Zevex, Inc. v. Isaac Goldstein
Claim Number: FA1005001323005
Complainant is Zevex,
Inc. (“Complainant”), represented by Michael
J. Berchou, of Phillips Lytle LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <zevex.com>, registered with NETWORK SOLUTIONS, LLC.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2010.
On May 5, 2010, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <zevex.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. 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 May 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@zevex.com. Also on May 12, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin
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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <zevex.com> domain name is identical to Complainant’s ZEVEX mark.
2. Respondent does not have any rights or legitimate interests in the <zevex.com> domain name.
3. Respondent registered and used the <zevex.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Zevex, Inc., manufactures and sells medical equipment under its ZEVEX mark. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its ZEVEX mark (e.g., Reg. No. 2,266,273 issued August 3, 1999). Complainant registered the <zevex.com> domain name on February 24, 1995 before inadvertently allowing the domain name registration to lapse.
Respondent, Isaac Goldstein, registered the <zevex.com> domain name on April 1, 2010, one day after Complainant’s redemption period ended. Respondent offered to sell the disputed domain name to Complainant on April 5, 2010 for $7,500. The disputed domain name resolves to a website containing a commercial search engine and a list of third-party hyperlinks, some of which resolve to Complainant’s competitors in the medical equipment business.
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.
Respondent, Isaac Goldstein, registered the <zevex.com>
domain name on April 1, 2010, one day after Complainant’s redemption period
ended. Previous panels have concluded
that a trademark registration with a federal trademark authority is sufficient
to establish rights in a mark under Policy ¶ 4(a)(i). See Miller Brewing
Complainant claims that Respondent’s <zevex.com> domain name is identical to Complainant’s ZEVEX mark. Complainant alleges that the only difference between Complainant’s mark and the disputed domain name is the addition of a generic top-level domain (“gTLD”) “.com.” As top-level domains are required in all domain names, the Panel holds that Respondent’s addition of a gTLD is irrelevant when conducting a Policy ¶ 4(a)(i) analysis. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). Consequently, the Panel concludes that Respondent’s <zevex.com> domain name is identical to Complainant’s ZEVEX mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <zevex.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complainant, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Policy ¶ 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Previous panels have determined that a respondent is not commonly known by a disputed domain name if the respondent fails to present any evidence in support of such a finding and if the complainant presents sufficient evidence that the respondent is not commonly known by the domain name. See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Respondent has failed to present any evidence that would allow this Panel to find that Respondent is commonly known by the <zevex.com> domain name. Conversely, Complainant has argued that Respondent is not authorized or licensed to use Complainant’s ZEVEX mark. Moreover, Complainant provides the WHOIS information which identifies the domain name registrant as “Isaac Goldstein,” which is not similar to the <zevex.com> domain name. Due to the evidence presented in the record, the Panel finds that Respondent is not commonly known by the <zevex.com> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent’s <zevex.com> domain name resolves to a website that contains a commercial search engine and a list of third-party hyperlinks. Some of the third-party hyperlinks resolve to Complainant’s competitors in the medical equipment industry. The Panel presumes that Respondent receives click-through fees from the aforementioned hyperlinks. The Panel determines that Respondent’s use of the identical disputed domain name for this purpose is not evidence of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <zevex.com> domain name pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant claims that Respondent registered the disputed domain name on April 1, 2010 and that, on April 5, 2010, Respondent offered to sell the disputed domain name to Complainant for $7,500. The Panel infers that $7,500 exceeds Respondent’s out-of-pocket expenses for the registration of the disputed domain name. The Panel concludes that Respondent’s attempt to sell the identical <zevex.com> domain name to Complainant for an amount that exceeds Respondent’s out-of-pocket expenses does not indicate that Respondent holds rights or a legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
Complainant alleges that it was the former owner and registrant of the <zevex.com> domain name. Complainant asserts that it registered the disputed domain name on February 24, 1995. Complainant’s registration ended on February 25, 2010. Complainant claims that it inadvertently allowed the registration to lapse and that Respondent registered the disputed domain name on April 1, 2010, one day after Complainant’s redemption period ended. The Panel may find Respondent’s registration of the <zevex.com> domain name after Complainant’s registration inadvertently lapsed is evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name.”); see also Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO Feb. 1, 2002) (finding that the respondent could not rely on equitable doctrines under the Policy to defend its registration of the disputed domain name after the registration was inadvertently permitted to lapse by the complainant, noting that “Respondent was aware of the Complainant’s well-known business and its mark and intended to exploit the mark”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the <zevex.com> domain name on April 1, 2010 and offered to sell the disputed domain name to Complainant four days later on April 5, 2010. Respondent offered to sell the domain name for $7,500 which the Panel presumes is greater than Respondent’s out-of-pocket costs. The Panel finds Respondent’s offer to sell the <zevex.com> domain name to Complainant for more than Respondent’s out-of-pocket costs is evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Respondent uses the <zevex.com> domain name to resolve to a website featuring a commercial search engine and third-party hyperlinks, some of which resolve to Complainant’s competitors in the medical equipment business. Internet users interested in purchasing medical equipment from Complainant may purchase similar products from Complainant’s competitors solely due to Respondent’s registration and use of the identical disputed domain name. The Panel concludes that Respondent’s registration and use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Respondent’s <zevex.com> domain name resolves to a website featuring a commercial search engine and the aforementioned hyperlinks. The Panel infers that Respondent commercially benefits from the search engine and hyperlinks through the receipt of click-through fees. Internet users may access Respondent’s website due to confusion about Complainant’s affiliation with or sponsorship of the disputed domain name. Respondent attempts to profit from that confusion. The Panel determines that Respondent’s use of the <zevex.com> domain name constitutes bad faith registration and use of the disputed domain name. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant claims that it owned the <zevex.com> domain name until it inadvertently allowed the registration to lapse. Respondent registered the disputed domain name on April 1, 2010, one day after Complainant’s redemption period ended. The Panel holds that Respondent’s registration and use of the identical disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name); see also Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zevex.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 15, 2010
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