American Registry of Diagnostic Medical
Sonographers Inc. v. Ardms.net
Claim Number: FA0205000114279
PARTIES
Complainant
is American Registry of Diagnostic
Medical Sonographers Inc., Rockville, MD (“Complainant”) represented by David M. Kelly, of Finnegan Henderson Farabow Garrett & Dunner LLP. Respondent is Ardms.net, Mahwah, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <ardms.net>,
registered with Easyspace Ltd.
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.
Alan
L. Limbury Esq. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on May 15, 2002; the Forum received a hard copy of the Complaint
on May 16, 2002.
On
May 21, 2002, Easyspace Ltd. confirmed by e-mail to the Forum that the domain
name <ardms.net> is registered
with Easyspace Ltd. and that the Respondent is the current registrant of the
name. Easyspace Ltd. has verified that
Respondent is bound by the Easyspace Ltd. 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
May 21, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 10,
2002 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@ardms.net by e-mail.
A
timely Response was received and determined to be complete on May 21, 2002.
An
additional Response dated 9 June 2002 was received by the Forum but was
considered by the Forum not to comply with Forum Supplemental Rule 7 because it
was out of time and lacked the required fee. The Panel refuses to accept it for
the more fundamental reason that Forum Supplemental Rule 7 is inconsistent with
the UDRP and UDRP Rules: see America Online, Inc. v. Adrian Paul Miles d/b/a
AD2000D.com (FA 105890) (Nat. Arb. Forum).
On 17 June 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Alan L. Limbury
Esq. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
disputed domain name is identical to Complainant’s registered trademark ARDMS,
of which Respondent had actual knowledge before the domain name was registered
on 22 September 2000. Respondent’s use of the domain name cannot therefore give
rise to rights or legitimate interests in the domain name and amounts to bad
faith registration and use within paragraph 4(b)(iv) of the Policy.
B.
Respondent
[The
Response was in the form of a letter from ARDMS.NET, INC. signed by Mr.
Oleksandr Golovchenko, its sole director].
This
company was incorporated under New Jersey law on 18 December 2000. On that date
therefore the domain name is the same as the name of the company.
ARDMS.NET,
INC and ARDMS.NET are not the same abbreviation as ARDMS. The abbreviation was taken from the name of
my parents and relatives.
The
site is a not-for-profit site designed to help people get training behind the
computer, in response to many requests.
FINDINGS
Complainant is entitled to the transfer
of the disputed domain name.
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.”
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;
(2) the 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
Founded
in 1975, Complainant is the American Registry of Diagnostic Medical
Sonographers, Inc., an independent, nonprofit organization that administers
examinations for and awards credentials to paramedical professionals.
Complainant owns U.S. Reg. No. 1,526,240 for the ARDMS mark, first used June
1975 and issued in February 1989, covering “preparing and administering tests
and examinations for registration of eligible para-medical personnel in
diagnostic medical ultrasound and sonograph technology or in vascular
technology.”
The
Panel finds the disputed domain name to be identical to Complainant’s
registered trademark ARDMS. The domain name reflects Complainant’s mark in its
entirety and is phonetically identical. The addition of a generic top-level
domain, such as “.net,” is inconsequential when conducting a ¶ 4(a)(i)
analysis. See Pomellato S.P.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant).
Complainant has established this element.
Rights or Legitimate Interests
On 28 May 1999, Mr. Oleksandr Golovchenko
took Complainant’s Utrasound Physics and Instrumentation examination, a 2-hour
examination containing approximately 120 multiple-choice items (Complaint,
Exhibits 8 and 5). There can be no dispute that he had actual knowledge of
Complainant and its trademark ARDMS. Complainant has not authorized Respondent
to use its mark.
These circumstances are sufficient to
constitute a prima facie showing by
Complainant of absence of rights or legitimate interest in the disputed domain
name on the part of Respondent. The
evidentiary burden therefore shifts to Respondent to show by concrete evidence
that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web
D2000-0624 (WIPO) and the cases there
cited.
On 22 September 2000 the disputed domain
name was registered in the name “ARDMS.net”, with Mr. Golovchenko as
administrative and billing contact (Complaint Ex. 2).
The fact that the disputed domain name is
the same as the name of the company ARDMS.NET, INC. cannot assist Respondent
because the company was not incorporated until 18 December 2000 (Certificate of
Incorporation attached to Response).
Mr.
Golovchenko has produced no evidence in support of his claim that the
abbreviation ARDMS was taken from the name of his parents and relatives.
The Panel concludes that, in seeking to
offer training in how to take Complainant’s examinations, Respondent is
knowingly using Complainant’s trademark to attract Complainant’s examination
candidates to his site. “Use which intentionally trades on the fame of another
cannot constitute a ‘bona fide’ offering of goods or services”: Madonna Ciccon, v. Parisi D2000-0847
(WIPO).
Complainant has established this element.
Registration and Use in Bad Faith
Respondent registered the disputed domain
name with actual knowledge of Complainant’s trademark. The domain name is calculated to mislead
candidates for Complainant’s examinations into believing that they are reaching
a site operated by or at least approved by Complainant. Nothing at Respondent’s
site would correct his false impression. The Panel concludes it was
Respondent’s intention thus to mislead Internauts seeking Complainant’s site.
The Panel finds the disputed domain name
was registered and is being used in bad faith.
DECISION
Pursuant to Paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel directs that the domain name <ardms.net>
be transferred to the Complainant.
Alan L.
Limbury Esq., Panelist
Dated: 24 June 2002
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