Claim Number: FA0907001275532
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morristowndental.com>, registered with Namesecure.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 23, 2009; the National Arbitration Forum received a hard copy of the Complaint July 27, 2009.
On July 24, 2009, Namesecure.com confirmed by e-mail to the National Arbitration Forum that the <morristowndental.com> domain name is registered with Namesecure.com and that the Respondent is the current registrant of the name. Namesecure.com verified that Respondent is bound by the Namesecure.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 31, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 20, 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 email@example.com by e-mail.
A Response was received on August 21, 2009, but as the hard copy was not received before the Response deadline, the Response was determined to be deficient because it was not timely and therefore was not in compliance with ICANN Rule 5.
Thereafter, both parties filed timely Additional Submissions, the contents of which are more fully addressed below.
On August 26, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Preliminary Issue: Deficient Response and Additional Submission
Respondent provided a Response that was deficient because the National Arbitration Forum determined that a hard copy of the Response was not received before the Response deadline. The Panel first decides whether or not to consider Respondent’s submission, or the amount of weight to give to the Response, because it is not in compliance with ICANN Rule 5. 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 Bank of Am. Corp. v. NW Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (refusing to accept the respondent’s deficient response that was only submitted in electronic form because it would not have affected the outcome had the Panel considered it). But see 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. . ."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Respondent filed a timely Additional Reply Submission by email and postal delivery September 1, 2009.
Preferring substance over procedure, the Arbitrator reviewed the two submissions with a view toward determining whether consideration of the two submissions would require a different result and it would not. Reference is made to the content of the submissions in this decision.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant urges that
1. Respondent filed a domain name that is identical to and/or confusingly similar to a mark in which Complainant has exclusive rights.
2. Respondent has no rights to or legitimate interests in the domain name containing Complainant’s protected mark.
3. Respondent registered and used the disputed domain name in bad faith.
4. Complainant has common law rights in its mark.
5. Complainant has expended significant sums to advertise its business and such expenditures gave rise to secondary meaning for its mark.
6. Complainant has not given Respondent permission to use its mark.
7. Respondent knew about Complainant’s rights in the mark before registering and using the disputed domain name.
8. Respondent knowingly is using the domain containing Complainant’s mark in order to confuse Internet users and Respondent is benefiting financially from such use.
B. Respondent made the following points in Response:
1. The domain name is comprised of generic terms that are not protected.
2. No evidence shows Respondent knew of Complainant’s mark.
3. No evidence shows secondary meaning.
4. Many other dental operations are using some form of the generic terms in Respondent’s disputed domain name.
5. Respondent has been doing business at the site since he registered it in 2003.
6. Respondent also filed another back-up site at the same time he registered the disputed domain name but the other name was too difficult to type.
7. The other domain name is identical to Respondent’s name in which he practices, Metro Dental Associates, LLC., but it was already taken in addition to being difficult to type.
C. Additional Submissions
Complainant submitted an Additional Submission in which it argues that:
1. The U.S.P.T.O. accepted both trademarks for registration on the principal register.
2. Respondent’s recent changes in the web site show that Respondent knew of Complainant’s practice and rights in its mark.
Respondent filed an Additional Submission in which he argues that:
1. No U.S.P.T.O. finding has been made as to secondary meaning.
2. Complainant’s Additional Submission contains pure speculation.
3. Complainant’s attachment of a misdirected email disclosing the medical records of a minor violates the child’s privacy rights.
4. Complainant did not contest Respondent’s other evidence.
Complainant holds a
Complainant has used its family of marks in commerce since at least April 1990.
Complainant and Respondent operate dental practices in the same geographic region.
Complainant’s marks acquired distinctiveness, or secondary meaning, over the years in which its practice operated in the geographic region.
Respondent registered the disputed domain name in 2003, some 13 years after Complainant’s practice began in the geographic region.
Respondent conceded that others also use some version of the terms he deems to be generic.
Respondent chose terms that were identical to Complainant’s mark rather than pursuing his back-up domain name using the name of his own commercial dental operation.
Respondent registered the disputed domain name December 8, 2003.
Respondent acknowledges that he had other options at the time he registered the disputed domain name and, in fact, registered a back-up domain name that was identical to the name of his own practice.
At the time Respondent registered the disputed domain name, the above evidence along with the dispute over one of Respondent’s partners and/or colleagues suggests that Respondent knew of Complainant’s dental practice and its use of its family of marks.
Opportunistically registering a mark using the mark of another and competing with the one whose mark is being used supports findings of bad faith registration and use.
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 Complainant to 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) 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.
Complainant established rights in
the MORRISTOWN DENTAL mark for the purposes of Policy ¶ 4(a)(i)
by showing registration of its service mark with the state of
also contends that it has also established common law rights in the MORRISTOWN
DENTAL mark, due to the secondary meaning that
accrued to the mark by Complainant’s continuous use of the mark in commerce
since at least as early as April 1990.
This use has included banner advertising in the
urges that Respondent’s <morristowndental.com> domain name is identical to its MORRISTOWN DENTAL mark. The disputed
domain name differs from Complainant’s mark in two ways: (1) the space has been
removed from the mark; and (2) the generic top-level domain (“gTLD”) “.com” has
been added to the end of the mark. The Panel finds that removing a space
from a mark does nothing to make a domain name sufficiently different from the
mark used pursuant to Policy ¶ 4(a)(i). See
Furthermore, the Panel finds that the addition of the gTLD “.com” does nothing to distinguish a domain name from a mark because all domain names must include a top-level domain. See 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)”). Therefore, the Panel finds that the disputed domain name is not sufficiently distinguished from, and remains identical to, Complainant’s MORRISTOWN DENTAL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant next alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant showed a prima facie case pursuant to Policy ¶ 4(a)(ii). Once Complainant meets this burden, the burden of proof shifts to Respondent to show that it does have such rights. 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 Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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.”).
Complainant contends that Respondent is not commonly known by the <morristowndental.com> domain name and that it has never been the owner or licensee of the MORRISTOWN DENTAL mark. The WHOIS record for the disputed domain name identifies Respondent as “Jay Schuster, DDS.” Because Respondent has failed to show any evidence contrary to Complainant’s contentions and is not known by any variant of the MORRISTOWN DENTAL mark, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also 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).
Complainant also contends that Respondent is using the <morristowndental.com> domain name to host a website where Respondent markets dental services that compete with Complainant’s business in the same geographic area. The Panel finds that because of Respondent’s competitive use of the disputed domain name, Respondent is not using the <morristowndental.com> domain name either for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Respondent contends that because the disputed domain name
resolves to the website of his own dental practice located in
Respondent also argues that the terms of the <morristowndental.com> domain name are generic and of common use, and that therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. This is not persuasive to the Panel because Respondent was on constructive notice that Complainant’s mark had been filed with local authorities and the Panel has found that Complainant has common law rights in the mark, which is contained in its entirety in the disputed domain name.
The panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that
Respondent is using the <morristowndental.com> domain name, registered August 12, 2003, to confuse Internet
customers and divert them from Complainant’s website to Respondent’s website
that offers competing services.
Complainant also contends that Respondent fully intends to disrupt
Complainant’s business by this diversion.
The Panel finds that Respondent’s domain name is likely to disrupt
Complainant’s business and therefore that Respondent has registered and used
the <morristowndental.com> domain name in bad faith pursuant to
Policy ¶ 4(b)(iii). See
Complainant also contends that Respondent gains commercially from this diversion of Internet users, because Respondent is selling his own dental services at the website that resolves from the disputed domain name. The Panel finds that Respondent is intentionally using the disputed domain name for commercial gain by creating a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), the Panel finds that this use also supports findings that Respondent registered and used the domain name in bad faith. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
The Panel finds that Complainant satisfied the elements of ICANN 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 <morristowndental.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Dated: September 9, 2009.
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