RGH Enterprises, Inc. v. AJ inc
Claim Number: FA1008001342681
Complainant is RGH Enterprises, Inc. ("Complainant"), represented by Una L. Lauricia of Pearne & Gordon LLP, Ohio, USA. Respondent is AJ inc ("Respondent"), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <edgeparkmedicalsupplies.net> and <edgeparkmedicalsupplies.org> registered with GoDaddy.com, Inc.
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 August 23, 2010; the National Arbitration Forum received payment on August 24, 2010.
On August 25, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <edgeparkmedicalsupplies.net> and <edgeparkmedicalsupplies.org> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 31, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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.net and postmaster@edgeparkmedicalsupplies.org. Also on August 31, 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 October 4, 2010, pursuant to Complainant's request to have the dispute decided by a 1-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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <edgeparkmedicalsupplies.net> and <edgeparkmedicalsupplies.org> domain names are identical to Complainant’s EDGEPARK MEDICAL SUPPLIES mark.
2. Respondent does not have any rights or legitimate interests in the <edgeparkmedicalsupplies.net> and <edgeparkmedicalsupplies.org> domain names.
3. Respondent registered and used the <edgeparkmedicalsupplies.net> and <edgeparkmedicalsupplies.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, RGH Enterprises, Inc., is a provider of mail-order medical supplies and operates six distribution centers under its EDGEWATER MEDICAL SUPPLIES mark throughout the United States. Complainant holds a trademark registration for its EDGEWATER MEDICAL SUPPLIES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,355,870 issued September 1, 2006).
Respondent, AJ inc, registered the disputed domain names on March 4, 2010. The disputed domain names resolve to websites featuring generic third-party links, many of which directly 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.
Complainant asserts rights in its EDGEWATER MEDICAL SUPPLIES mark based on its registration of the same with the USPTO (Reg. No. 3,355,870 issued September 1, 2006). The Panel finds that Complainant’s registration with a governmental trademark authority such as the USPTO is sufficient evidence of Complainant’s rights in its EDGEWATER MEDICAL SUPPLIES mark. Additionally, the Panel finds that it is irrelevant whether Complainant registers its mark in the country where Respondent resides or operates. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); 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 asserts that Respondent’s <edgeparkmedicalsupplies.net> and <edgeparkmedicalsupplies.org> domain names are identical to Complainant’s EDGEWATER MEDICAL SUPPLIES mark. Respondent’s disputed domain name incorporates the entirety of Complainant’s mark and merely deletes the spaces between the terms of Complainant’s mark and adds the generic top-level domains (“gTLD”) “.net” and “.org.” The Panel finds that such alterations do not distinguish the disputed domain names from Complainant’s mark. 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 and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Respondent’s <edgeparkmedicalsupplies.net> and <edgeparkmedicalsupplies.org> domain names are identical to Complainant’s EDGEWATER MEDICAL SUPPLIES mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. 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 Policy ¶ 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.”). Nevertheless, the Panel will examine the record in light of the factors contained in Policy ¶ 4(c) to determine whether Respondent has any rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent is not sponsored or legitimately affiliated with Complainant in any way. Complainant further argues that it has not given Respondent permission to use Complainant’s mark in a domain name or in any other manner. The WHOIS information indicates that the registrant of the disputed domain names is “AJ inc.” The Panel finds that the combination of Complainant’s arguments and the WHOIS information together indicate that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). 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’s <edgeparkmedicalsupplies.net> and <edgeparkmedicalsupplies.org> domain names were registered on March 4, 2010. The disputed domain names resolve to a website featuring generic third-party links, many of which directly compete with Complainant in the medical supply field. The Panel presumes that Respondent receives click-through fees from these linked websites. The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors 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 satisfied Policy ¶ 4(a)(ii).
Respondent is using the disputed names to redirect Internet users who are seeking information on Complainant’s products and services to websites with links to Complainant’s competitors in the mail-order medical supply industry which interferes with Complainant’s business. The Panel finds that Respondent’s use of the disputed domain names constitutes a disruption of Complainant’s business and is evidence of bad faith 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 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).
The Panel finds that Respondent’s use of the disputed domain names to collect click-through fees from the linked websites that resolve from the disputed domain names by intentionally attracting Internet users who seek Complainant’s products and services is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See 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)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Complainant has satisfied 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 <edgeparkmedicalsupplies.net> and <edgeparkmedicalsupplies.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 4, 2010
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