Jordan Sparks d/b/a Open Dental Software v. Jee-Young Ko
Claim Number: FA0906001266265
Complainant is Jordan Sparks d/b/a Open
Dental Software (“Complainant”),
represented by Nathan Sparks, of Open Dental
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <opendental.com>, registered with Dotname Korea Corp.
The undersigned, Daniel B. Banks, Jr., as panelist, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 2, 2009.
After numerous requests, the Registrar, Dotname Korea Corp, has not confirmed to the National Arbitration that the <opendental.com> domain name is registered with Dotname Korea Corp or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On July 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 21, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on July 16, 2009.
An Additional Submission was timely filed by Complainant and was considered by the panel.
On July 22, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The domain name is <opendental.com>. The trademark OPEN DENTAL is registered to the complainant, who wholly owns Open Dental Software. These names are similar with the only difference being a space, which cannot be part of a domain name. The names are identical for the purpose of domain naming. Potential and current customers might reasonably expect that <opendental.com> would lead them to our website for the product 'open dental software' sold by the company 'OpenDental'.
The Respondent should be considered as having no right or legitimate interest in respect of the domain name for the following reasons:
1 - As far as the Complainant can determine, the Respondent has never used the domain name or a name corresponding to the domain name to sell any goods or services. The domain name has been registered for several years, but absolutely no content has ever been posted for any determinable length of time: the website is simply a blank page. This is the clearest definition of 'cyber squatting'.
2 - The Respondent has not been commonly known by the domain name. Searches have revealed no businesses by this or similar name associated with the Respondent.
3 - The Respondent is making absolutely no legitimate or other use of the domain name, again demonstrated by years of a completely blank space at the domain site. By doing this, the Respondent prevents legitimate use of the domain name.
The domain name should be considered as having been registered and being used in bad faith for the following reasons:
1 - The original intent of the registration cannot have been for the purpose for legitimate use or it would be in use by now. As of the date of this complaint, the website is empty. There is an attached PDF of the website (which is of course all white inside the browser window).
This disuse is indeed misuse, as locking up the domain name for nearly 10 years with no content at all on the domain prevents the Complainant in particular and the Internet community in general from making fair use of the domain name. While disuse does not always imply misuse, we cannot imagine an adequate explanation in this case that could withstand even light scrutiny.
Evidence of the historical lack of content on this site can be found by viewing the Internet Archive Project at <archive.org>. Specifically for <opendental.com>: http://web.archive.org/web/*/http://www.opendental.com
There was briefly in 2004 a webpage at the disputed site containing only the following words:
OPEN Dental Office
Ltd All Rights Reserved
But these few words on the page were soon removed, and since 2004, to our knowledge, the website has been completely blank. There is certainly no evidence of commerce, communication, content or activity of any kind.
2 - There is evidence that before the latest two registration updates, the registrant declared his intention to unreasonably profit from such registration by selling the domain at a price point disproportionate to any investment made by the registrant. The time line of the e-mail exchange comprising this evidence is shown below, followed by exact text of the e-mail from 2005.
November 2, 2004: Complainant e-mails Respondent and offers US$500 for domain name (the text of this first e-mail is not included, but Respondent refers to this first e-mail in his only response).
March 23, 2005: Complainant e-mails Respondent and again asks if he can purchase the domain, specifying no price.
March 24, 2005: Respondent (or agent of Respondent) replies that
● the original $500 is way to low, that is why he did not reply in 2004
● Respondent intends to sell the domain
● A proper offer is needed to sell to Complainant.
(this is the Respondent's only correspondence with the Complainant)
Immediately after this 2 offers were e-mailed from the Complainant to the Respondent in the respective amounts of US$4000 and then US$5000 but there was no reply from the Respondent.
The respondent registered the
domain name, <opendental.com>,
29 DEC 1999, before the complainant did the trademark registration, 25 OCT
2003, in the United States and did not know “Open Dental Software” company
until receiving the first e-mail from the complainant in 2004. Open Dental is not a proper noun used in
respondent is a dentist in
has not used the <opendental.com>
domain name until now, but has plans to use the domain name. The respondent plans to manage a
group-practice clinic or dental hospital. The respondent has owned the <opendental.com> domain name for
use of the clinic or hospital domain in the future. The respondent postponed
the schedule because of the continuing economic recession of
As a dentist, the respondent did
not use the domain name for any other commercial use, or forwarding to another
website. And, Open Dental Software, in
The respondent registered and holds the domain for clinic website and has not used the domain name for a malicious purpose. Moreover, the respondent has not misused the domain. And, the respondent has never tried to sell to other domain users or the company’s competitor.
The complainant mentioned that the webpage of the domain in 2004 disappeared after making a contact with respondent. The respondent thinks that the webpage was a parking webpage provided by Yesnic, a domain registrar, and disappeared when the respondent changed the registrar from Yesnic to Dotname. The current domain registrar is "Dotname Korea Corp." Similarly, <dreamdent.com> domain parking page remained in 2003 and currently the respondent operates the website and maintains it after the year 2003.
If the respondent had the domain for the purpose of selling, the respondent would have tried to sell the domain to other users or competitors. When the complainant offered to purchase the domain for $500, the respondent visited the complainant’s website to find out about “Open Dental Software.” The complainant evaluated the value of the domain at $500. That is lower than two software package’s price sold by the complainant’s company. The respondent thought that the value of the domain was higher than that of the complainant’s. So, the respondent decided to hold the domain and made plans for using the domain in the future. After that time, when the complainant offered $4000 and $5000, the respondent had no intention of selling the domain, and did not reply to the e-mail. The respondent as a dentist registered the domain for the purpose of using it management of the dental clinic and has not sold the domain.
The respondent manages "Yonsei Dream Dental Clinic" and has a website, <dreamdent.com>. The respondent does not have any other commercial activities except for the dental clinic and does not think that owning the domain itself prevents the trademark owner’s commercial behavior. Most Koreans, in 2009, who engaged in business of dentistry may not know "Open Dental Software".
The respondent registered the
domain 4 years before the complainant's trademark registration and did not know
the company before receiving the email from the complainant. And, there are
some dental software companies in
complainant already has and operates <open-dent.com> website. The
respondent has not operated or
forwarded the domain name to similar website or bad website using the domain
name. As the "dot com" domain
is the most popular domain name in
C. Additional Submissions:
If, as the
Respondent writes, Yeollin Chigwa Euiwon corresponds to Open Dental Clinic in
English, and the respondent is operating in
The Respondent has not shown legitimate interests in respect of the domain name that is the subject of the complaint.
The assertion that, because the initial registration of the domain was prior to the establishment of the trademark Open Dental, it could not have been in bad faith has some merit, but is flawed. Given that the initial registration was not in bad faith, (as indeed Open Dental was not trademarked or in use by either party and that the respondent was considering using the name for a business, there have been additional registration updates that may have been in bad faith.
Why were the
registration updates made? The evidence
submitted by the complainant clearly showed that the respondent is interested in
selling if the price was right. The complainant submits that evidence shows the
respondent re-registered the domain name <opendental.com> in
2007 not because a nonexistent business (proposed to be either a clinic or
hospital) may be opened with that name in
The complainant submits that most recent registration update made in 2007 qualifies as a ‘registration.’ If it is proposed that this re-registration was not made in bad faith, then logically it must follow that either a) such registrations of this same site may continue in perpetuity with similar lack of any actual commercial or non-commercial use of the site without being in 'bad faith' or b) There is some point at which such re-registration and disuse would become in ‘bad faith.’ As such, the complainant submits that a) above is not reasonable, and that b) there is some point at which such re-registration and disuse of the domain name becomes ‘in bad faith.’ The complainant further submits that such a point has already been reached. An idea in 1999 that has never been acted upon is not legitimate use. No evidence has been submitted showing that a new clinic business with the name Open Dental is forthcoming, planned or plausible. Yet Open Dental Software (the company) uses the product name Open Dental throughout the world and not being able to use the domain name opendental.com inhibits the complainant's legitimate economic activity.
1 – The disputed domain name is identical to a trademark in which the Complainant has rights.
2 – The Respondent has no rights or legitimate interests in respect of the disputed domain name.
3 – The registration and use of the domain name is in bad faith.
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 Policy ¶ 4(a)(i) does not require Complainant to establish rights in the OPEN DENTAL mark pursuant to Policy ¶ 4(a)(i) that predate Respondent’s registration date of December 29, 1999 for the <opendental.com> domain name. See CDG v. WSM Domains, FA 933942 (Nat. Arb. Forum May 2, 2007) (“A plain reading of ¶ 4(a)(i) imposes no burden on a Complainant to demonstrate that it has either exclusive right to a mark or that such rights predate the registration of a domain name.”); see also Javacool Software Dev., LLC v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a complainant need not show that its rights in its mark predate the respondent’s registration of the disputed domain name in order to satisfy Policy ¶ 4(a)(i)).
The Panel also finds that Complainant has sufficiently established rights in the OPEN DENTAL mark under Policy ¶ 4(a)(i) through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,013,106 issued November 8, 2005, filed March 12, 2004). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
The <opendental.com> domain name comprises Complainant’s entire OPEN DENTAL mark, deletes the space within the mark, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also 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)”).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). 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.”).
The <opendental.com> domain name resolves to a blank website which serves as evidence that Respondent has not made any use of the disputed domain name. Such failure to make demonstrable preparations to use the disputed domain name in connection with active content 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 Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is 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)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The WHOIS information for the <opendental.com> domain name lists “Jee-Young Ko” as the Registrant. The panel finds that there is no evidence that Respondent is commonly known by the <opendental.com> domain name 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 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).
Complainant offered to buy the disputed domain name from Respondent for $500-$5000. Respondent’s engagement with Complainant in these offers and counter-offers is evidence of bad faith registration and use. It is irrelevant as to which party initiated the offer to sell the disputed domain name. The Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(i). See Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant).
Also, the panel finds that Respondent’s failure to make an active use of the <opendental.com> domain name is evidence of 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 use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <opendental.com> domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: August 5, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page