national arbitration forum

 

DECISION

 

JPI Commercial, LLP v. Alan Capalditallon

Claim Number: FA1208001458587

 

PARTIES

Complainant is JPI Commercial, LLC (“Complainant”), represented by Sharon D. Armstrong of Winthrop & Weinstine, P.A., Minnesota, USA.  Respondent is Alan Capalditallon (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <xyram.com>, registered with 1 & 1 INTERNET AG.

 

PANEL

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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2012; the National Arbitration Forum received payment on August 16, 2012.

 

On August 20, 2012, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <xyram.com> domain name is registered with 1 & 1 INTERNET AG and that Respondent is the current registrant of the name.  1 & 1 INTERNET AG has verified that Respondent is bound by the 1 & 1 INTERNET AG 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 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 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@xyram.com.  Also on August 27, 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 September 11, 2012.

 

An Additional Submission was received from Complainant on September 17, 2012, and was deemed compliant with the Forum’s Supplemental Rule 7.  An Additional Submission was received from Respondent on September 24, 2012, and was deemed compliant with Supplemental Rule 7.

 

On September 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, a pharmaceutical company, owns numerous trademark registrations for XYREM, used in connection with various pharmaceutical goods and services.  The mark was coined by Complainant’s predecessor and has been used in commerce since 1999.  It is registered in the United States, the European Community, and elsewhere.

 

Respondent registered the disputed domain name, <xyram.com>, on April 21, 2006.  Complainant contends that the disputed domain name is confusingly similar to its XYREM mark, as the relevant portion of the domain name differs from the mark only by one letter, they are phonetically the same, they have the same number of letters and syllables, and Complainant’s mark is coined.

 

Complainant states that Respondent has used the disputed domain name for a website containing revenue-generating click-through links and a picture of a medicine bottle and pills, along with a link advertising the domain name for sale.  (Complainant submitted printouts of this site dated December 28, 2010, and July 13, 2011.)  Complainant further states that after receiving a demand letter from Complainant, Respondent removed the content from the website, replacing it with a “parked” page with information about the domain name registrar.  Complainant alleges that Respondent has never made use of the domain name other than for these purposes, that Respondent is not known by the name “xyram,” and that Respondent therefore lacks rights or legitimate interests in the domain name.  Complainant further alleges that Respondent had constructive and likely actual notice of Complainant’s XYREM mark as a result of Complainant’s US and EU trademark registrations and its widespread use of the mark at the time he registered the disputed domain name.  Complainant also contends that Respondent has passively held the domain name for five years since its registration.  Complainant alleges bad faith registration and use on these grounds.

 

B. Respondent

Respondent states that he is a professional product designer in mechanical engineering, and that he is not in the pharmaceutical business, has no chemistry background, and has no intent to infringe Complainant’s XYREM trademark.  He contends that the disputed domain name is both phonetically and visually distinct from Complainant’s mark, and thus is not confusingly similar to the mark.  He further contends that he has rights or legitimate interests in the domain name, and denies having registered and used the domain name in bad faith.

 

Respondent states that he registered the disputed domain name and two other similar names in 2006 “as potential brand names for an extreme terrain sport device.”  Respondent further states that “[d]ue diligence was conducted at the time and as far as I was concerned after relevant checks I was not infringing on any company registered trademarks.”

 

The website referred to by Complainant, which included an image of a medicine bottle and pills and a statement regarding a potential sale of the domain name, was apparently generated by Sedo.com, a domain name marketplace.  Respondent states that after receiving the demand letter from Complainant, he removed the domain name from Sedo.com as a courtesy to Complainant.  He also notes that Complainant’s mark refers to a medication taken in liquid form rather than tablets.

 

C. Additional Submissions

In its Additional Submission, Complainant reiterates the arguments made in its previous submission and responds to Respondent’s arguments.  Complainant states that its predecessor applied for a Community Trademark Registration in the European Union in 1998, and asserts that had Respondent searched the Community Trademark Database in 2006 as he claims, he would have found Complainant’s registration.

 

Respondent’s Additional Submission points to additional, similar names it registered at the same time it registrered <xyram.com>, alleges it did complete due diligence for “xyram” but not “xyrem,” and that it removed the offending image from its page when informed of Complainant’s objection.  Respondent explains why its product has not launched and claims that the product will be patentable.

 

FINDINGS

The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights, and that Respondent lacks rights or legitimate interests in respect of the disputed domain name.  The Panel further finds that Complainant has not met its burden of proving that Respondent registered and is using the disputed domain name in bad faith.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The disputed domain name is comprised of the term “xyrem” with the top-level domain suffix “.com” appended thereto.  The relevant portion of the domain name is identical to Complainant’s registered trademark XYRAM, but for the substitution of the letter “e” for the letter “a.”  In light of the very similar visual appearance and pronunciation, the Panel considers the domain name to be confusingly similar to Complainant’s mark.

 

Rights or Legitimate Interests

 

Complainant’s allegations and the evidence submitted in support thereof suffice to state a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain names.  The burden of production thus shifts to Respondent, to come forward with concrete evidence of his rights or legitimate interests, since such information tends to lie particularly within a Respondent’s knowledge.  See Elizabeth Taylor Trust v. Hope, FA 1445233 (Nat. Arb. Forum June 22, 2012).  Respondent has offered no such evidence, beyond an unsubstantiated assertion that he intended to use the domain name as a brand name in the future.  The Panel therefore concludes that Complainant has met its burden on this element.

 

Registration and Use in Bad Faith

 

Paragraph 4(a)(iii) of the Policy requires Complainant to prove that Respondent both registered and is using the disputed domain name in bad faith.  A finding of bad faith registration requires proof that Respondent was aware of Complainant or its mark when he registered the domain name, and that the registration was in some way targeted at Complainant or its mark.  See, e.g., Wave59 Technologies, Int’l Inc. v. VolumeDomains.com, FA 1413550 (Nat. Arb. Forum Nov. 30, 2011); Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011).  The question is therefore whether the circumstantial evidence before the Panel supports an inference that Respondent targeted the registration of <xyram.com> at Complainant or its XYREM mark.  See, e.g., Google Inc. v. Texas Int’l Property Assocs., FA 1212995 (Nat. Arb. Forum Aug. 25, 2008).

 

Complainant asserts that Respondent had constructive notice of Complainant’s mark as a result of Complainant’s US and EU trademark registrations.  But constructive notice is insufficient under the Policy; actual knowledge is required.  See Skycam, Inc. v. Administrator, Domain / Vertical Axis, Inc, FA 1372311 (Nat. Arb. Forum Apr. 29, 2011).  And although Respondent was under no duty to perform a trademark search prior to registering the domain name, see Trade Me Limited v. Vertical Axis Inc, D2009-0093 (WIPO Apr. 7, 2009), Respondent claims that he exercised “due diligence” and “after relevant checks” did not believe he was infringing on any registered marks. Complainant questions this claim, asserting that had Respondent searched the Community Trademark Database in 2006, he would have found Complainant’s registration.  Complainant presumably desires the Panel to find actual knowledge and thus bad faith on this basis.  The Panel is skeptical of Complainant’s position on this point, as a simple search of the CTM database for XYRAM, the term of interest to Respondent, yields no indication of registrations by Complainant or any other entity.  Of course, absent other evidence that Respondent was intentionally targeting Complainant’s mark, there is no reason to expect that Respondent would have searched for Complainant’s XYREM mark rather than for XYRAM.

 

Complainant’s strongest argument is based upon the website containing an image of a medicine bottle and pills, potentially supporting an inference that Respondent was aware of the connection between the domain name and Complainant’s mark.  This website, however, was apparently automatically generated by Sedo.com, a domain name marketplace.  Respondent is of course responsible for the content of the site, as he delegated control to Sedo.com.  But, the fact that a third party with whom Respondent contracted made a connection between the domain name and Complainant’s mark in late 2010 through mid-2011 is not particularly probative of Respondent’s intentions when he registered the domain name more than four years earlier.

 

Yet, the Panel does not find Respondent’s explanation particularly persuasive either.  Respondent asserts that he registered the disputed domain name to use as a brand name for an “extreme terrain sport device,” but offers no evidence of the existence of such a device, or of any other supporting facts.  Furthermore, Respondent on some later date placed the domain name for sale on Sedo.com, but provides no explanation of this change of heart.

 

With little or no evidence on either side, the Panel is left to speculate as to Respondent’s motives upon registering the disputed domain name.  The similarity to Complainant’s mark is substantial, but the mark is not sufficiently famous or distinctive to lead the Panel to reject Respondent’s explanation as entirely implausible, nor to support an inference that Respondent must have had Complainant’s mark in mind upon registering the domain name.  The Panel, therefore, is left to decide this issue based upon the burden of proof, and finds that Complainant has failed to meet its burden of showing that Respondent registered and used the disputed domain name in bad faith.

 

DECISION

Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <xyram.com> domain name REMAIN WITH Respondent.

 

 

 

David E. Sorkin, Panelist

Dated:  September 25, 2012

 

 

 

 

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