national arbitration forum

 

DECISION

 

MxSecure, Inc. v. Mx Secure Technologies (P) Ltd. a/k/a Mx Secure Technologies Pvt Ltd.

Claim Number: FA0710001103345

 

PARTIES

 

Complainant is MxSecure, Inc. (“Complainant”), represented by John E. Cummerford, of Greenberg Traurig, LLP, 2375 East Camelback Road, Suite 700, Phoenix, AZ 85016.  Respondent is Mx Secure Technologies (P) Ltd. a/k/a Mx Secure Technologies Pvt Ltd. (“Respondent”), Adj Aditya Trade center, 302&501 Mahindra Residenc, Ameerpet, Hyderabad, Andhra pradesh 500038, India.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

 

The domain name at issue are <mxsecuretech.com> and <mxsecureintl.com>, registered with Dstr Acquisition Vii, LLC.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 29, 2007.

 

On October 25, 2007, Dstr Acquisition Vii, LLC confirmed by e-mail to the National Arbitration Forum that the <mxsecuretech.com>and <mxsecureintl.com> domain names are registered with Dstr Acquisition Vii, LLC and that Respondent is the current registrant of the names.  Dstr Acquisition Vii, LLC has verified that Respondent is bound by the Dstr Acquisition Vii, LLC 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 7, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 27, 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@mxsecuretech.com and postmaster@mxsecureintl.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 Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <mxsecuretech.com> and <mxsecureintl.com> domain names are confusingly similar to Complainant’s MXSECURE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <mxsecuretech.com> and <mxsecureintl.com> domain names.

 

3.      Respondent registered and used the <mxsecuretech.com> and <mxsecureintl.com> domain names in bad faith.

 

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

 

FINDINGS

 

Complainant, MxSecure, Inc. is a leading provider of medical transcription services in the U.S. healthcare clinic market.  Complainant also provides transcription and document management services to hospitals, individual and group medical practices, and community health centers.  Complainant registered the MXSECURE mark with the United States Patent and Trademark Office (“USPTO”) on November 22, 2005 (Reg. No. 3,017,677); registered the MXTRANSCRIBE mark on June 13, 2006 (Reg. No. 3,103,225); and filed for registration of the MXSECUREMAIL mark on November 15, 2004. (Ser. No. 78/517,289).

 

Respondent registered the <mxsecuretech.com> and <mxsecureintl.com> domain names on April 1, 2006.  Respondent is currently using the disputed domain names to advertise its medical transcription, coding, and billing services; these services are identical to Complainant’s 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’s registration of the MXSECURE mark with the United States Patent and Trademark Office (U.S. Reg. No. 3,017,677) has established its rights to the mark under Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").

 

The disputed domain names are confusingly similar to Complainant’s MXSECURE mark because the disputed domain names contain Complainant’s entire mark; the addition of the abbreviated generic terms “tech” and “intl” do not sufficiently distinguish the disputed domain names from the MXSECURE mark.  Furthermore, the addition of the generic top-level domain (“gTLD”) “.com” to both disputed domain names does not sufficiently distinguish the <mxsecuretech.com> and <mxsecureintl.com> domain names from Complainant’s mark.  Therefore, the Panel finds that the disputed domain names are confusingly similar to the MXSECURE mark under Policy ¶ 4(a)(i).  See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

 

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

 

Rights or Legitimate Interests

 

Complainant claims that Respondent has neither rights nor legitimate interests in the <mxsecuretech.com> and <mxsecureintl.com> domain names.  Complainant has the initial burden of showing that Respondent lacks all rights and legitimate interests in the disputed domain names.  Once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain names.  The Panel finds that Complainant has made a prima facie case and shown that Respondent lacks rights and legitimate interests in the <mxsecuretech.com> and <mxsecureintl.com> domain names pursuant to Policy ¶ 4(a)(ii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“[I]t is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). 

 

Because Respondent failed to answer the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”).  However, the Panel will examine all evidence in the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).

 

Complainant asserts that Respondent has never been authorized to use the MXSECURE mark, and that Respondent is not and has never been commonly known by the <mxsecuretech.com> and <mxsecureintl.com> domain names.  Moreover, the WHOIS information provides no indication that Respondent is commonly known by the disputed domain names.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).”).

 

Respondent is using the disputed domain names to advertise its medical transcription services.  These services directly compete with the services provided by Complainant.  The Panel finds that such use of the disputed domain names does not constitute 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Oregon. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).

 

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

 

Registration and Use in Bad Faith

 

Respondent is using the disputed domain names for commercial use by advertising its competing services, and is benefiting from the likelihood of confusion with Complainant’s MXSECURE mark.  Respondent’s use of the disputed domain names is capable of creating confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the disputed domain names.  Therefore, the Panel finds that this constitutes evidence of registration and use in bad faith under Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).        

 

In addition, the Panel finds that Respondent’s use of the disputed domain names to advertise its competing services demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

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 relief shall be GRANTED.

 

Accordingly, it is Ordered that the <mxsecuretech.com> and <mxsecureintl.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. Meyerson, Panelist

Dated:  December 11, 2007

 

 

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