DECISION

 

Reliant Technologies, Inc. v. Richard Jones

Claim Number: FA 0712001124524

 

PARTIES

 

Complainant is Reliant Technologies, Inc. (“Complainant”) represented by Nancy J. Mertzel, of Thelen Reid Brown Raysman & Steiner LLP of  California, USA.  Respondent is Richard Jones of USA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <fraxellasertreatment.us>, registered with Enom, 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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 21, 2007; the Forum received a hard copy of the Complaint on December 26, 2007.

 

On December 26, 2007, Enom, Inc. confirmed by e-mail to the Forum that the <fraxellasertreatment.us> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On January 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 28, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for the usTLD Dispute Resolution Policy (the “Rules”).

 

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

 

On February 7, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

1.      Respondent’s <fraxellasertreatment.us> domain name is confusingly similar to Complainant’s FRAXEL mark.

 

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

 

3.      Respondent registered and used the <fraxellasertreatment.us> domain name in bad faith.

 

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

 

FINDINGS

 

Complainant, Reliant Technologies, Inc., is a leading manufacturing of lasers for dermatological treatment.  Complainant has registered the FRAXEL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,974,491 issued July 19, 2005).  Complainant has used this mark in connection with their business in the United States and around the world.  Complainant operates a website at the <fraxel.com> domain name.

 

Respondent registered the <fraxellasertreatment.us> domain name on September 19, 2007.  The disputed domain name is currently parked and displays information about the registrar.  Additionally, Respondent has been the respondent in several UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants in those proceedings.  E.g., First Mariner Bank v. Richard Jones, FA 692491 (Nat. Arb. Forum June 12, 2006); Yokohama Tire Corp. v. Richard Jones, FA 739888 (Nat. Arb. Forum Aug. 3, 2006).

 

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(f), 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 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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Dispute Resolution Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant registered the FRAXEL mark with the USPTO and therefore, has established rights to the mark pursuant to 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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

Complainant contends that the <fraxellasertreatment.us> domain name is confusingly similar to the FRAXEL mark.  Respondent’s addition of the terms “laser” and “treatment” to the registered mark is insufficient to distinguish the disputed domain name from the registered mark because both terms are descriptive of Complainant’s business.  Also, because all domain names are required to have a top-level domain, Respondent’s use of the country-code top-level domain (“ccTLD”) “.us” does not distinguish the disputed domain name from Complainant’s registered mark.  Therefore, the Panel finds that the <fraxellasertreatment.us> domain name is confusingly similar to Complainant’s FRAXEL mark pursuant to Policy ¶ 4(a)(i).  See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Toray Indus., Inc. v. Yassievich, FA 998100 (Nat. Arb. Forum July 12, 2007) (“The Domain Name is distinguished from the Trademark only by the addition of the generic and top-level domain “.us.”  This difference does not avoid confusing similarity.”).

 

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

 

Rights or Legitimate Interests

 

Complainant has the initial burden of proof to show that Respondent does not have rights or legitimate interests in the disputed domain name.  When Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the <fraxellasertreatment.us> domain name.  The Panel finds that Complainant has met the initial burden, and therefore has made a prima facie case under Policy ¶ 4(a)(ii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it 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.”). 

 

Because Respondent failed to answer the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name.  See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also 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).  Nevertheless, the Panel will examine all evidence in the record to determine if Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant asserts that Respondent has never been authorized to use the FRAXEL mark.  Complainant contends that Respondent does not own any trademarks or service marks reflecting the <fraxellasertreatment.us> domain name.  With no evidence to the contrary, the Panel finds that Respondent has no trademark or service mark rights in the FRAXEL mark pursuant to Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to UDRP ¶ 4(c)(i)).

 

There is no evidence that Respondent has ever been commonly known by the disputed domain name.  Further, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name.  Thus, the Panel finds that Respondent is not commonly known by the <fraxellasertreatment.us> domain name pursuant to Policy ¶ 4(c)(iii).  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 UDRP ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

The Panel also finds that Respondent is currently not using the disputed domain name, as the <fraxellasertreatment.us> domain name is parked.  There is no evidence that Respondent is preparing to use the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).  Therefore, the Panel finds the Respondent lacks rights and legitimate interests.  See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to [UDRP] Policy ¶ 4(a)(ii).”).

 

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

 

Registration and Use in Bad Faith

 

Respondent’s use of the <fraxellasertreatment.us> domain name, which is confusingly similar to Complainant’s FRAXEL mark, is likely to cause confusion to customers searching for Complainant’s goods and services.  There may be uncertainty regarding Complainant’s affiliation, endorsement, or sponsorship of Respondent’s website.  The Panel assumes Respondent is commercially benefiting from this confusion.  Based on the findings, the Panel concludes that Respondent’s registration and use of the <fraxellasertreatment.us> domain name constitutes bad faith under Policy ¶ 4(b)(iv).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to UDRP ¶ 4(b)(iv)).

 

Respondent is not currently making an active use of the website that resolves from the disputed domain name.  Failure to make an active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the UDRP); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

Additionally, Respondent has been the respondent in several UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants in those proceedings.  E.g., First Mariner Bank v. Richard Jones, FA 692491 (Nat. Arb. Forum June 12, 2006); Yokohama Tire Corp. v. Richard Jones, FA 739888 (August 3, 2006).  Therefore, the Panel finds evidence of bad faith registration and use under Policy ¶ 4(b)(ii).  See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 ((finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also National Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).

 

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


 

 

DECISION

 

Having established all three elements required under the usTLD Dispute Resolution Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <fraxellasertreatment.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. Meyerson, Panelist

Dated: February 19, 2008

 

 

 

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page