RGH Enterprises, Inc. v. Purple Bucquet
Claim Number: FA1005001325215
Complainant is RGH Enterprises, Inc. (“Complainant”), represented by Una
L. Lauricia, of Pearne & Gordon LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <edgeparkmedicalsupplies.com>, registered with POWER BRAND CENTER CORP.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 18, 2010.
On May 27, 2010, POWER BRAND CENTER CORP. confirmed by e-mail to the National Arbitration Forum that the <edgeparkmedicalsupplies.com> domain name is registered with POWER BRAND CENTER CORP. and that Respondent is the current registrant of the name. POWER BRAND CENTER CORP. has verified that Respondent is bound by the POWER BRAND CENTER CORP. 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 June 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@edgeparkmedicalsupplies.com by e-mail. Also on June 4, 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 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <edgeparkmedicalsupplies.com> domain name is identical to Complainant’s EDGEPARK MEDICAL SUPPLIES mark.
2. Respondent does not have any rights or legitimate interests in the <edgeparkmedicalsupplies.com> domain name.
3. Respondent registered and used the <edgeparkmedicalsupplies.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, RGH Enterprises, Inc.,
owns and operates a distributorship, mail-order, and online order service for
medical equipment and supplies.
Complainant operates six distribution centers under the EDGEPARK MEDICAL
SUPPLIES mark throughout the
Respondent, Purple Bucquet, registered the <edgeparkmedicalsupplies.com> domain name on April 20, 2007. Respondent’s disputed domain name resolves to a search engine page with “Related Searches” and “Sponsored Listings” headings that display third-party links to medical supply companies that compete with Complainant.
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.
The Panel finds that Complainant has submitted sufficient evidence to show that it has rights in both its EDGEPARK (e.g. Reg. No. 1,775,606 issued June 8, 1993) and EDGEPARK MEDICAL SUPPLIES (e.g. Reg. No. 3,355,870 filed April 6, 2007; issued Dec. 18, 2007) marks under Policy ¶ 4(a)(i) through its multiple trademark registrations with the USPTO. Further, the Panel finds that Complainant has established rights in its EDGEPARK MEDICAL SUPPLIES mark that predate Respondent’s registration of the <edgeparkmedicalsupplies.com> domain name on April 20, 2007, because Complainant’s rights in its mark date back to its original filing date with the USPTO which in this case is April 6, 2007. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that the <edgeparkmedicalsupplies.com> domain name is identical to
its EDGEPARK MEDICAL SUPPLIES mark because Respondent merely removed the spaces
between the terms of Complainant’s mark and added the generic top-level domain
(“gTLD”) “.com.” See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights and legitimate interests in the disputed domain name. Complainant is required to establish a prima facie case in support of its allegations. Once Complainant has established a prima facie case, the burden of proof shifts to Respondent to show that it does possess rights or legitimate interests 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.”). The Panel finds that Complainant has established a prima facie case and that the burden of proof has shifted to Respondent to produce evidence of its rights or legitimate interests in the disputed domain name. Due to Respondent’s failure to respond to these proceedings the Panel finds that it may accept as true the allegations of Complainant. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). However, the Panel will analyze the elements of Policy ¶ 4(c) to determine whether Respondent possesses rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not legitimately
affiliated with Complainant and that Complainant has not granted Respondent
permission to use its marks in any way.
Further, Complainant submits that the WHOIS information for the disputed
domain name does not indicate that Respondent is commonly known by the disputed
domain name. The Panel finds that
Respondent is not commonly known by the <edgeparkmedicalsupplies.com>
domain name under Policy ¶ 4(c)(ii) based upon the
WHOIS information and other evidence in the record. 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Complainant also
argues that Respondent is not using the disputed domain name in connection with
a bona fide offering of goods or services or a legitimate noncommercial
or fair use. Complainant has submitted a
screen-shot of the website resolving from the <edgeparkmedicalsupplies.com> domain name to show that
Respondent is operating a commercial website directory that redirects Internet
users to Complainant’s competitors in the online and mail-order medical supply
industry via hyperlinks and advertisements.
Complainant also argues that Respondent receives click-through fees from
the businesses that have links on Respondent’s website. The Panel finds that Respondent’s use of the <edgeparkmedicalsupplies.com> domain
name to maintain a web directory of commercial hyperlinks to the competitors of
Complainant, presumably for financial gain, is not a 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 Wal-Mart Stores, Inc. v. Power of
Choice Holding Co., FA 621292 (Nat.
Arb. Forum Feb. 16, 2006)
(finding that the respondent’s use of domain names confusingly similar to the
complainant’s WAL-MART mark to divert Internet users seeking the complainant’s
goods and services to websites competing with the complainant did 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 Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA
877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not
using the <tesco-finance.com> domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use by maintaining a web page with misleading links to the complainant’s
competitors in the financial services industry).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent registered and uses the
<edgeparkmedicalsupplies.com>
domain name in bad faith because Respondent’s use of the disputed domain name
has disrupted Complainant’s business.
Complainant argues that Respondent is diverting Internet users who are
seeking Complainant’s products and services to the products and services of
Complainant’s competitors. The Panel
finds that Respondent’s registration and use of the disputed domain name
constitutes bad faith under Policy ¶ 4(b)(iii) because
Respondent is redirecting Internet users to the websites and businesses of
Complainant’s competitors. 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).
Complainant further argues that Respondent is using the <edgeparkmedicalsupplies.com> domain name to intentionally attract Internet users to Respondent’s website for financial gain, and that such use is further evidence of Respondent’s bad faith registration and use. Complainant contends that Respondent receives click-through fees from the websites and businesses that are displayed on Respondent’s website and that such use has been determined by previous panels to be evidence of bad faith registration and use. The Panel finds that Respondent’s use of the disputed domain name to maintain a web directory of links and advertisements to Complainant’s competitors, presumably for financial gain, is further evidence that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <edgeparkmedicalsupplies.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 8, 2010
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