Atrium Medical Corporation v. Emin Keklik
Claim Number: FA0803001172416
Complainant is Atrium Medical Corporation (“Complainant”), represented by Sean
D. Detweiler, of Lahive & Cockfield, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <atriummed.net>, registered with Onlinenic, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Robert F. Pfeuffer, (Ret.), David H. Bernstein, Esq. and James A. Carmody, Esq. (Chair), as Panelists.
Complainant submitted a Complaint to
the National Arbitration Forum (“NAF”) electronically on
On
On April 9, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 29, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via certain e-mail, post and fax addresses to the entities and persons listed on Respondent's registration as technical and billing contacts, and to postmaster@atriummed.net by e-mail. As discussed in more detail below, though, NAF inadvertently failed to send the Commencement Notice to the listed administrative contact.
Having received no response from Respondent, NAF transmitted to the parties a Notification of Respondent Default.
On April 30, 2008, NAF received an e-mail from the Respondent that referenced the Disputed Domain Name and National Arbitration Forum’s file number for this proceeding, but it did not include any substantive Response.
On
Because the Respondent defaulted, the
Administrative Panel (the “Panel”) asked NAF to provide it with information
concerning the methods by which the Commencement Notification was sent in order
to satisfy itself that Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") was satisfied, along with
basic principles of due process. See Kidman v. Zuccarini, D2000-1415
(WIPO Jan. 23, 2001). In pulling
together the necessary information for the Panel, NAF realized that,
inadvertently, the Commencement Notification was not sent to the Respondent’s administrative
contact. In addition, the Panel noted
that the mailed copy of the Commencement Notification included the designation
“TR” (as shown in the WHOIS information) instead of the full word “Turkey” (as
listed in the Complaint); that because the mailed version was sent by regular
mail, without any return receipt or tracking mechanism, the Panel was unable to
satisfy itself that the mailed copy was actually delivered; and that the e-mailed
copy of the Commencement Notification was not sent to all the e-mail addresses
listed in the “Contact” link of home page to which the Domain Name
resolved. Accordingly, NAF recommended,
and the Panel agreed, that the Commencement Notification should be resent to
all known e-mail, fax and postal addresses for Respondent, including the
technical, billing, and administrative contacts.
NAF re-notified the case on
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <atriummed.net> domain name is confusingly similar to Complainant’s ATRIUM mark.
2. Respondent does not have any rights or legitimate interests in the <atriummed.net> domain name.
3. Respondent registered and used the <atriummed.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant relies on the following trademarks: US Trademark Registration Number 2,629,732, a
word mark for the word ATRIUM, registered October 8, 2002, first used November
1983; US Trademark Registration Number 2,986,775, including the word ATRIUM and
a design, registered August 23, 2005, first used December 1999; and US Trademark
Registration Number 3,098,937, including the word ATRIUM and a design, registered
May 30, 2006, first used September 2003.
The above trademarks are used in conjunction with medical devices,
namely thoracic drainage collection and autotransfusion devices and tubing
apparatus; anticoagulant solutions; thoracic and mediastinal catheters; blood
bags; IV pole attachments for chest drains; vascular grafts; vascular graft
tunnelers; tips and extension rods, and graft insertion devices; surgical mesh;
facial prosthetic implants.
Atrium Medical began using the trademark ATRIUM in commerce
in 1983, and has built significant goodwill in the 25 years since that mark was
first used. Atrium Medical has provided their products in
According to a WHOIS search, Respondent’s website began
operation in 2005. Respondent’s website
appears in English and Turkish, and Respondent lists a Turkish address. Respondent’s use of the domain name <atriummed.net> began long after
Atrium Medical began selling medical products in
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.
Complainant has rights
in the ATRIUM mark through several registrations of the mark with the United
States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,629,732 issued
The <atriummed.net> domain name is confusingly similar to Complainant’s ATRIUM mark under Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s mark in its entirety and adds the term “med,” presumably short for “medical,” which is descriptive of Complainant’s goods, as well as the generic top-level domain “.net.” These modifications to Complainant’s mark do not sufficiently distinguish the disputed domain name for the purposes of Policy ¶ 4(a)(i). See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant
has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The WHOIS information for the <atriummed.net> domain name
identifies Respondent as “Emin Keklik,” and Respondent is not authorized to use
Complainant’s ATRIUM mark. Respondent is
not known by the disputed domain name. See Instron
Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometers.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the
registrant of the disputed domain name and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute); see also St. Lawrence Univ. v.
Nextnet Tech, FA
881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights
or legitimate interests in a disputed domain name where there is no evidence in
the record indicating that the respondent is commonly known by the disputed
domain name).
Respondent is using the <atriummed.net>
domain name to advertise and sell medical products in direct competition with
those offered by Complainant under its mark.
Such use is neither a bona fide
offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum
The Panel finds that Complainant
has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the disputed
domain name to sell medical products in direct competition with Complainant
constitutes a disruption of Complainant’s business, and is evidence of bad
faith registration and use under Policy ¶ 4(b)(iii). See
Respondent is commercially
benefiting from its use of the <atriummed.net>
domain name through its selling of medical products, and Respondent’s disputed
domain name and resulting website are capable of creating a likelihood of
confusion as to Complainant’s source, sponsorship, affiliation or endorsement
with the disputed domain name and corresponding website. This constitutes bad faith registration and
use under Policy ¶ 4(b)(iv). See Velv,
LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that
the respondent’s use of the <arizonashuttle.net> domain name, which
contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic
to Respondent’s website offering competing travel services violated Policy ¶
4(b)(iv)); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”).
The Panel finds that Complainant
has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <atriummed.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq. (Chair)
Hon. Robert F. Pfeuffer, (Ret.)
David H. Bernstein, Esq.
Dated:
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