Dia-Care, Inc. v. Calvin Chang
Claim Number: FA0806001212888
Complainant is Dia-Care, Inc. (“Complainant”), represented by Matthew H. Swyers, of The Trademark Company, PLLC, Virginia,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <diacareusa.com>, registered with Brandon Gray Internet Services, Inc. d/b/a Namejuice.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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 30, 2008.
On July 9, 2008, Brandon Gray Internet Services, Inc. d/b/a Namejuice.com confirmed by e-mail to the National Arbitration Forum that the <diacareusa.com> domain name is registered with Brandon Gray Internet Services, Inc. d/b/a Namejuice.com and that the Respondent is the current registrant of the name. Brandon Gray Internet Services, Inc. d/b/a Namejuice.com has verified that Respondent is bound by the Brandon Gray Internet Services, Inc. d/b/a Namejuice.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 July 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 31, 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.
A timely Response was received and determined to be complete on July 30, 2008.
On August 4, 2008, Complainant filed an Additional Submission with the Forum that was timely and in compliance with Supplemental Rule #7.
On August 6, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant makes the following assertions:
1. The <diacareusa.com> domain name is identical or at least confusingly similar to Complainant's mark.
2. Respondent has no rights or legitimate interest in the <diacareusa.com> domain name.
3. Respondent has registered and used the <diacareusa.com> domain name in bad faith.
Respondent requests the Panel to deny Complainant’s request on the grounds that the <diacareusa.com> domain name is not confusingly similar, that he has a legitimate interest in the domain name and that Respondent did not act in bad faith.
On or about January 1, 1994 Complainant began use of the marks DIA CARE and DIA CARE YOUR NATIONAL DIABETIC SUPPLIER and design in commerce in connection with the sale of diabetic supplies.
On August 30, 2004 Complainant applied to register both marks with the United States Patent and Trademark Office (hereinafter "USPTO").
The Complaint is based upon Complainant's ownership of United States Trademark Registration. No. 3,004,419 for the mark DIA-CARE and United States Trademark Registration No. 3,106,037 for the mark DIA CARE YOUR NATIONAL DIABETIC SUPPLIER and design.
On or about August 27, 2004 Complainant registered the domain name <diacarerx.com>.
On October 24, 2005 Complainant launched its web site located at <diacarerx.com>.
Respondent registered the Domain Name on March 20, 2007, i.e., more than thirteen years after Complainant began to use of its marks and more than seventeen months after Complainant's first mark was registered.
Complainant argues that the <diacareusa.com> domain name creates "initial interest confusion" which occurs when Internet users enter the trademark or service mark as the domain name expecting to arrive at owner of that trademark or service mark's website.
Complainant argues that Respondent registered and is using the Domain Name for the purpose of promoting confusion among users looking for Complainant's services offered in connection with its marks and to draw attention, by misdirecting traffic to its website, to its services offered in competition with those services provided by Complainant.
Complainant sent default notices on November 5, 2007 and December 5, 2007.
Respondent failed to respond.
Respondent maintains that the Complainant's marks are highly descriptive of its services relating to medical supplies for diabetes.
Respondent's use of the <diacareusa.com> domain name is limited exclusively to footwear and footwear inserts. The Complainant's registered service marks are related to medical supplies.
that he used the <diacareusa.com> domain name in connection with a bona fide offering of goods. In particular, Respondent argues hat he does
business as Diacare Corporation which is a lawful corporation organized under
the laws of the State of
Respondent produced Respondent's Articles of Incorporation dated October 26, 2005.
Respondent also argues that Complainant's registered marks describe a feature, purpose or use of the relevant services concerning diabetic care medical supplies (15 U.S.C. 1052(e)(1)) and must be regarded as descriptive rather than inherently distinctive. Because of the descriptive character of its registered marks, the scope of protection to which Complainant is entitled should be limited. Complainant should not be given an exclusive right in respect to all products to be used by diabetics, especially in the present case where the Respondent's goods are limited entirely to footwear and inserts.
Respondent also argues that parties' goods are not closely related.
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.
Complainant submitted evidence to the Panel that it registered its DIA-CARE mark with the United States Patent and Trademark Office (“USPTO”) on October 4, 2005 (Reg. No. 3,004,419).
The Panel finds Complainant’s registration of its DIA-CARE mark with the USPTO adequately establishes Complainant’s rights in its mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008) (“Complainant asserts rights in the mark through its registration of the mark with the United States Patent and Trademark Office. This registration sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
domain name incorporates
Complainant’s DIA-CARE mark with the following modifications: the deletion of a
hyphen; the addition of “
The Panel finds these alterations do not detract from the dominant
portion of the <diacareusa.com> domain
name, which is Complainant’s mark. Thus,
the Panel finds Respondent’s <diacareusa.com>
domain name is confusingly similar to Complainant’s mark pursuant to Policy
¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119
(WIPO May 18, 2000) (holding “that the use or absence of punctuation marks,
such as hyphens, does not alter the fact that a name is identical to a
mark"); see also InfoSpace, Inc. v. domains
While Respondent contends the <diacareusa.com> domain name is comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the <diacareusa.com> domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
As to Respondent’s arguments related to the descriptive nature of the trademarks of Complainant and the alleged absence of a close relation between the goods and services of the parties, the Panel finds that it has no power to examine these arguments nor to make a ruling thereupon. Such debate cannot be the subject of the present procedure and can only be conducted before the competent jurisdiction.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the <diacareusa.com> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show it does have rights or legitimate interests in the <diacareusa.com> domain name pursuant to Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends Respondent is not commonly known by the <diacareusa.com> domain name. The WHOIS information reflects Respondent as “Calvin Chang.”
Complainant has not authorized Respondent to use its mark in any manner.
Therefore, the Panel finds Respondent is not commonly known by the <diacareusa.com> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant contends Respondent is using the <diacareusa.com> domain name to offer products in competition with Complainant’s diabetes care business. Complainant states Respondent’s <diacareusa.com> domain name resolves to a website that offers products for individuals with diabetes. Although Respondent contends it markets footwear, Complainant contends in its Additional Submission that Respondent offers footwear for diabetics on the website resolving from the <diacareusa.com> domain name.
The Panel finds Respondent’s use of the <diacareusa.com> domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the <diacareusa.com> domain name pursuant to Policy ¶ 4(c)(iii). See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant contends Respondent
is using the <diacareusa.com> domain name to operate a website that
offers products in competition with Complainant’s business. The Panel finds Respondent’s actions evidence
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See
S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
July 18, 2000) (finding that the respondent registered the domain name in
question to disrupt the business of the complainant, a competitor of the
respondent); see also
Additionally, Complainant asserts Respondent is using the confusingly similar <diacareusa.com> domain name to market competing products. Complainant alleges this is an attempt by Respondent to profit from the goodwill Complainant has established in its DIA-CARE mark. The Panel finds Respondent’s actions are evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <diacareusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: August 18, 2008
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