Avalere Health, LLC v. Andrew Valere / Custom Mailboxes by Andrew
Claim Number: FA1204001438077
Complainant is Avalere Health, LLC (“Complainant”), represented by Brian Hurh of Davis Wright Tremaine LLP, Washington, D.C., USA. Respondent is Andrew Valere / Custom Mailboxes by Andrew (“Respondent”), represented by Benjamin L. Willey of Law Offices of Benjamin L. Willey, LLC, Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <avalere.net> and <avalere.org>, registered with Tucows, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2012; the National Arbitration Forum received payment on April 4, 2012.
On April 4, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <avalere.net> and <avalere.org> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2012 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@avalere.net and postmaster@avalere.org. Also on April 9, 2012, 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 May 4, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <avalere.net> and <avalere.org> domain names, the domain names at issue, are confusingly similar to Complainant’s AVALERE mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent registered the domain names at issue on August 23, 2004. There is no evidence that Complainant had rights in the AVALERE mark prior to Respondent’s registration of the domain names at issue. Complainant has not licensed or otherwise authorized Respondent to use its trademark and Respondent is not commonly known by the domain name at issue.
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."
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.
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.”).
Complainant holds trademark registrations with the USPTO for the following trademarks: AVALERE (Reg. No. 3,294,805 filed February 24, 2005; registered September 18, 2007); AVALERE and Design (Reg. No. 3,665,777 filed July 1, 2008; registered August 11, 2009); and AVALERE (Reg. No. 3,922,057 filed March 19, 2010; registered February 22, 2011). While Complainant also argues that it has common law trademark rights in its marks, the Panel notes that it has not provided any arguments or evidence to show that such rights exist. However, Complainant’s trademark rights in the AVALERE mark attached at the time of its trademark filing with the USPTO on February 24, 2005. Therefore, the Complainant produced sufficient evidence to establish rights in its AVALERE mark dating back to February 24, 2005 under Policy ¶ 4(a)(i). 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”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant has never authorized Respondent to use any of its marks. The WHOIS information identifies “Andrew Valere / Custom Mailboxes by Andrew” as the domain name registrant for both of the disputed domain names. The domain name registrant’s first name initial and full last name appear to establish a connection with the <avalere.net> and <avalere.org> domain names. However, without affirmative evidence indicating such from Respondent, Respondent is in fact not commonly known by the domain name under Policy ¶ 4(c)(ii). See Dana Corp. v. Safineh Co., FA 222043 (Nat. Arb. Forum Mar. 1, 2004) (“The <dana-co.org> domain name is registered, in part, to ‘Dana Co.’ Because of Complainant’s extensive holding of international registrations of the DANA mark, including Respondent’s territory of Iran, the panel may infer that Respondent is not commonly known as ‘Dana’ or ‘Dana Co.’ despite the WHOIS domain name registration information pursuant to UDRP Policy ¶ 4(c)(ii).”); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent registered the domain names at issue on August 23, 2004. There is no evidence that Complainant had rights in the AVALERE mark prior to Respondent’s registration of the domain names at issue. Complainant’s first trademark registration was filed on February 24, 2005. Further, Complainant has failed to provide the Panel with evidence of common law trademark rights existing at the time of Respondent’s registration of the domain names at issue. Complainant’s trademark registration for the AVALERE mark claims a first use in commerce date of April 1, 2005. Respondent registered the disputed domain names prior to Complainant having protectable rights in the AVALERE mark, and the Panel finds that Respondent could not have registered the domain names in bad faith under Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has NOT been established.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <avalere.net> and <avalere.org> domain names REMAIN WITH Respondent.
James A. Carmody, Esq., Panelist
Dated: May 5, 2012
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