Sonny Gambhir v. Al Perkins
Claim Number: FA1307001507793
Complainant is Sonny Gambhir (“Complainant”), Canada. Respondent is Al Perkins (“Respondent”), Bailiwick of Jersey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <appledentalmilton.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2013; the National Arbitration Forum received payment on July 1, 2013.
On July 3, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <appledentalmilton.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 July 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2013 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@appledentalmilton.com. Also on July 9, 2013, 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 July 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
A. Complainant
Complainant contends it has been providing family dental services for over six years through its business name and trademark, APPLE DENTAL MILTON. Complainant at one point owned the <appledentalmilton.com> domain name, and used the disputed domain name in connection with all methods of advertising.
B. The <appledentalmilton.com> domain name is identical to Complainant’s mark.
C. Respondent does not own any rights or legitimate interests in the <appledentalmilton.com> domain name.
a. Respondent is not known by the <appledentalmilton.com> domain name.
b. Respondent is utilizing the disputed domain name to redirect Internet users to adult-oriented material.
c. Respondent is attempting to profit from the sale of the disputed domain name to Complainant at an asking price of $10,000.
D. Respondent registered and is using the <appledentalmilton.com> domain name in bad faith.
a. Respondent offered to sell the disputed domain name to Complainant for $10,000.
b. Respondent is engaging in tarnishment of Complainant’s mark through registration of an identical domain name for purposes of propagating adult-oriented materials
c. Respondent has disrupted Complainant’s business. Complainant’s patients have called Complainant to express their disapproval of the adult content Respondent has connected to the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding however he did send several emails once notified of this proceedings pendency. Those emails can be summarized as follows;
a) In an email dated July 9, 2013, Respondent stated “these are a pair of scammers who tried to buy the domain and because they did not like the price they are trying to get it for nothing.”
b) In another email dated July 9, 2013, Respondent stated “Another 20 days sounds good to me I will respond on the last day, these people forget to renew their domain and then want me to pay for it and give it back to them for nothing, are they serious? And now they are trying to scam it back from me.”
c) In an email dated July 10, 2013, Respondent stated “Seriously is this guy a joker? There is no signature on any of the paperwork, the complaint is not correctly filled in, in fact has a schoolboy done this complaint?”
The Complainant is Sonny Gambhir who lists his address as Milton, Ontario Canada. The Complainant is one of two Dentists who operate Apple Dental Milton which opened in 2007 and registered the disputed domain name to use as its mark. Complainant has used APPLEDENTALMILTON.COM as its mark continuously since 2007 including using the domain name on all of its advertising materials.
The Respondent is Al Perkins who lists his address as St. Helier, Jersey. Respondent registered the disputed domain name on or about May 7, 2011.
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 not registered the disputed domain name as a trademark however past panels have found that ownership of a registered trademark is not necessary for establishing rights under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant asserts common law rights based on prior use. The Panel reviews the assertions made and accompanying evidence to determine whether a Complainant has established common law rights that are sufficient under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Common law rights require that Complainant’s mark has established a secondary meaning. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning). In The Gourmet Depot v. DI S.A. / Administration DomComplainant, FA 1378760 (Nat. Arb. Forum June 21, 2011), the panel stated that evidence relevant to proving secondary meaning “includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” Here, Complainant contends it has been providing family dental services for over six years through its business name and trademark, APPLE DENTAL MILTON. Complainant claims prior ownership of the <appledentalmilton.com> domain name, and prior use of the disputed domain name in connection with all methods of advertising. The Panel notes that Complainant has attached exhibits including a copy of a business card, a refrigerator magnet, and a print advertisement, all incorporating Complainant’s mark and the disputed domain name. See Complainant’s Doc IDs 15551557, 15551558, and 15551559. The Panel also notes that Complainant states it has been in business since May 2007. “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.” See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000). Because Complainant has alleged to be in continuous business for at least six years and has provided evidence of continuous advertising efforts that incorporate its APPLE DENTAL MILTON mark the Panel finds that Complainant has sufficiently established secondary meaning and thus has rights in the mark under Policy ¶ 4(a)(i) by way of common law rights. Furthermore the Respondent in his emails admitted the prior ownership and use of the disputed domain by Complainant.
Complainant next contends that the <appledentalmilton.com> domain name is identical to Complainant’s mark. The Panel notes that Respondent has added the generic top level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD is irrelevant in regards to Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). The Panel also finds that there is nothing noteworthy about the absence of spacing in the domain name—indeed spacing is prohibited in Internet domain names. 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”). The Panel finds that Respondent’s <appledentalmilton.com> domain name is identical to Complainant’s APPLE DENTAL MILTON mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant contends that Respondent does not own any rights or legitimate interests in the <appledentalmilton.com> domain name. Complainant claims that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS record for the disputed domain name lists “Al Perkins” as the domain name registrant. The Panel finds that as Respondent has self-identified as Mr. Al Perkins in e-mail correspondence with the Forum, Policy ¶ 4(c)(ii)’s path to rights and legitimate interests is found unsatisfied. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (rejecting the notion that respondent was commonly known by the domain name when the evidence before the court made it clear this was not the case). Because neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <appledentalmilton.com> domain name.
Complainant next alleges Respondent is utilizing the disputed domain name to redirect Internet users to adult-oriented material. In Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002), the panel found that using the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). The Panel notes that there is evidence that a Google search for Complainant’s business takes Internet users to a listing of the <appledentalmilton.com> domain name in a search result, with a blurb that boasts the availability of “sex chats with adults” through the Rudespace.com business. See Doc ID 15551562. The Panel finds that Respondent’s use of the <appledentalmilton.com> domain name to redirect Internet users to an adult-oriented website does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii).
Further, Complainant claims Respondent is attempting to profit from the sale of the disputed domain name to Complainant by setting the sales price of $10,000. The Panel notes that in an e-mail correspondence between the two parties Respondent offered to sell the disputed domain name for $7,500 and then increased the price to $10,000 in response to Complainant’s initial shock at the $7,500 price. See Doc ID 15551556. Past panels have found that an offer by a respondent to sell a disputed domain name to a complainant provides further evidence that the respondent does not have legitimate rights or interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). The Panel finds that Respondent’s offer to sell the <appledentalmilton.com> domain name to Complainant, at various increased prices, further demonstrates Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims Respondent registered and is using the <appledentalmilton.com> domain name in bad faith. Complainant asserts that Respondent offered to sell the disputed domain name to Complainant for $10,000. Past panels have deemed such an offer to sell on the part of a respondent to be in violation of Policy ¶ 4(b)(i) and thus a bad faith registration and use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). The Panel notes that the sale price offered by Respondent is likely to be well above the out-of-pocket costs suffered in connection with the disputed domain name. Offers in excess of out-of-pocket costs are another indication of bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). The Panel finds that Respondent’s offer to sell the <appledentalmilton.com> domain name to Complainant for $10,000 violates Policy ¶ 4(b)(i) and results in bad faith registration and use.
The Panel also finds that Respondent’s decision to register and use this domain name for purposes of hosting adult-oriented content is bad faith under the totality of the circumstances. See, e.g., Google Inc. v. Java Den Web Solutions, FA 1355351 (Nat. Arb. Forum Mar. 20, 2011) (“Tarnishment usually involves a deliberate attempt to devalue a mark by associating it with things that dilute or damage its commercial value.”). Previous panels have found that registration and use of an infringing domain name to host highly objectionable content such as adult-oriented material is prime evidence of Policy ¶ 4(a)(iii) bad faith. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <appledentalmilton.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 15, 2013
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