Biofilm Innovations Group LLC v. Terry Cavanaugh c/o Yourlink Web Services Inc. a/k/a Bill Casey
Claim Number: FA0811001232797
Complainant is Biofilm Innovations Group LLC (“Complainant”), represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P., Washington, D.C., USA. Respondent is Terry Cavanaugh c/o Yourlink Web Services Inc. a/k/a Bill Casey (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <exxcloralblue.com>, registered with Network Solutions, Inc.; and <exxcloralblue.net>, <exxcloralblue.org>, <exxcloralblue.biz>, <exxceloralblue.com>, <exxcelloralblue.com>, <exxclloralblue.com>, <exxcl.com> and <exxcll.com>, registered with eNom, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 7, 2008.
On November 6, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <exxcloralblue.com domain name is registered with Network Solutions, Inc., and that Respondent is the current registrant of the name. Network Solutions, Inc., has verified that Respondent is bound by the Network Solutions, 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 November 6, 2008, eNom, Inc confirmed by e-mail to the National Arbitration Forum that the <exxcloralblue.net>, <exxcloralblue.org>, <exxcloralblue.biz>, <exxceloralblue.com>, <exxcelloralblue.com>, <exxclloralblue.com>, <exxcl.com> and <exxcll.com> domain names are registered with eNom, Inc., and that Respondent is the current registrant of the names. eNom, Inc has verified that Respondent is bound by the eNom, Inc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On November 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 1, 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 postmaster@exxcloralblue.com, postmaster@exxcloralblue.net, postmaster@exxcloralblue.org, postmaster@exxcloralblue.biz, postmaster@exxceloralblue.com, postmaster@exxcelloralblue.com, postmaster@exxclloralblue.com, postmaster@exxcl.com and postmaster@exxcll.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 5, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <exxcloralblue.com>, <exxcloralblue.net>, <exxcloralblue.org>, <exxcloralblue.biz>, <exxceloralblue.com>, <exxcelloralblue.com>, <exxclloralblue.com>, <exxcl.com> and <exxcll.com> domain names are confusingly similar to Complainant’s EXXCL ORAL BLUE mark.
2. Respondent does not have any rights or legitimate interests in the <exxcloralblue.com>, <exxcloralblue.net>, <exxcloralblue.org>, <exxcloralblue.biz>, <exxceloralblue.com>, <exxcelloralblue.com>, <exxclloralblue.com>, <exxcl.com> and <exxcll.com> domain names.
3. Respondent registered and used the <exxcloralblue.com>, <exxcloralblue.net>, <exxcloralblue.org>, <exxcloralblue.biz>, <exxceloralblue.com>, <exxcelloralblue.com>, <exxclloralblue.com>, <exxcl.com> and <exxcll.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Biofilm Innovations Group LLC, was founded in 1997 and manufactures, markets, and sells professional oral-care products marketed to dentists and periodontists. Complainant has registered the EXXCL ORAL BLUE mark (Reg. No. 2,409,335 issued November 28, 2000) with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the disputed domain names on the following
dates: <exxcloralblue.com> (March
21, 20011); <exxcloralblue.net> (February 11, 2006);
<exxcloralblue.org>(February 11, 2006); <exxcloralblue.biz> (February
11, 2006); <exxceloralblue.com> (March 27, 2006);
<exxcelloralblue.com> (March 27, 2006); <exxclloralblue.com>
(March 27, 2006); <exxcl.com> (March 27, 2006); and <exxcll.com>
(March 27, 2006).
The <exxcloralblue.com>, <exxcloralblue.net>, <exxcloralblue.org>, <exxcloralblue.biz>, <exxceloralblue.com>, <exxcelloralblue.com> and <exxclloralblue.com> domain names resolve to websites that advertise the services of Respondent’s dentistry services, and purport to sell Complainant’s products. The <exxcl.com> and <exxcll.com> domain names resolve to web pages with minimal unrelated content. Respondent is a former customer of Complainant and also offered to sell the <exxcloralblue.com> and <exxclloralblue.com> domain names for an amount between US $8,000 to $25,000 to Complainant upon Complainant’s request that Respondent transfer these two disputed domain names.
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.
The Panel finds that Complainant has sufficiently established rights in the EXXCL ORAL BLUE mark under Policy ¶ 4(a)(i) because it holds a registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <exxcloralblue.com>, <exxcloralblue.net>,
<exxcloralblue.org> and <exxcloralblue.biz> contain
Complainant’s mark in its entirety followed by the generic top-level domain
(“gTLD”) “.com,” “.net,” “.org,” or “.biz.” However, the inclusion of a gTLD is
irrelevant to a Policy ¶ 4(a)(i) analysis. Accordingly, the Panel finds the <exxcloralblue.com>,
<exxcloralblue.net>, <exxcloralblue.org>,
<exxcloralblue.biz> domain names to be identical to Complainant’s
EXXCL ORAL BLUE mark pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd.
v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the
<reebok.net> domain name was identical to the complainant’s REEBOK mark
because it fully incorporates the mark and merely adds a generic top-level
domain); see also Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to the complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant).
Respondent’s <exxceloralblue.com>,
<exxcelloralblue.com>, <exxclloralblue.com>,
<exxcl.com> and <exxcll.com> domain names contain
either a portion of Complainant’s EXXCL ORAL BLUE mark or are a misspellings or
Complainant’s mark. The Panel finds that
these disputed domain names are confusingly similar under Policy ¶ 4(a)(i)
because they contain at least a substantial portion of Complainant’s mark even
though some are misspellings of Complainant’s mark. See Down E. Enter. Inc. v. Countywide Commc’ns,
FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name
<downeastmagazine.com> confusingly similar to the complainant’s common
law mark DOWN EAST, THE MAGAZINE OF MAINE); see
also Dow Jones & Co., Inc. v.
Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the
deliberate introduction of errors or changes, such as the addition of a fourth
“w” or the omission of periods or other such “generic” typos do not change
respondent’s infringement on a core trademark held by the complainant); see also WestJet Air Ctr., Inc. v. W. Jets
LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the
<westjets.com> domain name is confusingly similar to the complainant’s
mark, where the complainant holds the WEST JET AIR CENTER mark).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain names. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also 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 Policy ¶ 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
The Panel notes that the registrant for the disputed domain names is listed as “Terry Cavanaugh c/o Yourlink Web Services Inc. a/k/a Bill Casey.” Without any evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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’s <exxcloralblue.com>, <exxcloralblue.net>, <exxcloralblue.org>, <exxcloralblue.biz>, <exxceloralblue.com>, <exxcelloralblue.com> and <exxclloralblue.com> domain names resolve to the same website offering dentistry services and displaying Complainant’s mark while reselling Complainant’s products without authorization or permission. The Panel finds that this is a diversion of Internet users for commercial purposes, which is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
Respondent’s <exxcl.com> and <exxcll.com> domain names resolve to unrelated
web pages with very little content. The
Panel finds that such inactive holding of the disputed domain names fails to be
a bona
fide offering of goods or
services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See TMP
Int’l, Inc. v. Baker Enters., FA 204112
(Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's
[inactive] holding of the domain name does not establish rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).”); see
also Am. Home Prods. Corp. v.
Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or
legitimate interests in the domain name <solgarvitamins.com> where the
respondent merely inactively held the domain name).
The Panel finds that Respondent’s offer to sell the <exxcloralblue.com> and <exxclloralblue.com> domain names for an amount between US $8,000 to $25,000 to Complainant is additional evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Respondent offered to sell the <exxcloralblue.com> and <exxclloralblue.com> domain
names for an amount between US $8,000 to $25,000 to Complainant. The Panel finds that such amounts, well in excess
of registration costs, demonstrates Respondent’s primary intention of selling
the disputed domain names. Therefore,
the Panel finds that Respondent engaged in bad faith registration and use of
these disputed domain names under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under Policy ¶ 4(b)(i)); see also Banca
Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000)
(finding bad faith where the respondent offered the domain names for sale).
The Panel finds that Respondent’s use of the confusingly
similar disputed <exxcloralblue.com>, <exxcloralblue.net>, <exxcloralblue.org>,
<exxcloralblue.biz>, <exxceloralblue.com>,
<exxcelloralblue.com> and <exxclloralblue.com>
domain names to provide the unauthorized resale of Complainant’s
products constitutes an intentional disruption of Complainant’s business. Therefore, the Panel finds that Respondent
engaged in bad faith registration and use under Policy ¶ 4(b)(iii) with regard
to these disputed domain names. See G.D.
Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb.
Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell
Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Wall v. Silva, FA 105899 (Nat. Arb. Forum Apr. 29, 2002)
(finding that despite respondent’s claim that it used
the <josephinewall.com> domain name, which was identical to complainant’s
JOSEPHINE WALL mark, to help complainant become popular in the United States,
the Panel found that the respondent’s use of the domain name to sell the
complainant’s artwork in the United States constituted disruption pursuant to
Policy ¶ 4(b)(iii)).
Moreover, the Panel finds that
Respondent intentionally created a likelihood of confusion with regards to
Respondent’s confusingly similar <exxcloralblue.com>, <exxcloralblue.net>,
<exxcloralblue.org>, <exxcloralblue.biz>,
<exxceloralblue.com>, <exxcelloralblue.com> and <exxclloralblue.com>
domain names for commercial gain, given the unauthorized resale of
Complainant’s products. Therefore, the
Panel finds that Respondent engaged in bad faith registration and use under
Policy ¶ 4(b)(iv) with regard to these disputed domain names. See
World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306
(WIPO Jan. 24, 2001) (concluding that the respondent registered and used the
<wwfauction.com> domain name in bad faith because the name resolved to a
commercial website that the complainant’s customers were likely to confuse with
the source of the complainant’s products, especially because of the
respondent’s prominent use of the complainant’s logo on the site); see also Fossil Inc. v. NAS, FA 92525
(Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith
by registering the <fossilwatch.com> domain name and using it to sell
various watch brands where the respondent was not authorized to sell the
complainant’s goods).
Respondent’s <exxcl.com> and <exxcll.com> domain names resolve to unrelated
web pages with very little content. The
Panel finds that such failure to make an active use of the disputed domain
names constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI
S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding
that the respondent’s failure to make an active of the domain name satisfies
the requirement of ¶ 4(a)(iii) of the Policy); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding
that the respondent’s failure to develop its website in a two-year period
raises the inference of registration in bad faith).
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 <exxcloralblue.com>, <exxcloralblue.net>, <exxcloralblue.org>, <exxcloralblue.biz>, <exxceloralblue.com>, <exxcelloralblue.com>, <exxclloralblue.com> <exxcl.com>, and <exxcll.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 16, 2008
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