Caris Ltd. v.
Claim Number: FA0811001234694
PARTIES
Complainant is Caris Ltd (“Complainant”), represented by Gene
K. Park, of Morgan, Lewis & Bockius LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carishealth.com>, registered with Compana, LLC.
PANEL
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 18, 2008; the
National Arbitration Forum received a hard copy of the Complaint on November 19, 2008.
On November 20, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <carishealth.com> domain name is
registered with Compana, LLC and that
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 24, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 15, 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@carishealth.com by e-mail.
A timely Response was received and determined to be complete on December 15, 2008.
On December 26, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James A. Carmody, Esq., as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’ <carishealth.com> domain name, the domain name at issue, is confusingly similar to Complainant’s CARIS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent makes the following assertions:
1. Respondent denies that the domain name is identical or confusingly similar to a mark in which Complainant has exclusive rights and asserts that the domain name at issue is composed of generic terms.
2. Respondent claims rights and legitimate interests in the domain name at issue.
3. Respondent denies that it has registered or used the domain name at issue in bad faith.
FINDINGS
Complainant has been in the health and health
care business since 2005 and has established rights in the CARIS design mark
(Reg. No. 3,339,902 issued November 20, 2007, filed August 3, 2006) for
purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO, and that such rights date back to the filing date. Complainant’s claimed first use and first use
in commerce is March 1, 2005 for purposes of the application but there is no
allegation or proof of common law trademark rights in the CARIS mark or the
design registered prior to application for registration with the USPTO. There is no claim that Respondent was aware
of any rights of Complainant in the CARIS mark prior to registration of <carishealth.com>. Complainant asserts that it did not license or
otherwise authorize Respondent to use the CARIS mark and that Respondent is not
commonly known by the domain name at issue.
Finally, Complainant alleges that Respondent registered and is using the
<carishealth.com> domain in bad
faith and is using the website associated to the domain to refer surfers to
providers of goods and services which are competitive to Complainant.
Respondent defends on the
grounds that CARIS is a very common name with many uses by others than
Complainant according to a Google search.
Further, Respondent notes that it registered the <carishealth.com> domain on June 5, 2006, prior to the
application of Complainant to register the CARIS design with the USPTO. Since there is no allegation or proof that
Complainant had common law or other rights in the CARIS mark prior to June 5,
2008, Respondent asserts that Complainant has failed to make its case under the
first element of the Policy and has certainly provided no proof of bad faith
registration or use of the domain name at issue.
DISCUSSION
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.
It is not necessary for the Panel to make findings on the first two elements of the Policy since Complaint has clearly failed to show registration or use in bad faith on the part of the Respondent. In light of the fact that Complainant does not even claim common law trademark rights in CLARIS prior to the registration of the domain name at issue, there is simply a lack of proof on this third element of the Policy. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Since Complainant has not established common law rights in the CARIS mark prior to the registration date of the disputed domain name, Respondent did not register and use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant); see also TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Nat. Arb. Forum Mar. 28, 2005) (because the respondent’s domain name registration predated the complainant’s trademark filing date, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name”).
DECISION
The Complainant having failed to established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be DENIED.
James A. Carmody, Esq., Panelist
Dated: January 6, 2009
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