DDS Lab, Inc. c/o Eric Seward v. First Impression Dental Studio c/o Rowe, Ken
Claim Number: FA1205001441906
Complainant is DDS Lab, Inc. c/o Eric Seward (“Complainant”), represented by Will Rose, Florida, USA. Respondent is First Impression Dental Studio c/o Rowe, Ken (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myddslab.com>, registered with GoDaddy.com, LLC.
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 May 2, 2012; the National Arbitration Forum received payment on May 2, 2012.
On May 02, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <myddslab.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 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@myddslab.com. Also on May 4, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 29, 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 name be transferred from Respondent to Complainant.
Respondent’s <myddslab.com> domain name, the domain name at issue, is confusingly similar to Complainant’s DDSLAB mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has rights in the DDSLAB, INC mark, which it uses in connection with the distribution and marketing of dental laboratory products and services.
Complainant registered the DDSLAB, INC mark (Reg. No. 3,061,378 registered February 21, 2006) with the United States Patent and Trademark Office (“USPTO”). The <myddslab.com> domain name is confusingly similar to the DDSLAB, INC mark. Respondent’s business is a dental services clinic, which has no affiliation or association with Complainant. The <myddslab.com> domain name resolves to Respondent’s own website. Respondent intended for the <myddslab.com> domain name to divert Internet users seeking Complainant to Respondent’s website instead. Respondent registered the <myddslab.com> domain name on November 11, 2009.
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 has rights in the DDSLAB, INC mark, which Complainant uses in connection with the marketing and distribution of dental laboratory goods and services. Complainant has a USPTO registration for the DDSLAB, INC mark (Reg. No. 3,061,378 registered February 21, 2006). The registration of a mark with a federal trademark authority is evidence of rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, Complainant has rights in the DDSLAB, INC mark under Policy ¶ 4(a)(i).
Respondent’s addition of the generic term “my” fails to distinguish the <myddslab.com> domain name from the DDSLAB, INC mark. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). The deletion of the abbreviated term “inc” and the comma in the mark does not negate a finding of confusing similarity. See Middle Atlantic Prods., Inc. v. Private Registration, FA 1397984 (Nat. Arb. Forum Aug. 22, 2011) (holding that the deletion of the term “Inc” and the comma preceding does not bar the panel from holding the <middleatlanticproducts.com> domain name to be confusingly similar to the MIDDLE ATLANTIC PRODUCTS, INC mark); see also Wellborn Cabinet. Inc. v. Purple Bucquet, FA 1352205 (Nat. Arb. Forum Nov. 29, 2010) (finding that the deletion of “, INC” from a mark in a disputed domain name does not make the disputed domain name distinct from the allegedly-infringed-upon mark under Policy ¶ 4(a)(i)). Finally, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that the <myddslab.com> domain name is confusingly similar to the DDSLAB, INC mark pursuant to Policy ¶ 4(a)(i).
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.”).
Respondent has no relation to Complainant in any way. Respondent does not offer any goods or services that are reflected by the <myddslab.com> domain name. The WHOIS record for the <myddslab.com> domain name lists “First Impression Dental Studio c/o Rowe, Ken” as the domain name registrant. Where the information on the record does not demonstrate an association between the Respondent and the disputed domain name, the respondent is not commonly known by the disputed domain name and the respondent does not have rights or legitimate interests in the domain name. 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). Therefore, Respondent is not commonly known by the <myddslab.com> domain name under Policy ¶ 4(c)(ii), and Respondent thus does not have rights or legitimate interests in the <myddslab.com> domain name.
Further, Respondent uses the <myddslab.com> domain name to divert Internet users to Respondent’s own website. Complainant asserts that Respondent operates a local dentistry clinic. Complainant is also in the dentistry business. The panels in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), held that the operation of a competing website is evidence of a lack of rights or legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii). Therefore, the Panel finds that Respondent’s use of the <myddslab.com> domain name demonstrates Respondent’s lack of rights or legitimate interests as Respondent, by operating its own website that operates in the same industry as Complainant, is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s intent with regard to the <myddslab.com> domain name is to mislead Internet users by use of the generic term “my” to imply an association with Complainant so that Internet users are diverted away from Complainant’s website to Respondent’s, thus disrupting Complainant’s business. The <myddslab.com> domain name resolves to Respondent’s own website, and is meant to divert Complainant’s customers without losing its own customers. The operation of a competing website is disruptive to the business of a complainant and thus evidence of bad faith. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); 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).”). Therefore, the Panel finds that Respondent registered and is using the <myddslab.com> domain name in bad faith under Policy ¶ 4(b)(iii) because Respondent’s registration and use of the disputed domain name disrupts Complainant’s business.
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myddslab.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 5, 2012
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