OraSure Technologies, Inc.
v.
Claim Number: FA0710001103646
PARTIES
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.
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
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
postmaster@orashure.com 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
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
Complainant
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.”).
DECISION
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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