Budi Purnomo Hadisurjo d/b/a Optik Melawai and Apotik Melawai v. Rudhy Buntaram
Claim Number: FA0809001223813
Complainant is Budi Purnomo Hadisurjo d/b/a Optik
Melawai and Apotik Melawai (“Complainant”), represented by Laura
R. Wanek, of Greer, Burns & Crain, Ltd.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <apotikmelawai.com>, <apotik-melawai.com>, <opticmelawai.com>, and <optikmelawai.com>, registered with Register.com, 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. Carolyn Marks Johnson, Hon. R. Glen Ayres and Debrett Lyons (chair) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 11, 2008.
On September 10, 2008, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <apotikmelawai.com>, <apotik-melawai.com>, <opticmelawai.com>, and <optikmelawai.com> domain names are registered with Register.com, Inc. and that Respondent is the current registrant of the names. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 September 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 7, 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, email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
A timely Response was received and determined to be complete on October 7, 2008.
On October 17, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson, Hon. R. Glen Ayres and Debrett Lyons as Panelists.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant asserts trademark rights and alleges that the disputed domain names are identical / confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
Respondent does not challenge Complainant’s trademark rights, nor the claim of identity / confusing similarity to the disputed domain names. Respondent denies it acted in bad faith and relies on arguments which at best might show it to have a legitimate interest in the domain names and which are addressed in the Discussion which follows.
Complainant has two relevant businesses in
Both OPTIK MELAWAI and APOTIK MELAWAI have
been registered as trademarks in
Respondent registered the domain names, <opticmelawai.com> and <optikmelawai.com>, in September 1999 and the <apotikmelawai.com> and <apotik-melawai.com> domain names in March 2000.
The domain names do not resolve to active websites. The <opticmelawai.com> domain name has no web resolution; the remaining three disputed domain names resolve to holding pages that state that a website is either “coming soon” or “under construction.”
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs the 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 Complainant must prove each of the following three elements in relation to each domain name in order to justify transfer:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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 trademarks acquired through registration, if not also through use[ii]. Moreover, applying the principles developed and now broadly accepted under the Policy, the disputed domain names are either identical, or confusingly similar to, the relevant trademark[iii]. For the purposes of comparison, former decisions have held that the generic top-level domain (gTLD) can be disregarded as trivial and have held the elimination or addition of hyphens to be inconsequential. Additionally, obvious phonetically identical substitutions, such as the replacement of the letter “k” in Complainant’s trademark by a “c” in the disputed domain, do not avoid a finding of confusing similarity.
The Panel has no hesitation in finding that Complainant satisfies the first element of the Policy in respect of all four disputed domain names.
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden to establish that Respondent has no rights or legitimate interests in the domain names. Nevertheless, it is well settled that Complainant need only make out a prima facie case, after which the onus shifts to Respondent to demonstrate its rights or legitimate interests[iv].
Paragraph 4(c) of the Policy states that any of the following circumstances which if found by the Panel to be proved based on its evaluation of the evidence, demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The WHOIS data does not support any argument that Respondent might be commonly known by the domain name[v]. Complainant has stated there to be no relationship between the parties. Respondent has made no comment on those matters and the Panel is entitled to accept all reasonable allegations in the Complaint as true unless the evidence is clearly contradictory[vi].
None of the domain names resolve to an active website. Respondent has held the domain names since 2000 or earlier and so the Panel finds that Respondent is not using the domain names and infers that it has made no preparations to use them in connection with a bona fide offering of goods or services[vii].
Complainant has established its trademark
rights. Respondent submits that those
rights are territorially limited to
The Panel finds that Respondent has no rights or legitimate interests in the domain names and so Complainant has established the second limb of the Policy.
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out‑of‑pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on‑line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
What is noteworthy about paragraphs 4(b)(i)-(iv) is that they are cases of both registration and use in bad faith. Paragraph 4(b) is not exhaustive and other instances of bad faith might be in evidence but, in those instances, the Panel must be able to find both bad faith registration and bad faith use. It is therefore logical to first test the facts against the Policy itself.
Complainant’s principal allegations are that Respondent’s conduct falls under paragraphs 4(b)(ii) and (iii).
So far as paragraph 4(b)(ii) is concerned, Complainant’s uncontradicted evidence is that it has used the trademarks APOTIK MELAWAI since 1971 and OPTIK MELAWAI since 1981. The disputed domain names <optikmelawai.com> and <opticmelawai.com> were registered in 1999 and the domain names <apotikmelawai.com> and <apotik-melawai.com> were registered in 2000. Paragraph 4(b)(ii) has two aspects – (a) Respondent must have registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, (b) Respondent must have engaged in a pattern of that conduct. Complainant has an online presence at <melawai.com>. Complainant’s evidence shows that its businesses are known collectively as The Melawai Group. Public information available to the Panel shows that the domain name <melawai.com> was registered in August 1997, before Respondent registered any of the disputed domain names. The Panel concludes that although <melawai.com> might have been registered for Complainant’s flagship website, in all probability Complainant would have desired to register <apotikmelawai.com> and <optikmelawai.com> had they remained available for registration. Likewise, <opticmelawai.com> and <apotik-melawai.com> could have presented themselves as acceptable alternatives. The Panel can reasonably infer that Respondent registered the domain names in order to prevent Complainant from doing so. Moreover, former decisions under the Policy have held that a handful of competitive registrations constitute a pattern of abusive behaviour[viii].
Should there be any doubt surrounding
Respondent’s motives, Complainant’s evidence shows that in 1996 Respondent
registered the domain name <optikseis.com>. Optic Seis is the name of another large
optical retailer in
The Panel accordingly finds bad faith use under paragraphs 4(b)(ii) and (iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <apotikmelawai.com>, <apotik-melawai.com>, <opticmelawai.com>, and <optikmelawai.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G Lyons
Hon. Carolyn Marks Johnson (Ret.)
Hon. R. Glen Ayres
Dated: October 28, 2008
[i] Complainant asserts rights in the APOTIK MELAWAI mark through registration of the mark with the Indonesian Patent and Trademark Office (“IPTO”) (Reg. No. 274,447 originally issued April 29, 1992; renewed as Reg. No. 514,268 issued August 14, 2002). Likewise, Complainant asserts rights to the OPTIK MELAWAI mark through its corresponding IPTO trademark registration (Reg. No. 274,448 originally issued April 29, 1992; renewed as Reg. No. 514,269 issued August 14, 2002). The Panel may find that these trademark registrations adequately confer rights in the APOTIK MELAWAI and OPTIK MELAWAI marks to Complainant pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Group Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Mason Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel also concludes that Complainant’s trademark registration of its mark provides ample basis to conclude that it has rights in the mark.”).
[ii] See State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)). The principle applies to registrations with other national regulatory bodies.
[iii] See 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); see also Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO July
3, 2002) (finding the <phizer.com> domain name phonetically
equivalent and confusingly similar to the PFIZER mark). See Diesel
v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding
<vindiesel.com> to be identical to complainant’s mark because “simply
eliminat[ing] the space between terms and add[ing] the generic top-level domain
(“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name
from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant
for purposes of the Policy); see also Bond
& Co. Jewelers, Inc. v.
[iv] See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624; see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
[v] See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
[vi] 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).
[vii] See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the passive holding of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out); see also Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction” page hosted at the disputed domain name did not support a claim of rights or legitimate interests under Policy ¶ 4(a)(ii)).
[viii] See EPA
European Pressphoto Agency B.V. v.
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