Quantimetrix Corporation v. TECH DOMAIN SERVICES PRIVATE LIMITED
Claim Number: FA1006001327526
Complainant is Quantimetrix
Corporation (“Complainant”), represented by Lauri S. Thompson, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <quantimetrix.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2010.
On June 9, 2010, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD confirmed by e-mail to the National Arbitration Forum that the <quantimetrix.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD 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 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@quantimetrix.com by e-mail. Also on June 15, 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 July 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <quantimetrix.com> domain name is confusingly similar to Complainant’s QC QUANTIMETRIX CORPORATION mark.
2. Respondent does not have any rights or legitimate interests in the <quantimetrix.com> domain name.
3. Respondent registered and used the <quantimetrix.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Quantimetrix Corporation, specializes in developing and manufacturing clinical quality control products and diagnostic devices under FDA regulations. Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for its QC QUANTIMETRIX CORPORATION mark (Reg. No. 2,521,952 issued Dec. 25, 2001).
Respondent registered the <quantimetrix.com> domain name on January 2, 2007. Respondent’s disputed domain name resolves to a website that displays various third-party links to competing websites and businesses in the clinical laboratory control product and diagnostic device industry.
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 established rights in its QC QUANTIMETRIX CORPORATION mark (Reg. No. 2,521,952 issued Dec. 25, 2001) under Policy ¶ 4(a)(i) through its trademark registration with the USPTO. The Panel further finds that Complainant does not need to own a trademark registration in Respondent’s country of residence in order to establish rights in its mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant contends that the <quantimetrix.com>
domain name is confusingly similar to its mark.
Complainant argues that the disputed domain name contains the major
portion of its registered mark, QC QUANTIMETRIX CORPORATION, and Complainant’s
corporate name. Complainant contends
that by using the major portion of its mark and corporate name that
Respondent’s disputed domain name is confusingly similar to its mark under
Policy ¶ 4(a)(i).
Complainant further argues that the addition of the generic top-level
domain (“gTLD”) “.com” is not relevant to Policy ¶ 4(a)(i)
analysis. The Panel finds that
Respondent’s <quantimetrix.com> domain name is confusingly similar
to Complainant’s mark under Policy ¶ 4(a)(i) where the domain name contains the
major and recognizable portion of Complainant’s mark and merely adds the gTLD “.com.”
The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights and legitimate interests in the <quantimetrix.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 the Respondent to show it does have rights and legitimate interests in the <quantimetrix.com> domain name. 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 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 the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <quantimetrix.com> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel will review the evidence on record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complaint argues that Respondent is neither commonly known by the <quantimetrix.com> domain name, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information does not indicate that Respondent is commonly known by the disputed domain, and Respondent has not come forward with evidence to show it is commonly known by the disputed domain name. Therefore, the Panel finds that without evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); 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 asserts that Respondent’s disputed
domain name is not being used in connection with a bona fide offering of goods or services, nor is Respondent making a
legitimate noncommercial or fair use of the <quantimetrix.com> domain
name. Respondent’s disputed domain name
resolves to a website that displays third-party links to websites offering similar
clinical laboratory control and diagnostic products and services in competition
with Complainant, presumably for profit.
The Panel finds that Respondent’s use of the disputed name to redirect
Internet users to Complainant’s competitors, presumably for financial gain,
does not constitute 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). See 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); see
also Metro. Life
Ins. Co. v. Bonds,
FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using
a confusingly similar domain name to divert Internet users to competing
websites does not represent 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)).
The Panel finds
that Complainant has met the requirements of Policy ¶ 4(a)(ii).
Respondent is using the <quantimetrix.com> domain name to display third-party links and advertisements to diagnostic device and clinical laboratory control businesses that are competitors of Complainant. The Panel finds that Respondent’s diversion of Internet users to the websites and businesses of Complainant’s competitors under the confusingly similar <quantimetrix.com> domain name is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant further alleges that Respondent’s use of the <quantimetrix.com> domain name to intentionally attract Internet users to Respondent’s website for commercial gain is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s disputed domain name creates a likelihood of confusion between the disputed domain name and Complainant’s mark, and Respondent seeks to capitalize on that likelihood of confusion by making money on click-through fees paid by websites in competition with Complainant that are displayed on Respondent’s website. Therefore, the Panel finds that Respondent has intentionally attempted to attract Internet users to its website for commercial gain and this use is further evidence of bad faith registration and use pursuant to 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 AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <quantimetrix.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: July 22, 2010
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