DECISION

 

FONAR Corporation v. Admin, Domain

Claim Number: FA2404002094549

 

PARTIES

Complainant is FONAR Corporation ("Complainant"), represented by John Collins of FONAR Corporation, New York, USA. Respondent is Admin, Domain c/o Shyam Ramcharitar ("Respondent"), represented by Nicholas Loaknauth of LOAKNAUTH LAW, P.C., New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <standupmri.com>, registered with Network Solutions, Llc.

 

PANEL

The undersigned certifies 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.

 

Flip Petillion as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 24, 2024; Forum received payment on April 24, 2024.

 

On April 26, 2024, Network Solutions, Llc confirmed by e-mail to Forum that the <standupmri.com> domain name is registered with Network Solutions, Llc and that Respondent is the current registrant of the name. Network Solutions, Llc has verified that Respondent is bound by the Network Solutions, 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 April 29, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 2024 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@standupmri.com. Also on April 29, 2024, 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 June 7, 2024.

 

On June 10, 2024, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed Flip Petillion as Panelist.

 

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

The Complainant claims that the <standupmri.com> domain name (hereafter, the "Disputed Domain Name") is identical to its product's name "Stand-Up MRI" and to its STAND-UP trademarks. The Complainant also asserts that it currently operates more than 20 MRI scanning centers bearing the name "Stand-Up MRI" in New York and Florida and has been forced to use alternative domain names to market these services due to Respondent's activities.

 

The Complainant further contends that the Respondent should be considered as having no rights or legitimate interests in respect to the Disputed Domain Name. According to the Complainant:

-       the Disputed Domain Name was initially registered as a cyber-squatting attempt;

-       the Respondent attempted to extort a sum of more than $5,000 for the transfer of the Disputed Domain Name. When Complainant refused to pay the Respondent's demanded price for the Disputed Domain Name, the Respondent attempted to develop its own competing company of MRI center management services. The Respondent incorporated an entity under the name "Diagnostic Imaging Management Company, Inc", that was dissolved by the New York Secretary of State in 2016. The Disputed Domain Name continued to advertise that entity's services until at least June of 2023;

-       the Complainant sent a cease and desist letter in July 2023, requesting that the Respondent cease using the Disputed Domain Name and transfer it to the Complainant. The Respondent has since taken down the website linked to the Disputed Domain Name;

-       the Respondent did not contact the Complainant to transfer the Disputed Domain Name.

 

Finally, the Complainant alleges that the Disputed Domain Name should be considered to have been registered and used in bad faith because, according to the Complainant:

-       at the time of its registration, the Complainant had been marketing the "Stand-Up MRI" product for several years, and was managing MRI centers under the name "Stand-Up MRI of [location]";

-       the Respondent offered the Disputed Domain Name for lease through a law firm;

-       In March 2005, the Respondent created a website intended to divert traffic from the Complainant's product and/or services to a competing entity operated by the Respondent. In June 2023, the Disputed Domain Name was advertising competing diagnostic imaging services under the entity name "Diagnostic Imaging Management Company, Inc";

-       the website linked to the Disputed Domain Name is no longer being used;

-       the Complainant has attempted to contact the Respondent to transfer the Disputed Domain Name but the Respondent has not replied.

 

B. Respondent

The Respondent claims that the Disputed Domain Name is not identical to the Complainant's STAND-UP trademarks because of two differences:

1) the addition of the term "mri" in the Disputed Domain Name, which is not present in the trademark; and

2) the hyphen "-", which separates the words "Stand" and "Up" in the trademark, is not present in the Disputed Domain Name.

 

The Respondent further claims that the Disputed Domain Name is neither confusingly similar to Complainant's STAND-UP trademarks when viewed in the context of the differing businesses of Complainant and Respondent. According to the Respondent, the Complainant manufactures, sells and installs certain medical imaging machines, known as MRI's. Respondent, on the other hand, is in the business of medical facility marketing, staffing, operation and management. The Respondent does not consider itself as a competitor of the Complainant. The Respondent also asserts that the words in the Disputed Domain Name are descriptive and referring to the practice of MRI scanning while standing and do not uniquely identify the Complainant's services.

 

The Respondent contends that it has substantial rights and legitimate interests in respect of the Disputed Domain Name, as according to the Respondent:

-       the Respondent legally acquired and maintained the Disputed Domain Name;

-       the Respondent's use of the Disputed Domain Name was legitimate and bona fide, and aimed at promoting Respondent's and Complainant's business interests. The Complainant hired the Respondent in 2005 to market and promote its MRI machines. The Respondent purchased the Complainant's MRI machine so that it could be placed into a facility in Riverhead, Long Island. The facility was owned by a client of the Respondent, known as Long Island Diagnostic Institute ("LIDI"). The Respondent marketed, staffed, operated and managed this facility. As part of the Respondent's marketing plan, it was agreed to name the facility "Stand Up MRI of Riverhead". As part of its marketing plan, the Respondent utilized the Disputed Domain Name to promote the facility, which was approved by the Complainant.

-       It has been commonly known by the Disputed Domain Name through its association with Diagnostic Imaging Management Corporation ("DIMC"), its facility management service. DIMC has used the Disputed Domain Name since leasing it in 2003 and then purchasing it in 2004, before ever doing business with Complainant. Consequently, it has common law rights in the Disputed Domain Name that take precedence over any rights that the Complainant claims to have in relation to its STAND-UP trademark. The Stand Up MRI of Riverhead facility which the Respondent marketed, promoted, staffed, operated and managed, contains the words "Stand Up MRI" which constitute the Disputed Domain Name.

 

The Respondent considers it cannot be found to have registered or used the Disputed Domain Name in bad faith for the following reasons:

-       the Respondent never offered to sell the Disputed Domain Name;

-       the Respondent legally acquired and registered the Disputed Domain Name and was unaware of Complainant's trademark applications at the time it acquired the Disputed Domain Name;

 

Finally, the Respondent contends that the Complainant brought the present Complaint in bad faith. According to the Respondent, the Complainant:

-       fails to expound on the history and prior business relationship between itself and the Respondent;

-       falsely alleges extortion; and

-       is misusing its STAND-UP trademarks by asserting that it has the trademark to "Stand Up MRI", which it does not.

 

FINDINGS

The Complainant, FONAR Corporation, is an American company operating in the research, development, production, marketing, and service of magnetic resonance imaging (MRI) scanners for the detection and diagnosis of human diseases.

 

The Complainant is the owner of the following trademarks:   

 

-       STAND-UP, USA word mark, registered under No. 2844081 on May 18, 2004, in classes 10 and 44;

-       STAND-UP, USA word mark, registered under No. 3159676 on October 17, 2006, in class 37.

 

The Respondent, Shyam Ramcharitar, claims to be the co-founder of a company that existed from 2003 to 2016 known as "Diagnostic Imaging Management Company, Inc" (hereafter, "DIMC"). According to the Respondent's evidence DIMC provided marketing, staffing, managing and equipment procurement services to diagnostic imaging centers.

 

The Disputed Domain Name was registered on July 25, 2000, and according to the Respondent's evidence, was purchased by DIMC on July 15, 2004.  According to the Complainant's evidence, the Disputed Domain Name appeared to resolve to a website bearing information about the Respondent's now dissolved company "DIMC", and mentioning that the Centers that the Respondent manages, have access to the products of several manufactures including the Complainant's.

 

On July 6, 2023, the Complainant sent a cease-and-desist letter demanding that the Respondent cease using the Disputed Domain Name and further demanding that it be transferred to the Complainant. The Panel observes that the Disputed Domain Name currently resolves to website "under construction".   

 

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 Policy ¶ 4(a)(i) requires Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.  

 

Registration of a mark with the USPTO suffices to establish the rights under the Policy. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018). ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such a mark for the purposes of Policy ¶ 4(a)(i)"). The Complainant provided evidence that it owns the STAND-UP trademark in the form of screenshots from the USPTO website (e.g., Reg. No. 2844081 registered in May 18, 2004 and No. 3159676 registered in October 17, 2006). 

 

The Panel notes that the Disputed Domain Name corresponds to the Complainant's STAND-UP trademark, except for the hyphen and the addition of the term "mri". The Panel is of the view that this omission and this addition do not prevent a finding of confusing similarity with the Complainant's STAND-UP trademark since the STAND-UP trademark is recognizable within the Disputed Domain Name and "mri" is a term descriptive of the Complainant's products. See principles set out in WIPO Jurisprudential Overview 3.0 at ¶1.7 and 1.8; see also Stardust Materials v. Neil Ivey, FA 940188 (Forum Jun. 1, 2021).  

 

Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's mark per Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

The Policy ¶ 4(a)(ii) requires the Complainant to show that the Respondent has no rights or interests in respect of the Disputed Domain Name. Once Complainant establishes a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect of the Disputed Domain Name. See WIPO Jurisprudential Overview 3.0 at ¶2.1 and Google LLC v. Alex Xavier/ Alexander Xavier / Sustineri Foresight Ltd, FA 28296 (Forum  Mar. 15, 2023). 

 

The Respondent claims to be commonly known by the Disputed Domain Name through its association with DIMC and that it has common law rights in the Disputed Domain Name that take precedence over the Complainant's STAND-UP trademark. The Respondent also claims that its use of the Disputed Domain Name was legitimate and bona fide as it aimed (in the past) at promoting the Respondent's and the Complainant's business interests.

 

However, panels assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint. Without prejudice to the complainant's duty to establish that a domain name has been registered and used in bad faith, a respondent claiming a right or legitimate interest in a domain name for example based on a prior agreement or relationship between the Parties or based on past good-faith use (thus demonstrating merely a past right or legitimate interest) would not necessarily have rights or legitimate interests in the domain name, at the time a decision is rendered. See WIPO Jurisprudential Overview 3.0 at ¶2.11.

 

Based on the evidence provided, the Panel observes the following:

 

-       as will be further explained below, the Respondent acquired the Disputed Domain Name shortly after one of the Complainant's STAND-UP trademarks was registered. The Complainant appears to have been marketing the "Stand-Up MRI" product for several years before the alleged lease and/or acquisition of the Disputed Domain Name by the Respondent;

-       the Respondent's former company "DIMC" was dissolved by the New York Secretary of State in 2016.

 

Consequently, the Panel finds that the Respondent does not show any right or legitimate interest in the Disputed Domain Name at the time of filing of the Complaint in these proceedings (2024). The Respondent does not show any common law rights in the Disputed Domain Name that would take precedence over the Complainant's rights in connection with the term "STAND-UP". In the Panel's view, any rights or interests that would have been acquired at some point through the company DIMC are not relevant as this company has been dissolved.

  

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

The Policy requires the Complainant to prove bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017). 

 

The Complainant claims that the Respondent registered the Disputed Domain Name in bad faith as the Respondent attempted to extort a sum of more than $5,000 for the transfer of the Disputed Domain Name. The Panel agrees with the Respondent that the Complainant fails to provide proof of such intention on the part of the Respondent.

 

The Respondent claims it legally acquired and registered the Disputed Domain Name as it was unaware of the Complainant's trademark (applications) at the time it acquired the Disputed Domain Name. However, the Respondent himself provides the proof that it acquired the Disputed Domain Name shortly after one of the Complainant's STAND-UP trademarks was officially registered. The Respondent also claims that it leased the Disputed Domain Name one year before acquiring it, but does not provide any proof of this fact. In any event, according to the Complainant's evidence, the Complainant had been marketing the "Stand-Up MRI" product for several years before the Respondent's alleged lease of the Disputed Domain Name. Considering the fact that the Respondent claims that it was in the business of medical facility marketing and management and proves that a commercial relationship was created as from 2005 (approximately one year after the Respondent's registration of the Disputed Domain Name) between its now dissolved company "DIMC" and the Complainant, the Panel finds it unlikely that the Respondent was unaware of the Complainant and its STAND-UP trademark at the time it registered the Disputed Domain Name. According to the Panel, this indicates that the Respondent has registered the Disputed Domain Name in bad faith.

 

Concerning the bad faith use requirement, the Panel finds that the Complainant failed to prove the Respondent's bad faith use of the Disputed Domain Name. The Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) ("The objectives of the Policy are limited -- designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting -- and not intended to thwart every sort of questionable business practice imaginable. ").  See also Courtney Love v. Brooke Barnett, FA 944826 (Forum May 14, 2007) ("the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name.  The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.").

 

The Panel finds that the Respondent proved the existence of an at least implicit agreement between the Complainant and the Respondent for the Respondent's use of the Complainant's STAND-UP trademark at some point. Based on the Respondent's evidence, the Panel finds that the Complainant was or should have been aware of the Respondent's use of the Disputed Domain Name and at least let the Respondent use it without objection as:

 

-       the Complainant issued a press release confirming that DIMC purchased a "Stand-Up MRI" product of the Complainant in 2005 and that DIMC operated and managed an imaging facility under the name "StandUp MRI of Riverhead", giving access to the Complainant's product. The Complainant's statement that the Respondent "developed his own competing company", referring to DIMC, is therefore incorrect. 

-       the Respondent also proves that the Complainant paid DIMC for marketing services related to the above-mentioned facility in 2005;

-       the Respondent promoted the "StandUp MRI of Riverhead" facility with ads displaying the Disputed Domain Name;

-       despite this relationship between the Parties, at no point in time, except for a cease-and-desist letter sent shortly before the filing of the Complaint, did the Complainant make any suggestions that the Respondent's registration/use was in bad faith.

 

The Panel observes that the Complainant omitted to mention relevant information about its relationship with the Respondent in its Complaint. See ACE Limited v. WebMagic Ventures, LLC, FA0802001143448 (Forum April 8, 2008) (<ace.us>) (holding that "Pre-dispute communications between Complainant and Respondent are highly relevant, and concealment of such communications by Complainant erodes Complainant's credibility").

 

As to the assessment of the subsequent use of the Disputed Domain Name, the Panel finds that the evolution and potential end of the relationship/agreement between the Parties remain unclear. Therefore, it is impossible for the Panel to take an informed decision on the good or bad faith character of the Respondent's use of the Disputed Domain Name. Such assessment would rather fall within the jurisdiction of the appropriate local or national courts.  See, for example, Summit Industries, Inc. v. Jardine Performance Exhaust Inc., D2001-1001 (WIPO Oct. 15, 2001).

 

In the absence of clear evidence of the Respondent's bad faith use of the Disputed Domain Name, the Panel finds that the Policy ¶ 4(a)(iii) has not been satisfied. 

 

Reverse Domain Name Hijacking

The Respondent has requested a finding of Reverse Domain Name Hijacking (RDNH).

 

Paragraph 15(e) of the Rules provides that, 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 (RDNH) 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".

 

RDNH is furthermore defined under the Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name." See WIPO Jurisprudential Overview 3.0 at ¶4.16.

 

Panels have consistently found that the mere lack of success of a complaint is not in itself sufficient for a finding of RDNH.

 

Even though the Complainant did not disclose some relevant facts, the Panel finds that the Respondent did not clarify all relevant circumstances of the case either.

 

Therefore, the Panel is unable to conclude that the Complaint was brought primarily to harass the Respondent, nor that the proceeding was commenced in bad faith (both in general in accordance with paragraph 15(e) of the Rules, and in accordance with RDNH as defined under the Rules).

 

The Panel therefore declines to declare 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 <standupmri.com> domain name REMAIN WITH Respondent.

 

 

 

 

Flip Petillion, Panelist

Dated: June 24, 2024