Vital Diagnostics Holding
Corp. v. BIOSYSTEMINTERNATIONAL
Claim Number: FA0905001260576
PARTIES
Complainant is Vital Diagnostics Holding Corp. (“Complainant”), represented by Robert L. Brooke, of Troutman Sanders LLP, Virginia, USA. Respondent is BIOSYSTEMINTERNATIONAL (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vitaldiag.com>, registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
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 May 1, 2009; the
National Arbitration Forum received a hard copy of the Complaint on May 4, 2009.
On May 6, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <vitaldiag.com>
domain name is registered with Melbourne It,
Ltd. d/b/a Internet Names Worldwide and that the Respondent is the
current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide
has verified that Respondent is bound by the Melbourne
It, Ltd. d/b/a Internet Names Worldwide 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 May 8, 2009, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 28, 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@vitaldiag.com by e-mail.
A Response was received on June 1, 2009. However because this Response was received
after the deadline for response the National Arbitration Forum does not
consider this Response to be in compliance with ICANN Rule 5.
On June 3, 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
Vital Diagnostics Holding Corp. is a provider of products and services
for clinical laboratories in the traditional in-vitro diagnostics market
worldwide, with a focus on the physician’s office, hospital and small-to-medium
sized laboratory segments. Complainant asserts to have continuously and
exclusively used the “VITAL DIAGNOSTICS” trademark in interstate commerce since
at least as early as 2000.
Complainant is the holder of the US registered service mark “vital diagnostics” since June 17, 2008.
Complainant also applied for a community trademark registration of “VITAL
DIAGNOSTICS” in the European Union and for a trademark registration of “VITAL
DIAGNOSTICS” in the Federation of Russia on January 17, 2008 an
December 12, 2007 respectively.
Complainant argues that Respondent registered
the domain name <vitaldiag.com> and has intentionally attempted to
attract, for a commercial gain, Internet users to a website by diverting
Internet users searching for Complainant’s services.
Complainant contends that Respondent's domain
name is confusingly similar to Complainant’s registered mark and operating
name. Complainant further contends that Respondent has no rights or legitimate
interests in the domain name. Complainant contends that Respondent
registered and is using the domain name in bad faith.
B. Respondent
Respondent contends i) that the contested Domain Name is substantially different from complainant’s trademark “VITAL DIAGNOSTICS”, ii) to have rights and a legitimate interest in the domain name, and iii) that the domain name was not registered or used in bad faith.
FINDINGS
1. Complainant is the holder of the following
trademark registration:
U.S. Reg. No. 3,451,122 – VITAL DIAGNOSTICS
for distributorship and retail services by direct solicitation by sales agents
in the field of clinical laboratory machines, equipment, accessories, supplies,
reagent, and assays, in class 35 (U.S. CLS. 100, 101 and 102), registered June
17, 2008.
2. Complainant first used its trademark on August
1, 2006.
3. Respondent registered the domain name <vitaldiag.com>
on October 22, 2005. At that time Complainant had registered the business name
“VITAL DIAGNOSTICS” in Australia. Complainant does not provide any evidence of
the use of its business name in interstate commerce.
4. Respondent uses the domain name to sell
products directly competing with those sold by Complainant under the VITAL
DIAGNOSTICS Mark.
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.
Preliminary Issue: Deficient
Response
Respondent has provided a Response that was deficient because the National Arbitration Forum has determined that the Response was not received before the Response deadline.
Since this is not in compliance
with ICANN Rule 5 and since there is moreover no apparent reason for the
untimely Response, the Panel decides not to consider Respondent’s submission. See
Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any
weight to be given to the lateness of the response is solely in the discretion
of the panelist); See also Strum v. Nordic
Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a
Response inadmissible because of formal deficiencies would be an extreme remedy
not consistent with the basic principles of due process. . .").
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant asserts that it has
rights in the VITAL DIAGNOSTICS mark pursuant to Policy ¶ 4(a)(i)
due to its trademark registration with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 3,451,122 issued June 17, 2008). Complainant asserts that its rights in the
VITAL DIAGNOSTICS mark date back to its filing of the application for the
trademark registration on March 10, 2006.
The USPTO issued Complainant a registration of the VITAL DIAGNOSTICS
mark for use in connection with Complainant’s online retail store. The Panel finds that Complainant has sufficient
rights in the VITAL DIAGNOSTICS mark and those rights date back to March 10,
2006 pursuant to Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239
(Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted
evidence of its registration with the USPTO, “such evidence establishes
complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”);
see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8,
2007) (finding that the complainant’s rights in the KISSES trademark through
registration of the mark with the USPTO
“date back to the filing date of the trademark application and predate [the]
respondent’s registration”).
Complainant also asserts to have
common law rights in the VITAL DIAGNOSTICS mark as Complainant would have used
this mark in interstate commerce continuously and exclusively since at least as
early as 2000. Nevertheless, Complainant did not provide the Panel with any
other information on this interstate commerce or with conclusive evidence to
corroborate this statement. Complainant also failed to provide evidence of the
extent of the interstate commerce. Therefore it is impossible to conclude that
Complainant’s common law rights in the mark pursuant to Policy ¶ 4(a)(i) prior to the USPTO filing date, would have acquired
secondary meaning. See Occidental
Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA
959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did
not submit sufficient evidence showing that its OCCIDENTAL mark had acquired
the necessary secondary meaning for it to establish common law rights pursuant
to Policy ¶ 4(a)(i)).
Complainant alleges that the <vitaldiag.com>
domain name is confusingly similar to its VITAL DIAGNOSTICS mark under
Policy ¶ 4(a)(i).
The disputed domain name omits the space between the two words of the
mark, shortens the second word from “diagnostics” to “diag,” and adds the
generic top-level domain “.com.” The
Panel finds that the <vitaldiag.com> domain name is confusingly similar
to Complainant’s VITAL DIAGNOSTICS mark under Policy ¶ 4(a)(i). See 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.”); see also
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
It is a well-established
principle that 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.”).
Complainant asserts it has not granted Respondent any license to use its VITAL DIAGNOSTICS mark. The WHOIS information associated with the disputed domain names lists Respondent as “BIOSYSTEMINTERNATIONAL.” According to the Panel, there is no indication that Respondent is commonly known by the domain name or any other indication that Respondent would have rights or legitimate interests in 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 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 argues that the disputed domain
name resolves to a commercial website, which operates in direct competition to
its own business. Complainant correctly
argues that using a confusingly similar domain name to compete with the holder
of the trademark is not 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
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June
23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services.”); see
also Glaxo Group Ltd. v.
WWW Zban, FA 203164 (Nat. Arb. Forum Dec.
1, 2003) (finding that the respondent was not using the domain name within the
parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain
name to take advantage of the complainant's mark by diverting Internet users to
a competing commercial site).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
The Panel is of the opinion that Complainant failed to meet the burden of proof of bad faith registration under Policy ¶ 4(a)(iii). 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 the 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).
The Panel is of the opinion that Complainant failed to provide sufficient evidence of having established common law rights in the VITAL DIAGNOSTICS mark predating Respondent’s registration of the disputed domain name. Because the registration of the <vitaldiag.com> domain name predates Complainant’s established rights in the VITAL DIAGNOSTICS mark, the disputed domain name could not have registered the disputed domain name in bad faith. 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 Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).
Since it is established that the disputed
domain name was not registered in bad faith, the question whether or not this
domain name is used in bad faith has become irrelevant.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). 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 the 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).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Flip Petillion, Panelist
Dated: June 18, 2009
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