Lase Med Inc. v. Robert Criscuolo
Claim Number: FA0909001284851
Complainant is Lase Med Inc. (“Complainant”),
represented by Antonella Carpenter, of Lase Med Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lasemedinc.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 16, 2009.
On September 17, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <lasemedinc.net> 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 September 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 19, 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 timely Response was received and determined to be complete on October 19, 2009.
On October 22, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant Lase Med Inc. asserts that “[t]he registered name of the Corporation, Lase Med, Inc. is being used [for] the sole purpose of making negative statements towards the Corporation” and that copyrighted materials from Complainant’s website are being used by Respondent. Complainant contends that the disputed domain name <lasemedinc.net> is “very similar” to Complainant’s LASE MED INC. mark, that Respondent is not an official, stockholder, or employee of the corporation or any of its affiliates and that Respondent has registered and is using the disputed domain name in bad faith to slander and thus harm the corporation.
Respondent contends Complainant has no trademark rights in the LASE MED INC. mark, that he has used his website containing the <lasemedinc.net> name only to report truthful experiences, opinions and reports that he believes to be true, that he is making a legitimate noncommercial and fair use of the domain name, that he has no commercial purpose in using the domain name, that he did not register the domain name to compete with or disrupt Complainant’s business and that he has no intention of diverting and misleading consumers into believing he has any connection with Complainant.
The panel finds that complainant has failed to demonstrate registration or any other grounds for trademark rights in the LASE MED INC. mark and therefore cannot prove the elements necessary to obtain transfer of the disputed domain name.
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.
Complainant’s allegation that it has met its burden to prove that the disputed domain name is confusingly similar to the LASE MED INC. mark is based on Complainant’s assertion that the <lasemedinc.net> domain name is confusingly similar to its mark. Complainant has presented no evidence that it owns a trademark registration of the mark or that the mark has gained secondary meaning through extensive commercial use. Because Policy ¶4(a)(i) requires a complainant to prove that the mark on which it relies is entitled to trademark protection either through registration or by demonstrating that it has acquired secondary meaning under common law, Complainant has not established its rights in the mark within the meaning of the policy. See Navigo Energy Inc. v. Meier, FA 206312 (Nat. Arb. Forum Dec. 6, 2003).
Because Complainant has failed to establish rights in the mark, the Panel finds it is unnecessary to analyze the remaining two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002).
Because Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dated: November 5, 2009
National Arbitration Forum
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