national arbitration forum

 

DECISION

 

First Look Sonogram, Inc. v. Computer Care

Claim Number: FA0710001092259

 

PARTIES

Complainant is First Look Sonogram, Inc. (“Complainant”), represented by Edward A. Sokolski, 3868 Carson Street, Suite 105, Torrance, CA 90503.  Respondent is Computer Care (“Respondent”), PO Box 803, Gaston, SC 29053.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <firstlookimaging.com>, registered with Godaddy.com, Inc.

 

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.

 

Honorable Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 8, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 22, 2007.

 

On October 9, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <firstlookimaging.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 October 31, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 20, 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@firstlookimaging.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 29, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <firstlookimaging.com> domain name is confusingly similar to Complainant’s FIRST LOOK SONOGRAM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <firstlookimaging.com> domain name.

 

3.      Respondent registered and used the <firstlookimaging.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, First Look Sonogram, Inc., is a California-based company that has provided ultrasound and sonagram services to customers in the Redondo Beach area for over four years.  Complainant has registered the FIRST LOOK SONOGRAM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,825,252 issued March 23, 2004).

 

Respondent registered the <firstlookimaging.com> domain name on April 2, 2007.  Respondent provides ultrasound and sonogram imaging services in Columbia, South Carolina and has been in operation for less than one year.  Respondent is using the <firstlookimaging.com> domain name to operate a website providing information regarding Respondent’s ultrasound and sonogram services.

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the FIRST LOOK SONOGRAM mark through registration of the mark with the USPTO.  The Panel finds that Complainant’s registration satisfies its burden under Policy ¶ 4(a)(i).  See Metro. Life Ins. Co. v. Bin g Glu, FA 874496 (Nat Arb. Forum Feb. 13, 2007) (finding rights in the METLIFE mark as a result of its registration with the United States federal trademark authority); see also Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration establishes rights under Policy ¶ 4(a)(i)).

 

Complainant contends that Respondent’s <firstlookimaging.com> domain name is confusingly similar to Complainant’s FIRST LOOK SONOGRAM mark.  Complainant contends that the terms “sonogram” and “imaging” are equivalent and that the presence of the term “imaging” in Respondent’s mark is an insufficient means of distinguishing its domain name from Complainant’s mark.  The Panel does not agree.  The term “imaging” has a far broader meaning than the term “sonogram.”  Moreover, Complainant does not own the rights to all uses of the terms “first” and “look.”  Complainant is a regional ultrasound clinic that provides its services in the Redondo Beach, CA area.  As a result, the Panel finds that Respondent’s use of the term “imaging” is sufficient to distinguish its domain name from Complainant’s mark for purposes of Policy ¶ 4(a)(i).  See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter."); see also Broadcom Corp. v. Smoking Domains, FA 137037 (Nat. Arb. Forum Feb. 11, 2003) (finding that the <broadcommunications.com> domain name was not confusingly similar to the complainant’s BROADCOM mark because the overall impression of the domain name was not similar to the complainant's mark and the domain name was “different, generic, and not likely to confuse the public”); see also Bank of Am. Corp. v. Fluxxx, Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002) (“[I]n light of the common use of the words ‘nations’ and  ‘banking,’ this Panel fails to see how there is a likelihood of confusion between NATIONSBANK and <nationsbanking.com>.”).

 

The Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant contends that Respondent does not have rights or legitimate interests in the <firstlookimaging.com> domain name.  Under certain circumstances, it is possible for the mere assertion of a lack of rights or legitimate interests to establish a prime facie case under Policy ¶ 4(a)(ii).  However, upon an examination of the evidence provided by Complainant, it appears that Respondent does hold rights and legitimate interests in the <firstlookimaging.com> domain name.  As such, the Panel will further examine the presented evidence below.  See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).

 

Respondent is using the <firstlookimaging.com> domain name in connection with the provision of ultrasound and sonogram services in the Columbia, SC area.  Respondent has been providing these services since at least as early as April 2007.  Complainant on the other hand operates in Redondo Beach, CA.  Therefore, it is highly unlikely that customers in the California area would mistake Respondent for Complainant,and vice versa.  The Panel finds that Respondent’s use of the <firstlookimaging.com> domain name in connection with its ultrasound and sonogram services is a bona fide offering of goods or services under Policy ¶ 4(c)(i).  See InfoSpace, Inc. v. Lemieux, D2000-1476 (WIPO Jan. 18, 2001) (finding that the use of the <sportsinfospace.com> domain name was a bona fide offering of goods or services where the respondent registered the domain solely for the purpose of offering season tickets to baseball games and restricted the use to that extent); see also Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3, 2002) (finding that the respondent’s use of the disputed domain name for a website regarding chess tournaments, particularly because the domain name appropriately described both the target users of the respondent’s services and the nature of the respondent’s services, was a bona fide use of the domain name).

 

The Panel finds that Respondent does have rights or legitimate interests in the <firstlookimaging.com> domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and used the <firstlookimaging.com> domain name in bad faith.  However, Respondent registered the disputed domain name in connection with the provision of ultrasound and sonogram services.  Respondent’s services are regionally specific services for customers within a reasonable traveling distance from its clinic.  Therefore, California residents are highly unlikely to confuse a South Carolina clinic with that of one in their own local area.  Because Respondent has established rights and legitimate interests in the <firstlookimaging.com> domain name and registered the disputed domain name in connection with its own ultrasound services, the Panel finds that Respondent has not registered the <firstlookimaging.com> domain name in bad faith under Policy ¶ 4(a)(iii).  See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the issue of bad faith.”).

 

The Panel finds that Respondent did not register the <firstlookimaging.com> domain name in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  December 10, 2007

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum