Stryker Corporation v. Michael Panico / NorthBay Networks
Claim Number: FA2003001886677
Complainant is Stryker Corporation (“Complainant”), represented by Patrick J. Arnold Jr. of McAndrews, Held & Malloy, Ltd., United States. Respondent is Michael Panico / NorthBay Networks (“Respondent”), represented by George Lee of Seiler Epstein LLP, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usedstryker.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2020; the Forum received payment on March 3, 2020.
On March 4, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <usedstryker.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 March 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2020 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@usedstryker.com. Also, on March 9, 2020, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Stryker Corporation, is a medical technology company. Complainant has rights in the STRYKER mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 730,498, registered Apr. 28, 1962). Respondent’s <usedstryker.com> domain name is identical and/or confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s STRYKER mark, simply adding the generic term “used” and the “.com” generic top-level domain (“gTLD”) to create the disputed domain name.
Respondent does not have rights or legitimate interests in the <usedstryker.com> domain name because Respondent is not licensed or authorized to use Complainant’s STRYKER mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to redirect users to its own website where it sells Complainant’s products and other competing products.
Respondent registered and uses the <usedstryker.com> domain name in bad faith. Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Additionally, Respondent has actual knowledge of Complainant’s rights in the STRYKER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding although he indicated he was represented by counsel.
Complainant is Stryker Corporation (“Complainant”), of Kalamazoo, MI, USA. Complainant is the owner of domestic registrations for the mark STRYKER, which it has continuously used since at least as early as 1962, in connection with its provision of innovative products and services in orthopedics, hospital supplies, medical equipment, surgical tools, and related computer software for the medical and healthcare fields. Complainant is also the owner of the <stryker.com> domain where it advertises its medical device products and provides additional company information.
Respondent is Michael Panico / NorthBay Networks (“Respondent”), of Emeryville, CA, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ. The Panel notes that the disputed domain name was registered on or about September 1, 2011.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the STRYKER mark based upon the registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark under Policy ¶ 4(a)(i). 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 mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the STRYKER mark with the USPTO (e.g., Reg. No. 730,498, registered Apr. 28, 1962). The Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <usedstryker.com> domain name is identical and/or confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s STRYKER mark, simply adding the generic term “used” and the “.com” gTLD to create the disputed domain name. Addition of a generic or descriptive term and a gTLD is insufficient to overcome confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Complainant further argues that the additional term simply describes the nature of the medical devices sold by Complainant. Therefore, the Panel may find that the disputed domain name is identical or confusingly similar to the STRYKER mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <usedstryker.com> domain name because Respondent is not licensed or authorized to use Complainant’s STRYKER mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “Michael Panico/NorthBay Networks” as the registrant and no information suggests that Complainant has authorized Respondent to use the STRYKER mark in any way. The Panel here finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain to redirect users to its own website where it sells Complainant’s products and other competing products. Use of a disputed domain name to offer products that compete with a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant argues that Respondent uses the STRYKER mark to attract users to its website, then sells them competitors’ goods in a misleading way. Complainant provides a screenshot of the Respondent’s webpage at the disputed domain. The Panel here finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <usedstryker.com> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Use of a confusingly similar domain name to offer goods or services that compete with a complainant’s business can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Hewlett-Packard Co. v. Ali, FA 353151 (Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel again notes that Complainant provides a screenshot of Respondent’s website which diverts potential customers of Complainant’s business to a webpage that offers competing goods for sale. Complainant further emphasizes that Respondent’s use of the domain name trades on Complainant’s name without any authorization or permission from Complainant. The Panel here finds that Respondent engaged in bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also argues that Respondent has actual knowledge of Complainant’s rights in the STRYKER mark. While constructive notice is insufficient, actual knowledge of a complainant’s rights in a mark can be evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a disputed domain name to sell competing goods can act as evidence that a respondent has actual knowledge of a complainant’s rights. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent’s use of Complainant’s mark in conjunction with the sale of the same or similar medical equipment evidences actual knowledge of Complainant’s rights in the STRYKER mark. Additionally, Complainant notes that one of its former employees is listed as a contact person on Respondent’s webpage. The Panel finds that Complainant has presented sufficient uncontroverted evidence to support a finding of Respondent’s actual knowledge, thus indicating Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <usedstryker.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 15, 2020
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