national arbitration forum

 

DECISION

 

Ryan Swain DMD v. Dilshad Hirji

Claim Number: FA1005001323093

 

PARTIES

Complainant is Ryan Swain DMD (“Complainant”), represented by Rod S. Berman, of Jeffer, Mangels, Butler & Marmaro LLP, California, USA.  Respondent is Dilshad Hirji (“Respondent”), Ontario, Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sixmonthsmiles.com>, registered with Godaddy.com.

 

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2010.

 

On May 6, 2010, Godaddy.com confirmed by e-mail to the National Arbitration Forum that the <sixmonthsmiles.com> domain name is registered with Godaddy.com and that Respondent is the current registrant of the name.  Godaddy.com has verified that Respondent is bound by the Godaddy.com 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 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 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@sixmonthsmiles.com by e-mail.  Also on May 17, 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 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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" 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant markets and sells a variety of dentistry-related products and services under the SIX MONTH SMILES trademark and service mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on August 18, 2009 (Reg. No. 3,670,066). 

 

Complainant has used the SIX MONTH SMILES mark continuously in commerce since at least as early as May 2005. 

 

Complainant has given seminars around the world on its line of short-term orthodontics products marketed under the SIX MONTH SMILES mark since July 2006.

 

Respondent registered the <sixmonthsmiles.com> domain name on August 9, 2006. 

 

The disputed domain name resolves to a website that contains links to third-party websites, and these links generate revenue for Respondent in the form of click-through or similar fees. 

 

Respondent’s <sixmonthsmiles.com> domain name is identical to Complainant’s SIX MONTH SMILES mark.

 

Respondent is not commonly known by the <sixmonthsmiles.com> domain name, and Complainant has never been licensed or otherwise authorized to use the SIX MONTH SMILES mark.

 

Respondent intends to sell the disputed domain name to an interested buyer for far more than the out-of-pocket costs to Respondent to create the domain name, and Respondent has corresponded with potential buyers about selling the disputed domain name.   

 

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

 

Respondent registered and uses the <sixmonthsmiles.com> domain name in bad faith.

 

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

 

FINDINGS

(1)   the domain name registered by Respondent is substantively identical to a trademark and service mark in which Complainant has rights; and

(2)   Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)   the same domain name was registered and is being used by Respondent in bad faith.

 

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 a 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:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

 

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the SIX MONTH SMILES trademark and service mark for purposes of Policy ¶ 4(a)(i) through its mark registration with the USPTO.  See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that a complainant established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office);  see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where a complainant submitted evidence of its mark registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). 

 

We must take notice of the fact that Respondent’s registration of the disputed domain name predates Complainant’s trademark registration. However, Complainant has submitted evidence of its common law rights in the SIX MONTH SMILES mark, which rights evidently predate the registration of Respondent’s domain name.  That evidence is not contested by Respondent.  It is, of course, unnecessary for Complainant to have a trademark registration in order to establish its rights in a mark.  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a complainant need not own a 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 used the SIX MONTH SMILES trademark and service mark to market its products continuously since at least May 2005.  Complainant has therefore established common law rights in the SIX MONTH SMILES mark for purposes of Policy ¶ 4(a)(i) through its continuous use of the mark in commerce from that time.  See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that a complainant established common law rights in a mark for purposes of Policy ¶ 4(a)(i) through continuous use of the mark since 1995);  see also Goepfert  v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007):

 

[T]here is no particular amount of evidence required in order to establish common law rights.  The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established. 

 

Respondent’s <sixmonthsmiles.com> domain name is identical to Complainant’s SIX MONTH SMILES mark.  The domain name consists of the entire SIX MONTH SMILES mark with the spaces between the terms deleted and with the addition of the generic top-level domain (“gTLD”) “.com.”  Neither the deletion of spaces nor the addition of a gTLD sufficiently distinguishes a domain name from an incorporated mark for purposes of Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of a mark in forming a domain name and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i));  see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”);  further see Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that a respondent’s <treeforms.com> domain name is identical to a complainant’s TREEFORMS mark).

 

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

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights to and legitimate interests in the <sixmonthsmiles.com> domain name.  Under Policy ¶ 4(a)(ii), once a complainant makes out a prima facie case against a respondent under this head of the Policy, that respondent acquires the burden of showing evidence that it does have rights to or legitimate interests in a disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights to or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).

 

Complainant has made a prima facie case under Policy ¶ 4(a)(ii), and Respondent has failed to respond to the Complaint.  We are therefore free to conclude that Respondent has no rights to or legitimate interests in the contested domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):

 

Respondent’s failure to respond means that it has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).

 

Nonetheless, we elect to examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent possesses rights to or legitimate interests in the disputed domain name which are cognizable under the Policy. 

 

We begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <sixmonthsmiles.com> domain name, and that Complainant has never been licensed or authorized to use the SIX MONTH SMILES mark.  Moreover, the WHOIS information for the disputed domain name lists the domain name registrant only as “Dilshad Hirji,” which does not resemble the contested domain name.  On this record, we are constrained to conclude that Respondent has failed to show any evidence which would permit the conclusion Respondent is commonly known by the <sixmonthsmiles.com> domain name so as to have demonstrated rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that that respondent was commonly known by the domain names in dispute).

 

We also note that Complainant contends, without objection from Respondent, that Respondent maintains a website at the <sixmonthsmiles.com> domain name that features links to third-party websites, and that these links generate revenue for Respondent.  This use of the <sixmonthsmiles.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a contested domain name was not 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a contested domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if a respondent is itself commercially profiting from the click-through fees).

 

Complainant also contends that Respondent intends to sell the disputed domain name to an interested buyer for far more than the out-of-pocket costs to Respondent.  Once again, Respondent does not contest this allegation.  For this further reason, we therefore conclude that this use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that a 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 to or legitimate interests in a contested domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where a respondent registered a domain name with the intention of selling its rights).

                                                                                                                                          

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

 

Registration and Use in Bad Faith

 

Complainant contends, and Respondent does not deny, that Respondent registered the disputed domain name with the intent to sell it to an interested buyer for more than the out-of-pocket costs to Respondent to acquire the domain, and that Respondent has corresponded with potential buyers about selling the disputed domain.  This behavior is evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(i).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent registered and used the <gwbakeries.mobi> domain name in bad faith under Policy ¶ 4(b)(i) where it offered the domain for sale for far more than the estimated out-of-pocket costs it incurred in initially registering the 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 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.    

 

Complainant further contends that Respondent gains commercially through “click-through fees” it receives from the third-party websites, links to which are featured on the website resolving from the disputed domain name.  Respondent does not dispute this assertion.   Such a use of the disputed domain name, which is substantively identical to Complainant’s mark, for commercial gain creates a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of registration and use of the domain in bad faith.  See 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).

 

See also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that a respondent’s use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith registration and use of the domain because that respondent presumably benefited commercially by receiving click-through fees for diverting Internet users to unrelated third-party websites).

 

For all of these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

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

 

 

 

Terry F. Peppard, Panelist

Dated:  June 11, 2010

 

 

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