SmartHealth, Inc. v. Nuri
Riazati / Softlex
Claim Number: FA1007001336157
PARTIES
Complainant is SmartHealth, Inc. (“Complainant”) represented by Daniel
E. Kattman, of Reinhard Boerner Van Deuren
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smartpractice.us>, registered with GoDaddy.com,
Inc.
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.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on July 19, 2010;
the Forum received a hard copy of the Complaint on July 19, 2010.
On July 20, 2010, GoDaddy.com, Inc. confirmed by e-mail to the
Forum that the <smartpractice.us> domain name is registered with GoDaddy.com,
Inc. and that Respondent is the current registrant of the name. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution
Policy (the “Policy”).
On August 13, 2010, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 2, 2010 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On September 15, 2010, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Louis E. Condon
as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the 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
1. Respondent’s <smartpractice.us> domain name is identical to Complainant’s SMARTPRACTICE mark.
2.
Respondent does not have any rights or
legitimate interests in the <smartpractice.us>
domain name.
3.
Respondent registered and used the <smartpractice.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, SmartHealth,
Inc., holds numerous trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the SMARTPRACTICE mark (e.g., Reg. No. 2,837,641 registered May 4, 2004). Complainant uses the SMARTPRACTICE mark in
connection with postcards, greeting cards, thank you and reminder cards,
business forms, patient education posters, pamphlets, and newsletters and books
in the dental, medical, chiropractic, veterinary and optometrical fields.
Respondent, Nuri Riazati /
Softlex, registered the <smartpractice.us>
domain name on September 4, 2005.
Respondent uses the disputed domain name to resolve to a business called
“BizCard,” which sells print marketing materials, including postcards, thank
you and reminder cards, and business forms.
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
Complainant asserts rights in the SMARTPRACTICE
mark through its registrations of the mark with the USPTO (e.g., Reg.
No. 2,837,641 registered May 4, 2004).
The Panel finds these trademark registrations sufficiently prove
Complainant’s rights in the SMARTPRACTICE mark pursuant to Policy ¶ 4(a)(i). See 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
Complainant contends Respondent’s <smartpractice.us> domain name is identical to its SMARTPRACTICE mark. Respondent replicates Complainant’s mark in
the disputed domain name and then merely adds the country-code top-level domain
(“ccTLD”) “.us” to the mark. The Panel
finds the addition of a ccTLD to a mark does not sufficiently distinguish a domain
name from a mark. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb.
Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us”
fails to add any distinguishing characteristic to the domain name, the
<tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Lifetouch, Inc. v. Fox
Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the
respondent’s <lifetouch.us> domain name to be identical to the
complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails
to distinguish the domain name from the mark pursuant to the [usTLD] Policy”). Therefore, the Panel finds Respondent’s <smartpractice.us> domain name is identical to Complainant’s SMARTPRACTICE
mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied
Policy ¶ 4(a)(i).
Rights
or Legitimate Interests
According to Policy
¶ 4(a)(ii), Complainant must first make a prima facie case showing Respondent
lacks rights and legitimate interests in the <smartpractice.us>
domain name. The burden then shifts to
Respondent to show it has rights or legitimate interests in the disputed domain
name. The Panel may view Respondent’s
failure to submit a Response as evidence that Respondent lacks rights or
legitimate interests. See
Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006)
(finding the “complainant must first make a prima facie case that [the]
respondent lacks rights and legitimate interests in the disputed domain names
under [UDRP] ¶ 4(a)(ii), and then the burden shifts to
[the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to
respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”). Despite Respondent’s failure to respond, the
Panel will analyze the record to determine whether Respondent has rights or
legitimate interests in the disputed domain name under Policy ¶ 4(c).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <smartpractice.us> domain name. Therefore, the Panel finds that Respondent does not have rights and legitimate interests under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to UDRP ¶ 4(c)(i)).
Complainant avers that it has not licensed or otherwise authorized Respondent to use its SMARTPRACTICE mark. Additionally, the WHOIS information lists “Nuri Riazati / Softlex” as the registrant of the disputed domain name, which the Panel finds is not similar to the <smartpractice.us> domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the <smartpractice.us> domain name pursuant to Policy ¶ 4(c)(iii). 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 claims the <smartpractice.us> domain name previously redirected Internet users to Respondent’s business website at the <bizcard.com> domain name. Complainant alleges this website sold print marketing materials, including postcards, thank you and reminder cards, and business forms. The Panel finds Respondent used a domain name that is identical to Complainant’s SMARTPRACTICE mark to offer for sale products that directly compete with Complainant’s products. Accordingly, the Panel finds this use was not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of UDRP ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
In addition, Complainant asserts the <smartpractice.us> domain name currently resolves to a parked website. The Panel finds Respondent fails to make active use of the disputed domain name. Therefore, the Panel finds Respondent does not use the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iv). See 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 UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either UDRP ¶ 4(c)(i) or UDRP ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The Panel finds Complainant has satisfied
Policy ¶ 4(a)(ii).
Registration
and Use in Bad Faith
The Panel finds Respondent used the <smartpractice.us> domain name to redirect Internet users seeking Complainant’s products to Respondent’s competing website. Therefore, the Panel finds the disputed domain name disrupted Complainant’s business, which qualifies as registration and use in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
As previously discussed, Respondent’s domain name is identical to Complainant’s SMARTPRACTICE mark. Moreover, Respondent previously used this domain name to profit from the sale of its marketing materials. Therefore, the Panel finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or products on its website. Thus, the Panel concludes Respondent has engaged in registration and use in bad faith under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
Finally, the Panel finds Respondent registered the disputed domain name over a year after Complainant registered its SMARTPRACTICE mark with the USPTO. Consequently, the Panel determines that Respondent’s failure to make active use of the disputed domain name constitutes bad faith under Policy ¶ 4(a)(iii). See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred years after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO).
The Panel finds Complainant has satisfied
Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <smartpractice.us> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 20, 2010
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