Henry Schein One, LLC, Software of Excellence United Kingdom Limited, Henry Schein One Australia and Henry Schein One New Zealand v. Arjang Raoufinia / Arjang Raoufinia DDS
Claim Number: FA2203001990411
Complainants are Henry Schein One, LLC, Software of Excellence United Kingdom Limited, Henry Schein One Australia and Henry Schein One New Zealand ("Complainant"), represented by Lauren Timmons of Alston & Bird, LLP, Georgia, USA. Respondent is Arjang Raoufinia / Arjang Raoufinia DDS ("Respondent"), District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dentally.com>, registered with the domain name registrar GoDaddy.com, LLC. It is common ground between the parties that Respondent became the registrant of the disputed domain name sometime in June 2021.
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.
Eugene I. Low as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 31, 2022; the Forum received payment on March 31, 2022.
On April 1, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dentally.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 April 4, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2022 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@dentally.com. Also on April 4, 2022, 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.
On April 28, 2022, Complainant filed its Additional Submissions in response to Respondent’s Response.
On April 29, 2022, Respondent filed its Additional Submissions in response to Complainant's Additional Submissions.
On May 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eugene I. Low as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant, Henry Schein One, LLC.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In these proceedings, Complainant comprises four entities. Paragraph 3(a) of the Rules provides that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint." The Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."
The Panel notes that three of the entities, namely, Software of Excellence United Kingdom Limited, Henry Schein One Australia, and Henry Schein One New Zealand, are registrants of the trade mark in the respective jurisdictions on which the Complainant relied on, whereas the remaining entity, Henry Schein One, LLC., is the parent company. The Panel considers there is sufficient nexus between these four entities, and will refer to these four entities collectively as "Complainant" in these proceedings.
PRELIMINARY ISSUE: ADDITINOAL UNSOLICITED SUBMISSIONS
On April 28, 2022, Complainant filed its Additional Submissions in response to Respondent's Response.
On April 29, 2022, Respondent filed its Additional Submissions in response to Complainant's Additional Submissions.
Both Additional Submissions were unsolicited.
The Forum's Supplemental Rule 7 provides that it is within the discretion of the Panel to accept or consider additional unsolicited submissions. Having considered the nature of the parties' additional submissions, and that both parties did file their respective additional submissions and did not seek to disallow the other party's additional submissions, the Panel admits both additional submissions. The Panel considers that no unfairness or delay is caused by admitting the parties' additional submissions.
A. Complainant's submissions
Complainant is a prominent dental software and services company. Complainant has rights in the DENTALLY mark through the registration of the marks:
· EU Reg No 18145107 registered on February 29, 2020
· UK Reg No UK00918145107 registered February 29, 2020
· Australia Reg No 2149368 registered on January 19, 2021
· New Zealand Reg No 1168897 registered on March 8, 2021
Through its predecessor-in-interest NJ Technologies Ltd., Complainant registered the domain name <dentally.co> on January 1, 2013 and began using the domain name to advertise and promote its DENTALLY product in 2014. The Complainant also owns and uses other domain names including <dentally.co.uk>, <dentally.com.au>, and <dentally.co.nz>.
Respondent's disputed domain name is identical and/or confusingly similar to Complainant's mark because it incorporates the DENTALLY mark in its entirety and merely adds the ".com" generic top-level domain ("gTLD").
Respondent has no legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed the Respondent any rights in the DENTALLY mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent registered and uses the disputed domain name in bad faith. In August 2021, in response to an offer to purchase by Complainant's agent, Respondent offered to sell the disputed domain name to Complainant for an exorbitant sum of two bitcoins which, at the time, were worth approximately US$100,000. Respondent registered the disputed domain name in order to divert customers for commercial gain. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the DENTALLY mark.
B. Respondent's submissions
Respondent is a private-practicing dentist in the United States. Respondent purchased the disputed domain name from GoDaddy on June 10, 2021, and established a website to create a dental services subscription plan for new and existing patients lacking dental insurance. The services provided by Respondent using the disputed domain name are in not similar to Complainant’s product.
The Respondent registered and uses the disputed domain name in order to conduct legitimate business. The Respondent was unaware of Complainant’s existence or rights in the DENTALLY mark. Complainant and Respondent do not offer similar services and are not competitors.
Respondent registered and uses the disputed domain name in good faith. Respondent is not affiliated with Complainant and does not advertise affiliation with the Complainant. Any communication between Complainant and Respondent regarding the sale of the disputed domain name was done in good faith.
C. Additional Submissions
Complainant submitted that:
· Given Complainant's fame and reputation in the dental field, Respondent ought to have known Complainant's use of its DENTALLY mark. A search on the Internet would have revealed that the mark DENTALLY is related to Complainant.
· Respondent has not produced evidence to corroborate its claim that the disputed domain name was registered as part of dental services subscription plan and that there was an established patient-base of subscribers currently using Respondent's Dentally product.
Respondent submitted that:
· Respondent does not have an obligation to complete its website within a certain time frame in order to legitimize his interest. When Complainant inquired about the sale of the disputed domain name, Respondent informed Complaint that the disputed domain name is work in progress.
· Complainant does not have a subscription-based dentistry business in the United States or anywhere else in the world. In addition, "Dentally" is not a registered trademark of Complainant in the United States.
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.
This Panel is satisfied that Complainant has established this element.
Complainant asserts rights in the DENTALLY mark based upon its trade mark registrations in the UK, EU, Australia and New Zealand. It is a well-established principle under the Policy that having a corresponding trade mark registration is generally sufficient to establish a complainant's standing under this element – irrespective of the jurisdiction of registration and the date of registration. Accordingly, the Panel finds that Complainant has rights in the DENTALLY mark under this element.
The Panel also finds that the disputed domain name is identical or confusingly similar to Complainant's DENTALLY mark as the disputed domain name contains the DENTALLY mark in its entirety and merely adds the ".com" gTLD. It is a well-established principle under the Policy that the addition of a gTLD is generally insufficient to distinguish a disputed domain name. The content of the website associated with the disputed domain name is also generally disregarded by the Panel when considering confusing similarity under this element.
The Panel finds in favor of Complainant under this element.
The Panel considers that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use Complainant's DENTALLY mark. There is also no evidence to suggest that Respondent has been commonly known by the disputed domain name.
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services. Here, based on the parties' evidence, the Panel notes that Respondent claimed in August 2021 that it was "about to launch our platform" and that it has "invested significant resources" marketing the disputed domain name. However, the parties' evidence suggests that Respondent's platform www.dentally.com has remained apparently a very simple website with no substantive or up-to-date contents or offering of goods/services. According to the parties' evidence, the latest post on Respondent's platform is dated July 2021, some 10 months ago from now. While the Panel accepts Respondent's argument that there is no obligation on Respondent to legitimize its interest or use of the disputed domain name within a certain timeframe, the relative inactivity and simplicity of its website does not sit well with its claim that Respondent has invested significant resources in purchasing and marking the disputed domain name. This inconsistency is also highlighted by the lack of evidence from Respondent to corroborate its claims about the marketing of the disputed domain name and that there is an established patient-base of subscribers using Respondent's Dentally product.
Overall, the Panel considers that Respondent fails to overturn the prima face case that Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds in favor of Complainant under this element.
In coming to this conclusion, the Panel has considered the totality of the arguments and evidence adduced by both parties. In particular, the Panel has considered that when approached by Complainant's agent in August 2021, Respondent expressly said "I know dentally.co is one of your clients and this particular domain name will be a crucial asset which can only increase in value over time". While Respondent claimed that it was not aware of Complainant at that time and that it was his personal research which led to the discovery of Complainant, this claim was rather inconsistent with Respondent's response to Complainant's agent where Respondent unequivocally identified Complainant and the value of the disputed domain name to Complainant. Furthermore, as mentioned in the discussion under the "Rights or Legitimate Interests" element, Respondent has not adduced evidence to corroborate its claims about the marketing and use of the disputed domain name and Respondent's Dentally product/services.
The Panel further considers that there is a likelihood of confusion caused by the disputed domain name due to the confusing similarities between the disputed domain name and Complainant's mark, and that between the underlying goods and services which are both in the dental field. Based on Complainant's submissions, the Panel is satisfied that Complainant has been using its DENTALLY mark for its dental software products on a worldwide basis, in particular in Europe, Australia and New Zealand. While it may or may not be true that Complainant has not used or built up a reputation for its DENTALLY mark in the United States, this cannot dispel the likelihood of confusion in the domain name context because Internet users can come from anywhere in the world; when they search for Complainant's DENTALLY products on the Internet, they may well be confused when they see the disputed domain name and/or the content of Respondent's platform.
Accordingly, the Panel considers that there are circumstances indicating that Respondent has registered the disputed domain name primarily for the purpose of selling it to Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name, and/or that by registering and using the domain name, Respondent is attempting to attract, Internet users to his website by creating a likelihood of confusion.
Accordingly, it is Ordered that the <dentally.com> domain name be TRANSFERRED from Respondent to Complainant, Henry Schein One, LLC.
Eugene I. Low, Panelist
Dated: May 11, 2022
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