national arbitration forum

 

DECISION

 

Absolute Dental v. Jaime Breziner

Claim Number: FA1002001310400

 

PARTIES

Complainant is Absolute Dental (“Complainant”), represented by Victor K. Sapphire, of Connolly Bove Lodge & Hutz LLP, California, USA.  Respondent is Jaime Breziner (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <absolutedental.com>, registered with SAFENAMES LTD.

 

PANEL

The undersigned 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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2010; the National Arbitration Forum received a hard copy of the Complaint on March 1, 2010.

 

On March 10, 2010, SAFENAMES LTD confirmed by e-mail to the National Arbitration Forum that the <absolutedental.com> domain name is registered with SAFENAMES LTD and that Respondent is the current registrant of the name.  SAFENAMES LTD has verified that Respondent is bound by the SAFENAMES LTD 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 April 23, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 13, 2010 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@absolutedental.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <absolutedental.com> domain name is identical to Complainant’s ABSOLUTE DENTAL mark.

 

2.      Respondent does not have any rights or legitimate interests in the <absolutedental.com> domain name.

 

3.      Respondent registered and used the <absolutedental.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Absolute Dental, offers clinical dental care with nineteen clinic locations and revenues exceeding $45 million. Complainant also spends over $3 million annually in internet, television, radio, billboard, magazine, flier and health fair advertising for its business.  Complainant has subsequently filed for and received a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its ABSOLUTE DENTAL mark (Reg. No. 3,305,116 issued October 9, 2007). 

 

Respondent registered the <absolutedental.com> domain name on November 6, 2004.  Respondent’s disputed domain name does not resolve to an active website.

 

DISCUSSION

Paragraph 15(a) of 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."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(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.

 

Identical and/or Confusingly Similar

 

Complainant alleges it holds a trademark registration with the USPTO for its ABSOLUTE DENTAL mark (Reg. No. 3,305,116 issued October 9, 2007).  However, Respondent registered the disputed domain name on November 6, 2004, prior to Complainant’s trademark registration.  The Panel finds that Complainant can establish common law rights under Policy ¶ 4(a)(i).  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). 

 

Complainant contends that it has established common law rights in its mark before Respondent’s registration of the disputed domain name because Complainant has been continuously operating its business under the ABSOLUTE DENTAL mark since April 2003.  To support its claim of common law rights in the ABSOLUTE DENTAL mark, Complainant contends that it has extensively and continuously advertised and promoted its dental practice through internet, television, radio, billboard, magazine, flier and health fair advertising  at a cost of more than $3 million annually.  Complainant further argues that it has treated over 110,000 patients in its nineteen dental care clinics while generating revenues of over $45 million.  Lastly, Complainant contends that it now has a federal trademark registration through the USPTO for its ABSOLUTE DENTAL mark that indicates Complainant’s first use of its mark on April 1, 2003.  The Panel finds that Complainant has established common law rights in its ABSOLUTE DENTAL mark pursuant to Policy ¶ 4(a)(i) through its continuous and extensive use and advertisement of its mark since April 2003.  See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). 

 

Complainant argues that Respondent’s <absolutedental.com> domain name is identical to Complainant’s ABSOLUTE DENTAL mark.  Complainant notes that the disputed domain name merely deleted the space between the terms of the mark and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i) because spaces are impermissible in a domain name and a gTLD is a requirement of every domain name.  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)”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).  Therefore, the Panel finds that Respondent’s <absolutedental.com> domain name is identical to Complainant’s ABSOLUTE DENTAL mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the <absolutedental.com> domain name.  Complainant is required to make a prima facie case in support of these allegations.  Once the Complainant has produced a prima facie case the burden shifts to Respondent to show it has a right or legitimate interest in the disputed domain name.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).  The Panel finds that Complainant has established a prima facie case.  Due to the Respondent’s failure to respond to these proceedings the Panel may assume Respondent does not have any right or legitimate interest in the disputed domain name.  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  However, the Panel will evaluate the evidence on record to determine if Respondent possesses any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i). 

 

Complainant contends that Respondent has not been authorized to use Complainant’s mark in any way, nor is Respondent commonly known by the disputed domain name.  The WHOIS information for the <absolutedental.com> domain name identifies “Jaime Breziner” as the registrant of the disputed domain name.  Respondent offers no evidence to show that it is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant further contends that Respondent has failed to make an active use of the disputed domain name.  In support of this, Complainant has submitted screen shots of the website that resolves from the <absolutedental.com> domain name that show there is no active web content on Respondent’s website.  Therefore, the Panel finds that Respondent’s failure to make an active use of the disputed domain name, and failure to show any demonstrable preparations to use the same is not use in connection with 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 Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”); see also 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)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.      

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent is also a dentist that is a direct competitor or Complainant in their market.  Complainant contends that Respondent has registered the <absolutedental.com> domain name in order to prevent Complainant from registering its common law ABSOLUTE DENTAL mark a similar domain name.  The Panel finds that Respondent’s registration and use of the disputed domain name was made in bad faith under Policy ¶ 4(b)(ii) where: (1) Respondent registered the identical domain name to Complainant’s mark; (2) Respondent is a competitor of Complainant; (3) and Respondent registered the disputed domain name shortly after Complainant began operating its business.  See Kabushiki Kaisha Toshiba v. Tel. Island, D2004-0711 (WIPO Nov. 15, 2004) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent registered the <toshibastrata.com> domain name to prevent the complainant from reflecting the TOSHIBA and STRATA marks in a corresponding domain name); see also Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”).

 

Complainant further argues that Respondent’s failure to make an active use of the disputed domain name is further evidence of bad faith registration and use.  The Panel finds that Respondent’s failure to make an active use of the disputed domain since Respondent registered it in 2004 is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See 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); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).  Therefore, the Panel finds that Respondent has registered and used the <absolutedental.com> domain name in bad faith under Policy ¶ 4(a)(ii).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.   

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <absolutedental.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  May 28, 2010

 

 

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