Claim Number: FA0804001177495
Complainant is American College of Cardiology
represented by Lisa A. Dunner, of Dunner Law,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cardiosource.org>, registered with TierraNet Inc. d/b/a DomainDiscover.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 14, 2008.
On April 23, 2008, TierraNet Inc. d/b/a DomainDiscover confirmed by e-mail to the National Arbitration Forum that the <cardiosource.org> domain name is registered with TierraNet Inc. d/b/a DomainDiscover and that the Respondent is the current registrant of the name. TierraNet Inc. d/b/a DomainDiscover has verified that Respondent is bound by the TierraNet Inc. d/b/a DomainDiscover 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 April 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 19, 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 email@example.com by e-mail.
A Response was received by e-mail on May 21, 2008. The Response was deemed deficient pursuant to Supplemental Rule 5 because a hard copy was not received prior to the Response deadline. However, the Panel has decided to consider Respondent’s submission notwithstanding that it was filed two days late. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist). The Panel decides to accept the Response. See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see also Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”).
On May 28, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
Complainant requests that the domain name be transferred from Respondent to Complainant.
The trademark CARDIOSOURCE, is registered under a valid and subsisting registration with the United States Patent and Trademark Office. Registration issued on January 13, 2004 to Elsevier Inc., Complainant’s business partner, and was assigned nunc pro tunc to Complainant on April 28, 2005.
The CARDIOSOURCE mark has been adopted and continually used in commerce by Complainant and its predecessors in interest since at least as early as September 1997 in connection with “computer services, namely providing computer databases featuring journals, reference materials, news and other information in the fields of medicine and healthcare via a global computer network.”
Complainant is the
educational foundation arm of the
As the leader in its field, Complainant prominently uses the well-known CARDIOSOURCE mark in worldwide online and print advertising to its international membership. Under the CARDIOSOURCE mark, Complainant provides health information and educational products geared towards the field of cardiology.
Respondent’s registered domain is identical or confusingly similar to Complainant’s mark CARDIOSOURCE. The addition of “www” and “.org” to Respondent’s domain is purely informational and does nothing to distinguish it from Complainant’s mark. Any contemplated use of the domain is likely to misleadingly direct web users trying to find and use Complainant’s well-known CARDIOSOURCE portal on the internet.
Respondent’s use of the domain and Complainant’s mark for commercial purposes by linking and luring customers to the site of his place of employment, where he offers and provides fee-based medical services, is not a legitimate or fair use of the domain. Respondent has never used the domain in connection with a bona fide offering of goods or services.
Respondent, as a paying member of Complainant during the years 1998 to 2006, registered for at least one of Complainant’s conferences and purchased a variety of Complainant’s educational products. As a member, Respondent was exposed to and likely utilized Complainant’s CARDIOSOURCE portal and services. Therefore, the domain was registered in and is being used in bad faith.
Respondent has used his time for many years to build up Cardiolink and obtaining domains that will help Cardiolink in the future. His home page states “Cardiosource Consultants” and that is what his business is. It will be designed for people to access the website that will offer medical services. Respondent only obtained domain names that would benefit his company for future use and is open to discussion with anyone that would like to obtain his domain rights.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain
(3) the domain name has been registered and is being used in bad faith.
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.
The Panel finds that Complainant has established rights in the mark through registration with the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel also finds that Complainant has established rights in the mark through common law.
The Panel finds that the disputed domain name is identical to Complainant’s CARDIOSOURCE mark. The <cardiosource.org> domain name contains the mark in its entirety, without the space, and with the addition of the generic top-level domain “.org.”
The Panel finds that there is no evidence in the record or in the WHOIS registration information that Respondent is commonly known by the disputed domain name. Therefore, Respondent is not commonly known by the <cardiosource.org> domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001).
Respondent’s use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003).
Respondent’s disputed domain name is likely to cause confusion as to the source,
affiliation, or endorsement of Respondent’s website under Policy ¶
4(b)(iv). The Panel finds bad faith
registration and use. Bank of Am.
The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cardiosource.org> domain name be TRANSFERRED from Respondent to Complainant.
Dated: June 11, 2008
National Arbitration Forum