DECISION

 

Apnea Sciences Corporation v. Private Domain / Above Privacy

Claim Number: FA2310002065870

 

PARTIES

Complainant is Apnea Sciences Corporation ("Complainant"), represented by James Fallon of Apnea Sciences Corporation, California, USA. Respondent is Private Domain / Above Privacy ("Respondent"), represented by Howard Neu of Law Office of Howard Neu, P.A., Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sleeprx.com>, registered with GoDaddy.com, 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 Panelist in this proceeding.

 

Sandra J. Franklin and Alan L. Limbury, Panelists and The Honorable Neil Anthony Brown KC as Panelist and Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 11, 2023; Forum received payment on October 11, 2023.

 

On October 11, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <sleeprx.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 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 2023 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@sleeprx.com. Also on October 18, 2023, 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.

 

A timely Response was received and determined to be complete on December 4, 2023.

 

On December 13, 2023, pursuant to Respondent's request to have the dispute decided by a three-member Panel, Forum appointed Sandra J. Franklin and Alan L. Limbury as Panelists and The Honorable Neil Anthony Brown KC as Panelist and Chair.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

     Complainant made the following contentions:

 

1.       The Complainant is a United States company that is a registered medical device company that has been marketing and selling sleep aid products under the trademark SleepRx for over 10 years.

2.       The Complainant has rights in the SleepRx trademark, Registration No.5,953,006, registered with the United States Patent and Trademark Office ("USPTO") on January 7, 2020 and the SleepRx trademark Registration No.6,560,937 with the USPTO on November 16, 2021 (together "the SleepRx trademark").

3.       The Respondent acquired the <sleeprx.com> domain name ("the disputed domain name") in 1999. For the next 19 years, the Respondent cybersquatted on the domain name and did not activate it until approximately June 2020. 

4.       The disputed domain name is identical to the SleepRx trademark.

5.       The Respondent has no rights or legitimate interests in the disputed domain name because:

(a)                      Respondent does not use it to sell any products, but uses it to sell referrals and also to direct consumers to diagnostic sleep companies;

(b)                      Respondent registered the disputed domain name in 1999 and engaged in cybersquatting until 2019;

(c)                      when the Complainant's SleepRx trademark was registered on January 7, 2020, Respondent activated the domain name to provide Google ad pages;

(d)                      the Respondent's use of the domain name tarnishes the respected branding of the Complainant's medical products and has caused the Complainant financial damage;

(e)                      the Respondent has no legal claim to the Complainant's SleepRx trademark.

6.       The Respondent has registered and uses the domain name in bad faith as:

(a)                      up until 2020, the Respondent used the disputed domain name as a cybersquatter, without even activating or using it;

(b)                      after the Complainant registered the SleepRx trademark, the Respondent activated the domain name and used it to promote Google advertisements for various commercial products including mattresses;

(c)                      the Respondent currently uses the domain name to direct traffic to pharmacies and companies that offer diagnostic testing.

7.       Accordingly, the Complainant submits that it has established the elements required to be proved under the Policy and the disputed domain name should therefore be transferred to the Complainant.

 

B. Respondent

     Respondent made the following contentions:

 

1.       Respondent is a professional domain name investor with more than 1000 domain names under ownership and offered for sale. Many of those domain names incorporate keyword names or common phrases such as "sleep rx".

2.       The Respondent has invested in many such domain names for over a decade and they are available for its clients.

3.       The disputed domain name became available for purchase in May 2022 and the Respondent acquired it for its business at a public auction.

4.       The Complainant did not bid at the auction.

5.       On July 10, 2022 the Respondent acquired the disputed domain name <sleep-rx.com> from its previous owner.

6.       The disputed domain name is made up of two generic terms, namely "sleep" and "rx" which had been used in other domain names owned by the Respondent.

7.       Since the Respondent acquired the disputed domain name it has parked the domain name and it has been available for lease or for email purposes, as is the case with the other domain names owned by the Respondent.

8.       The Respondent did not acquire the domain name for the purpose of selling it to the Complainant.

9.       There are no links on the Respondent's parked page at www.bodis.com that infringe on the SleepRx trademark.

10.       The Respondent concedes that the disputed domain name is identical or confusingly similar to the SleepRx trademark.

11.       The Respondent has a right and a legitimate interest in the disputed domain name.

12.       The Respondent has not registered or used the disputed domain name in bad faith.

13.       Accordingly, the Respondent submits that the Complainant has not established all of the elements required to be proved under the Policy and the disputed domain name should therefore remain with the Respondent.

 

FINDINGS

1.       The Complainant is a United States company that is a registered medical device company that has been marketing and selling sleep aid products under the trademark SleepRx for over 10 years.

2.       The Complainant has rights in the SleepRx trademark, Registration No. 5,953,006, registered with the USPTO on January 7, 2020 and the SleepRx trademark Registration No. 6,560,937 with the USPTO on November 16, 2021 (together "the SleepRx trademark").

3.       The Respondent acquired the <sleeprx.com> domain name on July 10, 2022  and shortly thereafter activated it.

4.       The evidence shows that the disputed domain name is identical to the SleepRx trademark.

5.       The evidence shows that the Respondent has a right or legitimate interest in the disputed domain name.

6.       The evidence shows that the Respondent did not register or use the disputed domain name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely in this proceeding. That is so because Policy ¶ 4(a)(i) provides that the Complainant must show that the disputed domain name is "identical or confusingly similar to a trademark or service mark in which the complainant has rights."

 

The issue that therefore arises is whether the Complainant has rights in a trademark or service mark. The evidence shows that the Complainant has established its rights in the SleepRx trademark, Registration No. 5,953,006, registered with the USPTO on January 7, 2020 and the SleepRx trademark Registration No. 6,560,937 with the USPTO (together "the SleepRx trademark").

 

The Complainant has adduced evidence of the foregoing registrations, which the Panel has examined and which it finds to be in order. Registration of a trademark with a recognized authority such as the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i).

 

The Respondent has nowhere argued or sought to establish that the Complainant does not have such a trademark and has conceded it. Since Complainant has registered and established its rights in the SleepRx trademark through its registration of the mark, the Panel finds that the Complainant has rights in the SleepRx mark under Policy ¶ 4(a)(i) and standing to bring this proceeding.

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant's SleepRx trademark. The Complainant argues that the disputed domain name is identical to its SleepRx trademark. The Respondent has conceded that the domain name is identical to the SleepRx mark.

 

The domain name also has added to it the gTLD ".com". The gTLD in which a domain name is registered is not taken into account in determining identicality or confusing similarity, as all domain names require a gTLD and the determination of identicality or confusing similarity is made despite such an addition, as it does not affect a finding on that issue.

 

The Panel finds that the domain name is identical to the trademark.

 

The Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

The Complainant argues that the Respondent has no right or legitimate interest in the domain name because it registered the domain name in 1999 and for the next 20 years or so it left it dormant and cybersquatted on it until the Complainant obtained registration of its SleepRx trademark on January 7, 2020, whereupon the Respondent activated the domain name and caused it to resolve to Google ad pages and to promote competing interests that provide diagnostic sleep services. The Complainant goes as far as submitting that by this conduct the Respondent has "soiled" the Complainant's SleepRx brand image and held the Complainant as a "financial hostage". Thus, the Complainant's argument is that the Respondent has no right or legitimate interest in the domain name because:

(a)       for the first 20 years of its life the domain name was kept inactive by the deliberate act of the Respondent in keeping it inactive;

(b)       the fact that the Respondent sprang into action and started to use the

domain name when the Complainant registered its trademark shows that the Respondent was targeting the Complainant; and

(c)       the fact that the Respondent has now caused the domain name to resolve to internet links that promote competing interests providing diagnostic sleep services, a use of the domain name that is inimical to the interests of the Complainant.

 

The first thing that must be said about that argument is that the sequence of events is not correct. The Respondent did not register or "secure" the domain name in 1999. The evidence shows that the Respondent bought the domain name at an auction on May 15, 2022. Thus, it could not have kept the domain name inactive for 20 years from its registration in 1999 as it did not own it during that period and had no control over it. Accordingly, that period of inactivity for the domain name cannot be the basis for denying the Respondent a right or legitimate interest in the domain name.

 

Secondly, the fact that the Respondent bought the domain name on May 15, 2022 also does not negate a finding that the Respondent has a right or legitimate interest in the domain name. Rather, it shows that the Respondent acquired such a right and interest in the domain name from the time it bought it. That is so because the evidence is that the Respondent runs a legitimate business of buying, developing and, where it occurs, selling domain names. The evidence also shows that the Respondent already owned similar domain names of the same genre as the disputed domain name, such as <naturalsleep.com>, <silentsleep.com>, <rxdrug.com> and <rxconsulting.com>. Thus, the domain name is not in any sense out of the ordinary practice of the Respondent in running its business of buying domain names and the type of domain names that it buys. The evidence is that the domain name in question appealed to the Respondent when it came up for auction because it was a short domain name, included a keyword or common phrase in demand like "sleeprx" and one, moreover, that would be in demand from a wide range of businesses that would see the domain name as versatile and appropriate for use for various goods and services relating to sleep. Thus, unless there were any impropriety involved, of which there is no evidence, it was entirely legitimate for the Respondent to buy the domain name and it had a right to do so.

 

Such a legitimate activity has, on appropriate evidence, routinely been recognized by panels in this field to confer a right or legitimate interest in a domain name. One such case is the decision cited by the Respondent, namely Booker Corporate S.L.U. and The GraffterSL V. Domain Admin/This Domain is for Sale, Huge Domains.com, WIPO Case No. D2021-4277. In that case, as in the present, the respondent ran a legitimate domain name investing business and bought a domain name similar to other domain names it already owned. Thus, the panel delivering the three-person unanimous decision in that case was able to say that registering the domain name, far from showing an intent to target the complainant trademark owner, showed that it was part of a legitimate domain name business. That conclusion is equally appropriate in the present case where the Respondent bought the domain name at a public auction in which it took part but in which the Complainant did not. All of these considerations point to the Respondent engaging in a legitimate activity and exercising its undoubted right to buy domain names as part of its business.

 

Thirdly, Policy ¶ 4(c)(i) confers an express right or legitimate interest where the domain name holder uses the domain name "in connection with a bona fide offering of goods and services…". The evidence is that the Respondent has used the domain name to resolve to Google ads that promote interests that provide diagnostic sleep services. Those services sit reasonably within the generally understood notion of "sleep" and, given the use of the term "rx" signifying prescriptions, within the goods and services encompassed by the domain name itself. So, there is nothing untoward about using the domain name to provide links to those who offer those services. It involves no targeting, passing off or misleading internet users. Thus, the panel finds that the Respondent's use of the domain name is a bona fide use of a domain name legitimately acquired and owned by the Respondent.

 

Fourthly, although there is some overlap with other grounds showing a right or legitimate interest, UDRP panels have often held that a domain name holder may well have such an interest if the domain name consists of dictionary words and phrases, common expressions, or generic and descriptive terms. Rights will not automatically be found and will often be rejected when the domain name is a commonly used word but is then used to encompass the goods or services of a trademark owner, to target it, or where the domain name is used to promote goods and services that are not covered by the normal meaning of the domain name. But in the present case, the domain name is clearly descriptive of sleep and also the notion of medical prescriptions (rx) for conditions related to sleep, such as sleeplessness and snoring. Thus, the Respondent has a basic right to register and use such a domain name that simply uses the English language in its normal meaning. In that regard, the Respondent has used the domain name to promote what the Complainant refers to as "sleep testing services" which the Panel apprehends to mean tests to assess patients' sleep patterns which may then lead to prescriptions to alleviate the condition of sleeplessness or snoring. For instance, one of the links from the Respondent's website promotes oral appliances to alleviate sleeplessness and snoring that would presumably have to be prescribed. The use made of the domain name thus comes within the notion of "sleep rx." Moreover, the domain name does not target the Complainant and the record shows that the Respondent already owns other domain names used in a similar manner. For instance, it owns the domain name <silentsleep.com>, which is in evidence and which has links to the same sleep study services promoted at the website of the disputed domain name in this proceeding. The Respondent also owns <rxdrug.com> which has links to drug prescription services. This shows that, as far as the evidence goes, the Respondent has used descriptive phrases in its domain names for links to goods and services clearly coming within the plain meaning of those descriptive domain names. Thus, the Respondent has a right or legitimate interest in the domain name on this ground as well as on the ground that the domain name is being used legitimately. All in all, the evidence shows that the Respondent's use of the disputed domain name comes within the ambit of the ordinary meaning of the domain name and with no inappropriate uses that might negate that finding.

 

The Panel therefore finds for these reasons that the Respondent has a right and legitimate interest in the disputed domain name.

 

The Complainant has therefore not established the second of the three elements that it must establish under the Policy.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

As the Complainant has not made out the second of the three elements that it must establish, it is not strictly necessary to consider this, the third element. However, for reasons of completeness and because the Respondent has requested a finding of Reverse Domain Name Hijacking, where the Panel should consider all of the circumstances, the following remarks are apposite to show that the Complainant has not established that the Respondent registered and used the domain name in bad faith.

 

First, the Panel has found that the Respondent had the right to buy the domain name as it did at a public auction in which the Complainant did not bid for the domain name and as part of the regular process of conducting its business of buying, developing and selling domain names. In the course of doing so it therefore, on the evidence, acted in good faith, not bad faith. There was no apparent targeting of the Complainant and, again, the Respondent has simply bought a descriptive domain name and used it within its ordinary meaning.

 

Secondly, the Respondent bought the domain name as an investment, as it was the sort of domain name it had acquired in the past, it was a good business strategy to buy it and, if it ever came to be sold to anyone, it could be sold to the highest bidder, which is not a breach of the Policy.

 

Thirdly, the ground under Policy ¶ 4(b)(ii) has not been made out and the evidence would not support such a finding.

 

Likewise, the Respondent can scarcely be said to have wanted to disrupt the business of the Complainant within the meaning of Policy ¶ 4(b)(iii) when it was not doing so but was simply promoting services that came within the wording of the domain name.

 

Nor does the evidence show that the Respondent was engaged in causing confusion within the meaning of Policy ¶ 4(b)(iv) when, on the evidence, it was only promoting the services of its advertisers and leaving it to the Complainant to promote its own services.  

 

Thus, bad faith registration and use have not been made out, either under the general notion of bad faith or under the specific criteria set out in Policy ¶ 4(b).

 

Complainant has thus not made out the third of the three elements that it must establish.

 

REVERSE DOMAIN NAME HIJACKING

Respondent has requested a finding against the Complainant of Reverse Domain Name Hijacking ("RDNH").

 

The power to make such a finding comes from Rule 15(e) of the Rules which provides, in part, as follows:

 

"If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."

 

Rule 1 of the Rules defines RDNH as follows:

 

"Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name."

 

The essence of such a finding is therefore the notion of bad faith and, in considering that issue, the Panel must have regard to all of the circumstances and the history of the proceeding.

 

Having done so, the Panel finds that it is appropriate to make a finding of RDNH in this case.

 

The essence of the Complainant's case is that the Respondent registered its domain name in 1999 and then cybersquatted by allowing it to remain dormant until it, the Complainant, obtained its trademark, whereupon the Respondent enlivened the domain name in bad faith and used it to "soil" the Complainant's respected trademark by promoting sleep testing services to the extent that this is causing the Complainant a loss of more than $1 million a year and amounts to holding the Complainant as a "financial hostage".

 

Apart from the fact that this is an obvious exaggeration, the Complainant should have known that it was making a series of false allegations. It should have known that if the domain name had not been used for nearly 20 years before the trademark was obtained, it would never be able to show that the registration and use of the domain name had been in bad faith. Not only would such conduct not have been in bad faith, but making the allegation of cybersquatting was itself an act of bad faith.

 

It also cannot be that after obtaining a trademark, its owner can go back and rewrite history so as to allege that the domain name holder acted wrongly before the trademark was registered.

 

Moreover, the domain name includes the ordinary use of an easily understood and common English word and a common term, "rx". The Complainant could have studied the website and seen that the sleep studies being promoted easily came within the ambit of the domain name.

 

Proper and reasonable enquiries by the Complainant would also have revealed that there were more than 20 other USPTO registered trademarks for SLEEP RX, showing that many other parties had rights to the same mark as that claimed by the Complainant.

 

Having regard to all the circumstances, the Panel therefore finds that it is appropriate to make the finding that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

DECISION

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 <sleeprx.com> domain name REMAIN WITH Respondent.

 

 

 

 

Sandra J. Franklin

 

 

Alan L. Limbury

Panelists

 

 

The Honorable Neil Anthony Brown KC as Panelist and Chair.

 

Dated: December 24, 2023