OraSure
Technologies, Inc. v. Bent Sylvest Larsen
Claim Number: FA0902001248130
PARTIES
Complainant is OraSure Technologies, Inc. (“Complainant”), represented by Paul J. Kennedy and Cara M. Kearney, of Pepper Hamilton, LLP, Pennsylvania, USA. Respondent is Bent Sylvest Larsen (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oraquick.com>, registered with Namescout.com
Co.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 17, 2009; the
National Arbitration Forum received a hard copy of the Complaint on February 18, 2009.
On February 19, 2009, Namescout.com confirmed by e-mail to the
National Arbitration Forum that the <oraquick.com> domain name is registered
with Namescout.com and that the
Respondent is the current registrant of the name. Namescout.com
has verified that Respondent is bound by the Namescout.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 February 19, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 11, 2009 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@oraquick.com by e-mail.
An untimely Response was received and determined to be complete on March 12, 2009.
On March 19, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The <oraquick.com> domain name is identical or confusingly similar to Complainant's mark.
2. Respondent has no
rights or legitimate interest in the <oraquick.com> domain name.
3. Respondent has
registered and used the <oraquick.com> domain name in bad faith.
B. Respondent
Respondent has provided a Response that was deficient because the National Arbitration Forum has determined that a hard copy of the Response was not received before the Response deadline.
FINDINGS
Complainant holds an impressive list of
trademarks, including trademark registrations with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 892,045, issued June 2, 1970) and the Intellectual
Property
The <oraquick.com> domain name registered by Respondent resolves to a parking page.
Respondent has offered to sell the disputed domain
name to Complainant for as much as $4000.
DISCUSSION
Preliminary Issue: Deficient
Response
Respondent has provided a Response that was deficient because the National Arbitration Forum has determined that a hard copy of the Response was not received before the Response deadline.
The Panel decides not to consider
Respondent’s submission.
*
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.
The Panel finds that Complainant has rights in the ORAQUICK
mark through, among others, its trademark registrations with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 892,045, issued June 2, 1970)
and the Intellectual Property
Respondent’s
<oraquick.com> domain name is identical to its ORAQUICK
mark. The <oraquick.com> domain name
differs from Complainant’s mark only in that the generic top-level domain
(“gTLD”) “.com” has been added. The
Panel finds that because all domain names must include a top-level domain, the
addition of a gTLD to a mark does nothing to distinguish a domain name from a
mark. 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 Isleworth Land Co. v. Lost in
Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well
established principle that generic top-level domains are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis.”).
Therefore, the Panel finds that this single
alteration of the ORAQUICK mark does not sufficiently distinguish Respondent’s <oraquick.com> domain name from Complainant’s mark pursuant to Policy ¶
4(a)(i).
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. 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.”).
Respondent is not
commonly known by the <oraquick.com> domain
name, and has never been the owner or licensee of the ORAQUICK mark. The WHOIS record for the disputed domain name
lists Respondent as “Bent
Sylvest Larsen.” The Panel
therefore finds that Respondent is not commonly known by the <oraquick.com> domain name pursuant
to Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
The disputed domain name resolves to a
website that features links to third-party websites providing goods and
services in direct competition with those of Complainant. The Panel finds that this use of the <oraquick.com> domain name to
redirect Internet visitors to competitors of Complainant is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
disputed domain name under Policy ¶ 4(c)(iii).
See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum
Apr. 18, 2007) (holding that the respondent’s use of the contested domain name
to maintain a commercial website with links to the products and services of the
complainant’s competitors did not represent 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 also Bond & Co. Jewelers, Inc. v. Tex.
Int’l Prop. Assocs., FA 937650 (Nat.
Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to
operate a website displaying links to competing goods and services was not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii)).
The Panel finds that Respondent’s offers to sell the <oraquick.com> domain name to Complainant are evidence that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (“Moreover, the Panel interprets Respondent’s offer to sell the domain name registration for $100,000 as evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds that
allowing a domain name to resolve to a parking page does not absolve the owner
of that domain name to escape responsibility for that content, and that
therefore, under Policy ¶ 4(a)(ii), Respondent may yet lack rights and
legitimate interests in the disputed domain name due to the website’s parked
content. See St.
Farm Mutual Auto. Insr.
The Respondent made offers to sell the disputed domain name to
Complainant for up to $4000, which is more than the out-of-pocket costs to
Respondent.
The Panel finds that Respondent’s offers to sell the disputed domain name are evidence that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also 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)).
The Respondent is diverting Complainant’s potential customers to Respondent’s website that resolves from the disputed domain name. This constitutes an intentional disruption of Complainant’s business. Because these Internet visitors are being diverted to competitors of Complainant, the Panel finds that Respondent has intentionally disrupted Complainant’s business, and that this disruption is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent is gaining commercially from the receipt of “click-through” fees. The Panel finds that Respondent’s commercial gain from the use of the disputed domain name is an additional but not essential evidence of Respondent’s registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See 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.”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <oraquick.com> domain name be TRANSFERRED
from Respondent to Complainant.
Flip Petillion, Panelist
Dated: April 6, 2009
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