DECISION

 

Instrumentarium Corporation v. Introite LTD

Claim Number: FA0203000105757

 

PARTIES

Complainant is Instrumentarium Corporation, Instrumentarium, FINLAND (“Complainant”) represented by Annaleena Kumlin.  Respondent is Mathias Eriksson Introite LTD, Stockholm, SWEDEN (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <instrumentarium.biz> and <instrumentarium.info>, registered with eNom, Inc., CSL GmbH d/b/a Joker.com.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 6, 2002; the Forum received a hard copy of the Complaint on March 18, 2002.

 

On March 7, 2002; March 8, 2002, eNom, Inc., CSL GmbH d/b/a Joker.com confirmed by e-mail to the Forum that the domain names <instrumentarium.biz> and <instrumentarium.info> are registered with eNom, Inc., CSL GmbH d/b/a Joker.com and that Respondent is the current registrant of the name.  eNom, Inc., CSL GmbH d/b/a Joker.com has verified that Respondent is bound by the eNom, Inc., CSL GmbH d/b/a Joker.com 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 March 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 8, 2002 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@instrumentarium.biz, and postmaster@instrumentarium.info by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On April 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.”  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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The <instumentarium.biz> and <instrumentarium.info> domain names are identical to Complainant's INSTRUMENTARIUM mark.

 

Respondent has no rights or legitimate interests in the disputed domain names.

 

Respondent registered and used the disputed domain names in bad faith.

 

B. Respondent

Respondent failed to submit a Response.

 

FINDINGS

Complainant uses the INSTRUMENTARIUM mark in relation to the sale of health care equipment, electronic, electrical, metal and information processing products, pharmaceutical raw materials and products, optical products and materials, and other related industrial and commercial activities.  Complainant has operated for 100 years under the mark INSTRUMENTARIUM and is one of the leading companies operating in the field of anesthesia and critical care, as well as medical equipment and supplies.  The name INSTRUMENTARIUM is registered with the Finnish Trade Registrar, and has been since 1901.  Complainant also operates a website at <instrumentarium.com>.

 

Respondent registered the disputed domain names on September 21, 2001 and November 19, 2001.  As of January 29, 2002 neither domain name had been used since their registration.  Respondent offered each of the domain names for sale for € 840 ( $740).

 

DISCUSSION

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 the 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.

 

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; and

(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

Complainant has rights in the INSTRUMENTARIUM mark because it has used it continuously for 100 years and registered the name with the Finnish Trade Registrar.

 

Respondent’s <instrumentarium.biz> and <instumentarium.info> domain names are identical to Complainant’s INSTRUMENTARIUM mark because they incorporate the entirety of Complainant’s mark and merely add the generic top-level domain “.biz,” and “.info.” The addition of a generic top-level domain name does not create a distinct mark capable of overcoming a claim of identical or confusing similarity.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

 

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See 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”).

 

Respondent has registered two domain names identical to Complainant’s mark,  any use of these domain names would cause a likelihood of confusion among Internet users as to the source, sponsorship and affiliation of the domain names and therefore divert Internet traffic away from Complainant’s website to Respondent’s website.  Therefore any future use by Respondent of the disputed domain names cannot be considered a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

 

Furthermore, the only use Respondent has made of the disputed domain names is to offer them for sale to Complainant.  This type of use does not create legitimate rights or interests in the disputed domain name pursuant to Policy ¶ 4(c)(i).  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

 

Respondent, known to the Panel as Introite LTD, has not come forward to offer any evidence that it is commonly known by either of the disputed domain names.  Therefore Respondent has no rights or legitimate interests in the disputed domain names 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 a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

 

Any use by Respondent of the disputed domain names could be inferred as an attempt to  intentionally divert Internet users to its website for its own commercial gain, therefore, Respondent is not making a legitimate noncommercial, or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii).  See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent attempted to sell the disputed domain names to Complainant for a sum in excess of its out-of-pocket expenses.  This type of behavior is evidence of bad faith pursuant to Policy ¶ 4(b)(i).  See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs).

 

Furthermore, Respondent has engaged in a pattern of registering infringing domain names by registering two domain names that incorporate Complainant’s marks within a very short period of time.  See YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

 

Accordingly, it is Ordered that the domain names <instumentarium.biz> and <instrumentarium.info> be transferred from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated: April 12, 2002