Nuesoft Technologies, Inc. v. Larry Smith / ProfessionalThinkers
Claim Number: FA1207001453255
Complainant is Nuesoft Technologies, Inc. (“Complainant”), represented by Stephen Wooten, Georgia, USA. Respondent is Larry Smith / ProfessionalThinkers (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newmd.com>, registered with MONIKER.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2012; the National Arbitration Forum received payment on July 17, 2012.
On July 13, 2012, MONIKER confirmed by e-mail to the National Arbitration Forum that the <newmd.com> domain name is registered with MONIKER and that Respondent is the current registrant of the name. MONIKER has verified that Respondent is bound by the MONIKER 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 July 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@newmd.com. Also on July 19, 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.
A timely Response was received and determined to be complete on July 23, 2012.
On July 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant contends that:
a. Complainant owns rights in the NUEMD mark.
i. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,534,928 filed August 16, 2000; registered January 29, 2002).
ii. Complainant’s NUEMD mark is famous in the healthcare marketplace and is used to sell industry recognized healthcare management software.
iii. Complainant owns the <nuesoft.com> and <nuemd.com> domain names.
b. Respondent’s <newmd.com> domain name is confusingly similar to Complainant’s NUEMD mark. Respondent misspells Complainant’s mark by transposing the letter “e” and replacing the letter “u” with the letter “w.”
c. Respondent does not own a healthcare-related company, is not recognized in the healthcare industry, and does not own any trademark or service mark relating to the <newmd.com> domain name.
d. Respondent is not making an active use of the <newmd.com> domain name.
e. Respondent plans to auction the <newmd.com> domain name, which is evidence of bad faith registration and use.
B. Respondent
a. Respondent registered the <newmd.com> domain name on May 16, 2000, which predates Complainant’s registration of the NUEMD mark.
b. The <newmd.com> domain name contains common dictionary terms.
c. Respondent passively parks the disputed domain name while awaiting future development options.
d. Complainant first offered to buy the disputed domain name; Respondent told Complainant that Respondent may offer the domain name up for auction; and Respondent has the right to offer to sell the disputed domain name.
e. Respondent does not intend to profit from Complainant’s NUEMD mark.
Complainant filed for registration of its NUEMD mark with the United States Patent and Trademark Office on August 16, 2000. The registration was accepted on January 29, 2002 and was effective as of August 16, 2000. The Complainant has used its mark in connection with marketing healthcare management software. Moreover, Complainant owns <nuesoft.com> and <nuemd.com> domain names. Respondent registered the disputed <newmd.com> domain name on May 16, 2000. Respondent is not known by the disputed domain name and has not used it. When contacted by Complainant with an offer to purchase the disputed domain for $100, Respondent declined the offer and expressed an intention to offer it at auction.
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.
Because the panel finds that Complainant has failed to prove that Respondent registered and used the disputed domain name in bad faith, the panel does not address this element of Complainant’s complaint.
Because the panel finds that Complainant has failed to prove that Respondent registered and used the disputed domain name in bad faith, the panel does not address this element of Complainant’s complaint.
Respondent registered the disputed domain name on May 16, 2000, prior to Complainant’s trademark registration which was effective August 16, 2000 and Complainant has not contended or established that it had acquired common law rights in the mark NEUMD before May 16, 2000. As far as the record shows, Respondent registered the disputed domain name before Complainant acquired rights in its mark. In these circumstances, for bad faith registration to be established, the trademark registration must precede the domain name registration; and that requirement was not met here. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000). The panel finds that Complainant has failed to meet its burden to prove that Respondent registered the disputed domain name in bad faith as is required by Policy ¶4(a)(iii).
The panel rejects Respondent’s assertion that Complainant engaged in reverse domain name hi-jacking. No evidence was proffered to support that contention.
Because Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <newmd.com> domain name REMAIN WITH Respondent.
Mark McCormick, Panelist
Dated: August 14, 2012
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