intelligence’s marketing recommendations), by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on its web site or location. In the case of distributors, the trademarked product has been alternately and simultaneously presented as the distributor’s (e.g., Patterson Dental’s Practice Snapshot and ACT Practice Snapshot), “complementary,” “free,” “free offering,” “no cost,” and “Dental Intelligence’s.”
The foregoing illegal depictions and uses of <practicesnapshot.com> disrupt the business of Complainant and tarnish and dilute the registered trademark in the eyes of both current and prospective users of Complainant’s Practice Snapshot® module and Practice Management Software package as a whole.
B. Respondent
Although Respondent’s domain name is similar to Complainant’s registered trademark, Respondent has rights and legitimate interests in the domain name, which was registered and is being used in good faith.
Before any notice to Respondent of the dispute, Respondent used the domain name in connection with a bona fide offering of software services for dental providers under the descriptive and easily memorable name “Practice Snapshot”.
Respondent was not aware of Complainant nor its descriptive trademark
registration when it registered the domain name in April 2016.
Complainant has failed to establish all three elements entitling it to relief.
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.
Complainant’s mark consists of the underlined space-separated words “Practice” and “Snapshot”, the letter “p” in “Snapshot” tailing below the line. Exclusive use of the word “Practice” is disclaimed apart from the mark as shown. Complainant first used the mark in commerce on June 29, 1992. The mark was acknowledged by the USPTO as uncontestable on April 5, 2012.
The domain name <practicesnapshot.com> comprises the two unseparated words “practice” and “snapshot”, together with the inconsequential gTLD ‘.com’, which may be disregarded.
The Panel finds the domain name to be confusingly similar to Complainant’s mark.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. Respondent relies on the circumstances specified in sub-paragraph 4(c)(i):
“before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;”
Nevertheless, Complainant has the onus of proof on all issues.
Respondent is co-founder, President and Director of Dental Intelligence, a company offering business intelligence software for dental practices. The domain name < practicesnapshot.com> was registered on April 18, 2016. It resolves to a webpage at “www.dentalintel.com/license” entitled “di (logo) DENTALINTELLIGENCE” and featuring the space-separated words, without underlining: “Practice Snapshot” and “Practice Snapshot Request”.
The Chief Operations Officer for Dental Intelligence since March 2015, Kelli Law, states by way of affidavit that Dental Intelligence was not aware of U.S. Trademark Registration No. 3,125,584 when it instructed its employee Rob Bay to register the domain name <practicesnapshot.com> in April 2016 and that Dental Intelligence first became aware of Complainant and Complainant’s trademark after receiving Complainant’s August 14, 2019 cease and desist letter alleging trademark infringement. The Panel accepts this evidence.
The Panel accepts Respondent’s submission that the expression “practice snapshot” is descriptive of its services, namely providing software that allows dentists to have a graphic summary or snapshot of their dental practice. The Response notes that the expression is used by another dental software service, Weave Practice Analytics:
“If you want a simple way to know more about how your practice is performing, request a free practice snapshot from Weave Practice Analytics”. See https://www.getweave.com/4-dental-kpis-that-every-practice-ownershould-know-about-their-practice/.
Respondent has provided screen shot images showing its use of the expression “Practice Snapshot” in relation to its services prior to the date of Complainant’s August 14, 2019 cease and desist letter.
Complainant has not established this element.
In light of the Panel’s findings under the previous element, the Panel accepts Respondent’s submission that because Respondent was not aware of Complainant or its trademark when it registered the domain name, Complainant cannot prove that registration of the domain name was in bad faith.
Complainant has not established this element.
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 <practicesnapshot.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: December 10, 2019
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