Gregory A. Stainer v. ITWEB Domain Protection
Claim Number: FA0801001140783
Complainant is Gregory A. Stainer (“Complainant”), represented by James
M. Duncan,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gregorystainer.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.Com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 31, 2008.
On January 29, 2008, Direct Information Pvt Ltd d/b/a Publicdomainregistry.Com confirmed by e-mail to the National Arbitration Forum that the <gregorystainer.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.Com and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry.Com has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry.Com 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 February 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 6, 2008 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@gregorystainer.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gregorystainer.com> domain name is identical to Complainant’s GREGORY STAINER mark.
2. Respondent does not have any rights or legitimate interests in the <gregorystainer.com> domain name.
3. Respondent registered and used the <gregorystainer.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Gregory Stainer, is a medical doctor who specializes in LASIK eye surgery. Complainant has treated patients since 1981 and has continuously used his GREGORY STAINER mark in connection with the services provided by his medical practice since that time. Complainant incorporated “Gregory A. Stainer, M.D., F.A.C.S.” as a California Professional Medical Corporation in 1987. Complainant is certified by the Council for Refractive Surgery Quality Assurance (“CRSQA”) under his GREGORY STAINER mark. Complainant’s GREGORY STAINER mark is featured multiple times on his business website <www.bakersfieldlasik.com>, as well as on the CRSQA website.
Respondent registered the disputed domain name on December 18, 2007. Respondent’s <gregorystainer.com> domain name resolves to a website which criticizes CRSQA LASIK eye surgeons in general and lists Complainant specifically. In addition to the criticism, the website resolving from the disputed domain name displays links to third-party websites such as malpractice attorneys and other complaint sites.
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.
While Complainant does not have a registered trademark for
the GREGORY STAINER mark, the Panel finds such registration is unnecessary
under Policy ¶ 4(a)(i), provided Complainant can
establish common law rights in the mark.
See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23,
2000) (noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”); see also
SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that the complainant's trademark or
service mark be registered by a government authority or agency for such rights
to exist).
Complainant has continuously used the GREGORY STAINER mark in connection with his medical practice since 1981. Complainant incorporated “Gregory A. Stainer, M.D., F.A.C.S.” as a California Professional Medical Corporation in 1987. The GREGORY STAINER mark is prominently displayed on several websites connected with Complainant’s LASIK surgery business and Complainant has used his GREGORY STAINER mark in connection with numerous professional associations and certifications. In addition, Complainant has been certified as a LASIK surgeon by the CRSQA using his GREGORY STAINER mark. Therefore, the Panel finds Complainant has established common law rights in his GREGORY STAINER mark pursuant to Policy ¶ 4(a)(i) through his long history of use of his GREGORY STAINER in connection with his medical business. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).
Respondent’s <gregorystainer.com>
domain name fully incorporates Complainant’s GREGORY STAINER mark with the mere
deletion of the space between the words and the addition of the generic
top-level domain (“gTLD”) “.com.” Panels
have frequently held the gTLD “.com” is irrelevant when considering whether a
disputed domain name is identical to a mark under Policy ¶ 4(a)(i) because a gTLD is a required element of every domain
name. Therefore, the Panel finds
Respondent’s <gregorystainer.com>
domain name is identical to Complainant’s GREGORY STAINER mark pursuant to
Policy ¶ 4(a)(i).
See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to the complainant's registered trademark GAY
GAMES); see also
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain name. Once Complainant presents a prima facie case supporting these
allegations, the burden shifts to Respondent to establish it does have rights
or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel
finds Complainant has presented a sufficient prima facie case to support its allegations. Respondent failed to submit a response to
these proceedings. Therefore, the Panel
may assume Respondent does not have rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel will inspect the record
and determine whether Respondent has rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c).
See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s
Submission constitutes a prima facie case under the Policy, the burden
effectively shifts to Respondent. Respondent’s failure to respond means that
Respondent has not presented any circumstances that would promote its rights or
legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am.
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.”).
Respondent is using the disputed domain name to operate a
criticism website regarding Complainant.
The Panel finds Respondent’s use of a disputed domain name that is
identical to Complainant’s mark to operate a criticizing website is not a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i), or a legitimate noncommercial
fair use pursuant to Policy ¶ 4(c)(iii).
See Baker & Daniels v.
DefaultData.com, FA 104579 (Nat. Arb. Forum Mar. 27, 2002) (finding that
because the respondent’s <bakeranddaniels.com> domain name merely
incorporates the complainant’s trademark, without more, it is not protected by
the First Amendment); see also Monty &
Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel
does not dispute Respondent’s right to establish and maintain a website
critical of Complainant . . . However, the panel does not consider that
this gives Respondent the right to identify itself as Complainant.”); see also E. & J. Gallo Winery v. Hanna Law Firm,
D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free
speech/complaint site does not give rights to use a famous mark in its
entirety).
Also, the WHOIS information does
not indicate Respondent is commonly known by the <gregorystainer.com>
domain name. The record indicates
Complainant has never authorized Respondent to use his GREGORY STAINER
mark. Therefore, the Panel finds
Respondent is not commonly known by the <gregorystainer.com>
domain name pursuant to 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 Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent used the identical disputed domain name to operate a website which criticized Complainant’s business. The Panel finds Respondent’s use of a disputed domain name that is identical to Complainant’s mark in order to operate a criticism website is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Diners Club Int’l, Ltd.
v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20,
2003) (“Respondent’s registration and use of a domain name nearly
identical to Complainant’s mark to criticize Complainant’s business practices
is evidence of registration and use of the <diners-club.net> domain name
in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Nw. Airlines, Inc. v.
Jorgenson, FA 96586 (Nat. Arb. Forum Mar. 28, 2001) (“Respondent registered the domain name for the purpose of
bringing Internet users desiring to learn more about Complainant to
Respondent's site for the intended purpose of publishing contrary and critical
views of Complainant thus disrupting the business of Complainant. Registering a
domain name identical with the mark of Complainant, for this purpose, is bad
faith.”).
The Panel finds
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gregorystainer.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: March 20, 2008
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