Lase Med Inc. v. Robert Criscuolo
Claim Number: FA0909001284851
PARTIES
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.
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.
Mark McCormick as Panelist.
PROCEDURAL HISTORY
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
postmaster@lasemedinc.net 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.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
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.
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).
DECISION
Because Complainant has not established all
three elements required under the ICANN Policy, the Panel concludes that relief
shall be DENIED.
Mark McCormick,
Panelist
Dated: November 5, 2009
National
Arbitration Forum
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