Sybron Dental Specialties, Inc. v.
Claim Number: FA0805001195262
Complainant is Sybron Dental Specialties, Inc. (“Complainant”), represented by Kathryn
E. Smith, of Wood, Herron & Evans LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sybrondentalspecialties.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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
3, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 23, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <sybrondentalspecialties.com> domain name is identical to Complainant’s SYBRON DENTAL SPECIALTIES mark.
2. Respondent does not have any rights or legitimate interests in the <sybrondentalspecialties.com> domain name.
3. Respondent registered and used the <sybrondentalspecialties.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sybron Dental Specialties, Inc., produces and markets medical and dental products
Respondent registered the <sybrondentalspecialties.com>
domain name on
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 not asserted any registration or application
for trademark status with the United States Patent and Trademark Office
(“USPTO”) or other such governmental entity.
However, Complainant need not assert registration of the SYBRON DENTAL
SPECIALTIES mark in order to achieve rights in the mark and corresponding UDRP
standing pursuant to Policy ¶ 4(a)(i). Complainant may assert common law rights in
furtherance of that end under Policy ¶ 4(a)(i). See
Complainant has asserted use of the SYBRON DENTAL SPECIALTIES mark and <sybrondental.com> domain name for over ten years and has alleged that through its national and international business it has established common law trademark rights in the SYBRON DENTAL SPECIALTIES mark. Based on the uncontradicted evidence, the Panel finds that Complainant has common law rights in the mark under Policy ¶ 4(a)(i) See National Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
domain name merely copies Complainant’s exact mark, and adds the generic
top-level domain (“gTLD”) “.com.”
Because gTLD additions are irrelevant under Policy ¶ 4(a)(i), the Panel finds that the disputed domain name is
identical to Complainant’s mark under Policy ¶ 4(a)(i). Blue Sky Software
Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the <sybrondentalspecialties.com> domain name pursuant to Policy ¶ 4(a)(i). The Panel finds that Complainant has successfully alleged a prima facie case supporting its assertions, and therefore Respondent receives the burden of proving its rights or legitimate interests. 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”).
Respondent cannot point to any evidence within the record, including
the WHOIS domain name registration information, to suggest that it is commonly
known by the <sybrondentalspecialties.com>
domain name. In fact, the WHOIS
information lists Respondent as “Belize Domain
WHOIS Service Lt,” which bears no resemblance to the disputed domain name. Moreover, there is no asserted license by
which Respondent may use Complainant’s mark in any fashion. Based on the above, the Panel finds that Respondent
lacks rights and legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb.
Respondent’s <sybrondentalspecialties.com> domain name resolves to a website that features third-party advertisements and links that compete with Complainant’s operations. Respondent presumably benefits monetarily from these advertisement placements through the receipt of referral fees. The Panel therefore finds that Respondent has failed to create 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. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
domain name diverts Internet users to a website that offers third-party
advertisements competitive with Complainant.
Internet users seeking Complainant could likely come across the disputed
domain name and be routed to Respondent’s own website. Thus, the Panel finds that Respondent has
engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Travant
Solutions, Inc. v. Cole, FA 203177 (Nat.
Arb. Forum Dec. 6, 2003) (“Respondent registered
and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because
it is operating on behalf of a competitor of Complainant . . .”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Internet users that seek Complainant’s products could likely find the disputed domain name and corresponding website, which displays competitive links as to Complainant as well as Complainant’s mark. Presumably, Respondent then benefits through the receipt of referral fees for these advertisements. Respondent has therefore engaged in bad faith registration and use under Policy ¶ 4(b)(iv) as Respondent has created a likelihood of confusion as to Complainant’s affiliation and endorsement of the disputed domain name and corresponding website. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); 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 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 <sybrondentalspecialties.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: July 11, 2008
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