Florida Detox, Inc. v. Town Tek Domains / Donna Weinberger
Claim Number: FA1010001353467
Complainant is Florida Detox, Inc. (“Complainant”), represented by Joseph J. Weissman of Johnson, Pope, Bokor, Ruppel, Burns, LLP, Florida, USA. Respondent is Town Tek Domains / Donna Weinberger (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <floridadetox.org>, registered with Wild West Domains, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 20, 2010; the National Arbitration Forum received payment October 20, 2010.
On October 21, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <floridadetox.org> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@floridadetox.org. Also on October 26, 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 November 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <floridadetox.org> domain name is identical to Complainant’s FLORIDA DETOX mark.
2. Respondent has no rights to or legitimate interests in the <floridadetox.org> domain name.
3. Respondent registered and used the <floridadetox.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Florida Detox, Inc., is a Florida corporation, founded in 1998. Complainant uses its FLORIDA DETOX mark in connection with its drug and alcohol rehabilitation and detoxification treatment and services. Complainant holds a trademark registration for its FLORIDA DETOX mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,306,555 issued October 9, 2007).
Respondent, Town Tek Domains / Donna Weinberger, registered the disputed domain name November 12, 2009. The resolving website offers detoxification and treatment services in direct competition with Complainant, under the identical FLORIDA DETOX mark. The website also contains links to Sunrise Detoxification Center, LLC, a competing facility located in Florida and New Jersey.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 that it has established rights in the FLORIDA DETOX mark. In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), the panel found that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations. Here, Complainant holds a trademark registration for its FLORIDA DETOX mark with the USPTO (e.g. Reg. No. 3,306,555 issued October 9, 2007). Pursuant to Policy ¶ 4(a)(i), the Panel finds that Complainant has established rights in its FLORIDA DETOX mark through its trademark registrations with the USPTO. 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).”).
Complainant urges that Respondent’s <floridadetox.org> domain name is identical to Complainant’s FLORIDA DETOX mark. The disputed domain name only differs from Complainant’s mark by the deletion of a space between terms of the mark and the addition of the generic top-level domain (“gTLD”) “.org.” The Panel finds that the deletion of a space and the addition of a gTLD fail to properly distinguish the disputed domain name 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).
Therefore, the Panel finds that Respondent’s disputed <floridadetox.org> domain name is identical to Complainant’s FLORIDA DETOX mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights and legitimate interests in the <floridadetox.org> domain name. Previous panels have found that if Complainant makes a prima facie showing in support of its allegations, the burden of proof shifts to Respondent to prove that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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.”).
Complainant made a prima facie showing here and the Panel may assume that Respondent has no rights to or legitimate interests in the disputed domain name based on Respondent’s failure to respond to the Complaint. However, this Panel still examines the record to determine whether evidence there suggests that Respondent has such rights or legitimate interests under Policy ¶ 4(c). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Complainant contends that Respondent is not commonly known by the <floridadetox.org> domain name. The WHOIS information identifies Respondent as “Town Tek Domains / Donna Weinberger,” which is not similar to the disputed domain name. Complainant asserts it has never authorized or licensed Respondent to use its FLORIDA DETOX mark in the disputed domain name. The Panel finds no additional evidence in the record that suggests that Respondent is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the <floridadetox.org> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Respondent uses the <floridadetox.org> domain name to resolve to a website offering services in direct competition with Complainant’s detoxification and treatment services. The Panel finds that Respondent’s use of the <floridadetox.org> domain name to operate a website to market its own services in direct competition with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and that it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); 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 Policy ¶ 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).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s <floridadetox.org> disputed domain name redirects Internet users to a website that offers services that seek to compete directly with Complainant’s detoxification and treatment center. The resolving website also features links to the Sunrise Detox website, a Florida corporation with competing detoxification and treatment centers in New Jersey and Florida. Complainant alleges that Respondent’s use of the disputed domain name disrupts its business because Internet users searching for Complainant’s services may instead opt for the services offered by the competitor due to Respondent’s use of the disputed domain name. The Panel finds that Respondent’s use of the <floridadetox.org> domain name does disrupt complainant’s business under Policy ¶ 4(b)(iii), which is evidence of bad faith use and registration. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also 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 Policy ¶ 4(b)(iii).”).
The Panel is permitted in such circumstances to make an inferences that Respondent profits from its use of the <floridadetox.org> domain name. The resolving website offers detoxification and treatment services under the guise of Complainant’s mark and features links to Sunrise Detox, a corporation in direct competition with Complainant. Internet users searching for Complainant’s services may instead find Respondent’s website and become confused as to the Complainant’s sponsorship of, or affiliation with, the disputed domain name, website, and services offered. Respondent attempts to profit from this confusion through the promotion of its competing business under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <floridadetox.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 6, 2010.
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