Transdermal Innovations, Inc. v. Jack Hamilton
Claim Number: FA1208001457207
Complainant is Transdermal Innovations, Inc. (“Complainant”), represented by David E. Jefferies of Wood Herron & Evans, LLP, Ohio, USA. Respondent is Jack Hamilton (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <neticalpatch.com> and <neticalpatches.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2012; the National Arbitration Forum received payment on August 9, 2012.
On August 10, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <neticalpatch.com> and <neticalpatches.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@neticalpatch.com, postmaster@neticalpatches.com. Also on August 13, 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 September 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
i. NETICAL PATCH (Reg. No. 3,766,194 filed February 27, 2009; registered March 30, 2010) and
ii. NETICAL PATCH & Design (Reg. No. 3,766,193 filed February 27, 2009; registered March 30, 2010).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NETICAL PATCH mark. Respondent’s domain names are confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <neticalpatch.com> and <neticalpatches.com> domain names, and that Respondent registered and uses the domain names in bad faith.
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 owns two trademark registrations with the USPTO for the NETICAL PATCH mark: NETICAL PATCH (Reg. No. 3,766,194 filed February 27, 2009; registered March 30, 2010) and NETICAL PATCH & Design (Reg. No. 3,766,193 filed February 27, 2009; registered March 30, 2010). The Panel finds that Complainant’s USPTO trademark registrations sufficiently demonstrate Complainant’s rights in the NETICAL PATCH mark pursuant to Policy ¶ 4(a)(i), dating back to the filing date of February 27, 2009. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to 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”).
Complainant contends that Respondent’s <neticalpatch.com> and <neticalpatches.com> domain names are identical and confusingly similar to Complainant’s NETICAL PATCH mark. The <neticalpatch.com> domain name differs from Complainant’s NETICAL PATCH mark by the removal of a space and the addition of the generic top-level domain (“gTLD”) “.com.” These changes are irrelevant to a Policy ¶ 4(a)(i) analysis and, thus, the Panel concludes that Respondent’s <neticalpatch.com> domain name is identical to Complainant’s NETICAL PATCH mark for the purpose of Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
As for the <neticalpatches.com> domain name, that domain name also contains the gTLD “.com” and does not contain the space found in Complainant’s mark. The addition of a gTLD and the removal of a space does not sufficiently distinguish the domain names from Complainant’s mark under Policy ¶ 4(a)(i). 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)). Respondent also added the letters “e” and “s” to Complainant’s mark in the <neticalpatches.com> domain name. The addition of two letters to Complainant’s mark also fails to remove the disputed domain name from the realm of confusing similarity. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Consequently, the Panel holds that Respondent’s <neticalpatches.com> domain name is confusingly similar to Complainant’s NETICAL PATCH mark according to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent is not commonly known by the <neticalpatch.com> and <neticalpatches.com> domain names. Complainant alleges that Respondent does not own any trademark or intellectual property rights in the disputed domain names. While Complainant admits that Respondent was an authorized distributor of Complainant’s products, Complainant argues that Respondent did not have permission to use Complainant’s NETICAL PATCH mark in a domain name. Complainant further claims that the WHOIS information, which identifies “Jack Hamilton” as the registrant of the disputed domain names, does not indicate that Respondent is commonly known by the domain names. Because the Respondent did not respond to this case and did not rebut any of Complainant’s allegations, the Panel finds that Respondent is not commonly known by the <neticalpatch.com> and <neticalpatches.com> domain names under 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).
According to Complainant, Respondent uses the <neticalpatch.com> and <neticalpatches.com> domain names to sell Complainant’s products without Complainant’s authorization. As Complainant’s allegation is not contradicted, the Panel finds that Respondent is using the <neticalpatch.com> and <neticalpatches.com> domain names to sell Complainant’s products without Complainant’s permission. Accordingly, the Panel holds that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that, although the respondent was a distributor of the complainant’s product, the respondent did not have permission to use the complainant’s mark in its registered domain name and, therefore, was not using the domain name as a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s registration and use of the <neticalpatch.com> and <neticalpatches.com> domain names disrupts Complainant’s business. Complainant argues that Respondent continues to use the disputed domain names to sell Complainant’s products even though the distribution agreement between Complainant and Respondent was cancelled. Complainant contends that Respondent is diverting potential customers from Complainant and to Respondent, which Complainant asserts constitutes competition. The Panel finds that Respondent’s registration and use of the disputed domain names disrupts Complainant’s business, and therefore concludes that Respondent registered and uses the <neticalpatch.com> and <neticalpatches.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Complainant argues that Respondent is also attempting to commercially benefit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name. Complainant alleges that a visitor to Respondent’s websites would easily be confused into believing that Respondent’s websites are owner or sponsored by Complainant because of Respondent’s sale of Complainant’s products. Complainant claims that Respondent commercially benefits from the unauthorized sale of Complainant’s products. The Panel hold that Respondent registered and uses the <neticalpatch.com> and <neticalpatches.com> domain names in bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the NETICAL PATCH mark. Complainant argues that Respondent's offering of Complainant's own products indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees and finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds 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 <neticalpatch.com> and <neticalpatches.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 19, 2012
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