DECISION

 

Boston Dental v. Richard D. Ferris

Claim Number: FA0111000101824

 

PARTIES

The Complainant is Fred G. Boustany d/b/a Boston Dental, Boston, MA (“Complainant”).  The Respondent is Richard D. Ferris, Fairfax, VA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bostondental.com>, registered with Easyspace Hostmaster.

 

PANEL

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.

 

Panelist is Judge Karl V. Fink (Retired).

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 9, 2001; the Forum received a hard copy of the Complaint on November 9, 2001.

 

On November 21, 2001, Easyspace Hostmaster confirmed by e-mail to the Forum that the domain name <bostondental.com> is registered with Easyspace Hostmaster and that the Respondent is the current registrant of the name.  Easyspace Hostmaster has verified that Respondent is bound by the Easyspace Hostmaster registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 11, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@bostondental.com by e-mail.

 

A timely Response was received and determined to be complete on December 10, 2001.

 

On December 21, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Retired) as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

The use of <bostondental.com> is identical to Complainant’s trademark and is confusing to customers seeking care at his practice since 1982 under this same name.

 

Boston Dental in any combination is Complainant’s trademark and represents his business logo and identity since 1982.

 

There is no reason for the Respondent to register all combinations of Boston Dental except to make money by selling to Complainant or others such as a competitor. Respondent obviously acted in bad faith, with the intention to disrupt Complainant’s business and confuse his patients and tarnish his trademark.

 

Complainant sued in federal court and won against Boston Dental Group in 1998-99 and made them stop using the name Boston Dental.

 

Everybody recognizes and associates the name of Boston Dental and Fred Boustany.

 

Complainant’s relationship with Mass Dental Society is 15 years old. He certifies all Dental Assistants in Radiology.  They all know him as Boston Dental.

 

Boston Dental is also part of the famous Apex program at Boston University where 4 dental interns rotate at Boston Dental for 3 months all year round to observe and learn dental practice management in a private practice setting.

 

B. Respondent

Respondent denies Complainant’s allegations and Complainant’s characterization of intentions of the Respondent in the acquisition and intended use of domain name <bostondental.com>.

 

The Respondent is a practicing oral surgeon in northern Virginia and has no intention of practicing dentistry in any other location.

 

The Respondent acquired <bostondental.com> together with other national metro (location) oriented dental domain names – domains which Respondent is currently organizing and intends to use in a national on-line dental information network.

 

“Bostondental.com” is not identical to “Boston Dental”.

 

Respondent acquired the domain name on October 14, 1998, more than a year before Complainant applied for a trademark on November 22, 1999, and two years before the trademark was registered on January 2001.

 

Respondent states his first knowledge of the existence of Complainant came through a letter from Complainant approximately two months ago. 

 

C. Additional Submissions

None.

 

FINDINGS

For the reasons set forth below, the Panel finds that Complainant has proven that the domain name should be transferred.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 Panel finds that Complainant’s extensive use of the BOSTON DENTAL mark since 1982 entitled him to common law rights in BOSTON DENTAL at the time that Respondent acquired the domain name on November 14, 1998.  See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).

 

The Panel finds that the domain name is identical to and confusingly similar to Complainant’s mark because there is a strong likelihood that Internet users will confuse Respondent’s website with Complainant’s dental practice.  See Brambles Industries Ltd. v. Geelong Car Co. Pty. Ltd., trading as Geelong City Motors, D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the Complainant’s business); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant …the Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s website). 

 

The Panel finds that <bostondental.com> is identical to or confusingly similar to Complainant’s BOSTON DENTAL service mark which was registered with the U.S. Patent and Trademark Office January 2, 1999. The addition of the top level domain name “.com” to Complainant’s mark does not defeat the claim that they are identical.  See World Wrestling Fed'n Entm't., Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (finding that “[t]he addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish those names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

            Complainant has proven this element.

 

Rights or Legitimate Interests

The Panel finds that Respondent is not commonly known by the domain name and therefore does not have any rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

 

Complainant has proven this element.

           

            Registration and Use in Bad Faith

The Panel finds that Respondent’s acquiring a domain name containing a well known mark and then failing to make actual use of the domain name is evidence of bad faith.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy).

 

Complainant has proven this element.

 

DECISION

The panel directs that the domain name <bostondental.com> be transferred to Complainant. 

 

 

Judge Karl V. Fink (Retired), Panelist

 

December  27, 2001