Lexington Rubber Group, Inc. v. Gregory Ricks
Claim Number: FA0707001047280
Complainant is Lexington Rubber Group, Inc. (“Complainant”), represented by Susan
M. Freedman, of Nixon Peabody LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lexingtonmedical.com>, registered with Moniker Online Services, Inc.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 30, 2007.
On August 10, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <lexingtonmedical.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 August 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 2007 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@lexingtonmedical.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 13, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <lexingtonmedical.com> domain name is identical to Complainant’s LEXINGTON MEDICAL mark.
2. Respondent does not have any rights or legitimate interests in the <lexingtonmedical.com> domain name.
3. Respondent registered and used the <lexingtonmedical.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lexington Rubber
Group, Inc., holds a trademark registration with the United States Patent and
Trademark Office (“USPTO”) for the LEXINGTON MEDICAL mark (Reg. No. 1,929,679
issued October 24, 1995). Complainant
has used the LEXINGTON MEDICAL mark in connection with the manufacturing and
sale of rubber medical devices and instruments, including intravenous feeding
systems, syringes, and surgical equipment.
Respondent registered the <lexingtonmedical.com> domain name on December 7, 2003. Respondent is using the disputed domain name to display links to various other medical companies’ websites, some of which offer competing goods and services with those offered by Complainant under the LEXINGTON MEDICAL mark.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has established rights in the LEXINGTON MEDICAL
mark under Policy ¶ 4(a)(i) through registration of the mark with the
USPTO. See Towmaster, Inc. v. Hale,
FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of
the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i)”);
see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7,
2007) (holding that “[t]his trademark registration [with the USPTO] establishes
Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Respondent’s <lexingtonmedical.com> domain
name is identical to Complainant’s LEXINGTON MEDICAL mark as it uses the mark
in its entirety and simply adds the generic top-level domain (“gTLD”) “.com” to
the mark. As prior panels have found,
this Panel holds that the addition of a gTLD is irrelevant to the determination
of whether a mark is identical under Policy ¶ 4(a)(i). The Panel therefore finds the <lexingtonmedical.com> domain name is
identical to Complainant’s mark under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space,
SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established
principle that generic top-level domains are irrelevant when conducting a
Policy ¶ 4(a)(i) analysis.”); see also Fed’n
of Gay Games, Inc. v. Hodgson,
D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to the complainant's registered trademark GAY
GAMES).
The Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent has no rights and
legitimate interests in the <lexingtonmedical.com>
domain name. Complainant’s assertions
establish a prima facie case, which shifts the burden to Respondent to
show that it does have rights or legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii). See
The Panel may assume that Respondent has no rights or legitimate interests here because the Respondent failed to respond to the Complaint. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will review all available evidence before determining whether Respondent has rights or legitimate interests in the <lexingtonmedical.com> domain name under Policy ¶ 4(c).
Complainant contends that Respondent is using the <lexingtonmedical.com> domain name to redirect Internet users to Respondent’s directory website, which displays links to various medical goods providers’ websites that compete in the same market as Complainant. The Panel finds that such use by Respondent is not a use in connection with 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). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
Finally, Respondent offers no evidence and no evidence is
present in the record to indicate that Respondent is commonly known by the <lexingtonmedical.com> domain
name. Respondent’s WHOIS information
identifies Respondent as “Gregory Ricks.” Therefore, the Panel finds that Respondent
has failed to establish rights or legitimate interests in the mark pursuant to
Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
The Panel finds that Policy 4(a)(ii) has been satisfied.
Respondent has registered and is using the <lexingtonmedical.com> domain name, which is identical to Complainant’s LEXINGTON MEDICAL mark, to redirect Internet users to Respondent’s website, which displays links to competing third-party websites. The Panel finds that Respondent’s use of the <lexingtonmedical.com> domain name to display links to Complainant’s competitors constitutes disruption of Complainant’s business, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that respondent’s use of the disputed domain name to display links to services in competition with Complainant constituted disruption under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Additionally, Respondent is using the <lexingtonmedical.com> domain name to
redirect Internet users to Respondent’s website for the assumed profit of
Respondent. The Panel finds that
Internet users seeking Complainant’s website may become confused as to
Complainant’s affiliation with Respondent’s website, particularly since
Respondent’s <lexingtonmedical.com>
domain name is identical to Complainant’s LEXINGTON MEDICAL mark and hosts
links to numerous medical websites selling goods in the same market as
Complainant. Presumably, Respondent is
profiting from this confusion through pay-per-click fees. The Panel finds Respondent’s use of the
disputed domain name for its own commercial gain is evidence of bad faith
registration and use under Policy ¶ 4(b)(iv).
See Associated Newspapers Ltd. v. Domain
Manager, FA 201976 (Nat. Arb. Forum Nov.
19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name
is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name
provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding
bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved
to a website that offered links to third-party websites that offered services
similar to the complainant’s services and merely took advantage of Internet
user mistakes).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lexingtonmedical.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 27, 2007
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