OraSure Technologies, Inc.
Claim Number: FA0710001103646
Complainant is OraSure Technologies, Inc. (“Complainant”), represented by Paul
J. Kennedy, of Pepper Hamilton LLP, 3000 Two Logan
Square, 18th & Arch Streets, Philadelphia, PA 19103-2799. Respondent is Texas International Property Associates
(“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orashure.com>, registered with Compana, LLC.
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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 29, 2007.
On October 26, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <orashure.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on November 27, 2007.
On December 3, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it develops,
manufactures and markets oral fluid specimen collection devices using
proprietary oral fluid technologies, diagnostic products including immunoassays
and other in vitro diagnostic tests, and other medical devices. These
products are sold in the
is the original and exclusive owner of the corporate name and trademark
ORASURE. It is the owner of two
Complainant registered the domain name ORASURE.COM on December 23,
1996 and has used it since to promote its product.
Complainant sent correspondence via email to Respondent on October 12, 2007, in an effort to secure the transfer of the domain name at issue. The Registrant responded on October 18, 2007 that while it received the correspondence it would have its "legal representative respond in between 15 to 21 days." Registrant was advised on October 26, 2007, that this response was unacceptable and that this proceeding would begin and, further to have its legal representative get in touch with the undersigned. Complainant submitted the subject complaint to the National Arbitration Forum on October 26, 2007.
Upon information and belief, Respondent registered the domain name at dispute on or about November 15, 2005. Long prior to this date, Complainant had used its ORASURE trademarks as noted above (as early as 1990) and the <orasure.com> domain name (December 23, 1996), as well as achieved significant sales of its ORASURE products and services.
The current Registrar/Registrant facilitated registration of a nearly identically spelled, phonetically exact and confusingly similar domain name "ORASHURE". Indeed, the only difference between the domain name of the Complainant and that of Respondent' s is the addition by Respondent of an "H" as a misspelling of the word "sure". Respondent is using the domain name at dispute to direct Internet users to an online directory housing pay-per-clink links to, inter alia, competitors of Complainant offering supposedly similar HIV and other "rapid" tests, health directories, HIV testing offices and clinic and physician directories.
Furthermore Respondent has no rights in the domain name that it the subject of the Complaint. Respondent is not affiliated with Complainant and has not been licensed or otherwise authorized to use a mark or domain name that is nearly identically spelled, phonetically exact and confusingly similar to the domain name and registered trademarks of Complainant. Respondent even has the audacity to reference Complainant's registered trademark ORASURE on its title page, but when one clicks Complainant's name, they are redirected to a listing of products that compete with Complainant.
Furthermore, Respondent has not been commonly known by the disputed domain name and has not obtained trademark or service mark rights in the disputed domain name.
Finally, Respondent is not using the domain name at dispute for any bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the domain name. Instead, <orashure.com> is used to house an online directory with pay-per-click links to websites that provide products and services indirect competition with those of Complainant.
Complainant contends that the disputed domain name has been registered and used in bad faith. Through its use of the disputed domain name, Respondent attracts Internet users to the <orashure.com> website for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of Complainant’s <orasure.com> domain name and ORASURE trademarks.
As mentioned above, when a user enters the disputed domain name into their browser window, a web page is opened which provides links to, inter alia, the websites of Complainant’s competitors. Such sites are usually funded by per-click license fees for the website links provided.
According to Complainant, Respondent seeks to induce visitors to the website associated with the disputed domain name by relying on the expectation that a proportion of Internet users who seek websites owned by Complainant will inadvertently add the letter "h" as in <orashure.com> instead of Complainant’s domain name orasure.com and trademark and trade name ORASURE. Respondent's attempt to deceive the public in this fashion is a classic example of the practice of "typo-squatting." The mere act of 'typo-squatting' in relation to a well established mark is evidence of bad faith.
Furthermore, Respondent intentionally uses the disputed domain name in an effort to attract Internet users to Respondent's website for the purpose of gaining revenue through advertiser's payments to Respondent for users that clicked through to the various listed advertisers’ websites. A consumer will likely be confused by the disputed domain name, as compared to the <orasure.com> domain name and ORASURE marks because the disputed domain name and the domain name and trademarks of Complainant are confusingly similar. Furthermore, Complainant is harmed since users are not only diverted from its web sites, but also are diverted to the sites of Complainant’s competitors. This is further compounded by the fact that Respondent even lists Complainant's trademark and trade name on its site, suggesting sponsorship or approval by Complainant.
Respondent stated amongst others the following response:
“On October 12, 2007 Complainant contacted Respondent, demanding transfer of the disputed domain name. Respondent replied on October 18, 2007 that its legal representative would be in touch within 15-21 days. Rather than comply with such a reasonable req uest, Complainant filed the instant action a mere eight (8) days later. Had Complainant waited a bit longer it could have saved the filing fee as well as the cost of the preparation of the UDRP and achieved the same result. Respondent agrees to the relief requested by the Complainant and will, upon order of the Panel, do so. This is not an admission to the three elements of 4(a) of the policy but rather an offer of “unilateral consent to transfer” as prior Panels have deemed it.
For the foregoing reasons, Respondent requests that the Panel order the immediate transfer of the disputed domain name.”
FINDINGS AND 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.”
Preliminary Issue: Consent to Transfer the Subject Domain Name
Respondent does not contest any of Complainant’s allegations regarding the <orashure.com> domain name. Rather, Respondent has consented to judgment in favor of Complainant and authorized the immediate transfer of the subject domain name. The Panel finds that in a circumstance such as this, where Respondent has consented to the transfer of the disputed domain name, the Panel may decide to forego the traditional UDRP analysis and order the immediate transfer of the domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Having established and determined that the requests of the parties in this case are identical, in that the Respondent does not contest Complainant’s remedy, the panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <orashure.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: December 17, 2007
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