ALung Technologies, Inc. v. Miguel Gila
Claim Number: FA1308001516607
Complainant is ALung Technologies, Inc. (“Complainant”), represented by Kathleen Kuznicki of 501 Smith Dr., Pennsylvania, USA. Respondent is Miguel Gila (“Respondent”), Argentina.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hemolung.com>, registered with Backslap Domains, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 26, 2013; the National Arbitration Forum received payment August 26, 2013.
On August 27, 2013, Backslap Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <hemolung.com> domain name is registered with Backslap Domains, Inc and that Respondent is the current registrant of the name. Backslap Domains, Inc verified that Respondent is bound by the Backslap Domains, Inc registration agreement and 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, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@hemolung.com. Also on August 27, 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 September 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sits as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant, Alung Technologies, first used the HEMOLUNG mark on September 25, 2009, and now owns trademark registrations for the HEMOLUNG mark throughout North America, Australia, Asia, and Europe. Complainant provides evidence of trademark registrations for its HEMOLUNG mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,911,641 filed March 19, 2009, registered January 25, 2011), with IP Australia (“IPA”) (Reg. No. 1,320,919 registered January 18, 2010), and the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 847,074 registered March 26, 2013), among others. See Complainant’s Annex. Complainant uses the mark to designate its medical devices and products, such as medical catheters, guide wires, control consoles, gas flow regulators, medical tubing, dialysis machines, hollow fiber membranes, ultrasonic sensors, and other products.
Respondent registered the <hemolung.com> domain name January 15, 2010. Respondent does not use the mark for any products or services, and no evidence exists that Respondent uses or intends to use the domain name in connection with any bona fide offering of goods or services. Respondent is not commonly known by the <hemolung.com> domain name. The resolving website is non-functional, noting only: “DOMAIN IS NOT FOR SALE, unless you know us.” The website has otherwise been inactive for some three years. Respondent registered the <hemolung.com> domain name in bad faith, with the intent of either selling the domain name to Complainant, or to a competitor of Complainant. Respondent intentionally attempts to attract Internet users for its own commercial gain by creating a likelihood of confusion with Complainant’s mark.
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights.
The disputed domain name is identical to Complainant’s protected mark.
Respondent registered and held the disputed domain name 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 Complainant to 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 to 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.
Given 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 will draw such inferences as the Panel 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.”).
Respondent made no presentation relative to the issues in this dispute.
Identical to or Confusingly Similar
Complainant provides evidence demonstrating its rights in the HEMOLUNG mark, through its numerous trademark registrations, including with the USPTO (Reg. No. 3,911,641 filed March 19, 2009, registered January 25, 2011), IPA (Reg. No. 1,320,919 registered January 18, 2010), and the CIPO (Reg. No. TMA 847,074, registered March 26, 2013). The Panel finds that Complainant’s rights in its HEMOLUNG mark are established as a result of its various trademark registrations with international authorities, for the purposes of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). The Panel also finds that the effective date of Complainant’s rights is the date of filing the trademark registration. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). The Panel observes that Respondent is located in Argentina, and finds that Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country of Respondent’s residence. The Panel finds that notwithstanding Respondent’s residence in Argentina, Complainant’s rights in the HEMOLUNG mark endures under Policy ¶ 4(a)(i). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant makes allegations regarding the identical nature between the <hemolung.com> domain name and Complainant’s HEMOLUNG mark; however, the Panel note that the domain name includes Complainant’s mark in its entirety, with the addition of a generic top-level domain (“gTLD”) “.com.” The Panel notes that no other additions were made to the mark within the domain name, and thus finds that the <hemolung.com> domain name is identical to Complainant’s HEMOLUNG mark pursuant to Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is identical to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 such 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.”).
Complainant alleges that Respondent is not commonly known by the <hemolung.com> domain name, claiming that no evidence exists to support such an allegation. The Panel notes that the registrant of the domain name is identified as “Miguel Gila,” and finds that the WHOIS information does not suggest nominal similarity between the registrant and the <hemolung.com> domain name. The Panel therefore finds that the WHOIS information is persuasive that Respondent is not commonly known by the disputed domain name under a Policy ¶ 4(c)(ii) analysis. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that the website associated with the <hemolung.com> domain name is passively held, and displays only an advertisement stating, “DOMAIN IS NOT FOR SALE, unless you know us.” The Panel notes that Complainant does not provide evidence supporting its contentions, but the Panel nonetheless concludes that use of a domain name in order to facilitate a sale of the domain name typically results in a finding that Respondent does not have rights or legitimate interests in the domain name at issue, as Respondent does not establish use of the domain name demonstrating Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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)).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant urges that the resolving website contains the statement, “DOMAIN IS NOT FOR SALE, unless you know us.” Previous panels have held that attempts to sell a domain name are evidence of a respondent’s bad faith registration and use under Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”. The Panel notes that, while the advertisement specifies that the domain name will not be sold to unknown parties, the statement nonetheless indicates that the domain name is for sale to known entities. The Panel finds that Respondent is offering the domain name for sale, irrespective of the limited nature of its sale offer; and the Panel accordingly finds that Respondent registered and uses the <hemolung.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant claims that Respondent intentionally attempts to attract Internet users to its website in order to make a commercial gain, by creating the likelihood of confusion with Complainant’s mark. The Panel notes that the only evidence of an attempt to make a commercial gain is the statement at the resolving website indicating that the domain name is not for sale unless the prospective buyer is familiar with Respondent. Respondent’s use of the disputed domain name satisfies the requirement of making a commercial gain and the Panel finds that an inference may be made that Respondent’s use of a domain name that is identical to Complainant’s mark to attract Internet traffic is done for the purpose of attracting commercial gain and thus constitutes evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant also contends that Respondent fails to use the <hemolung.com> domain name in any manner at all for a period of over three years. The panel in Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006), stated that the respondent’s non-use of the disputed domain name for several years constituted bad faith registration and use. For reasons set out below, this Panel declines to find that Respondent fails to make an active use of the <hemolung.com> domain name. The presence of the banner offering limited sale of the domain name may be viewed as some evidence that the domain name is active. Since inactivity is often associated with websites that are under construction or have zero content, the Panel renders its decision regarding bad faith pursuant to Policy ¶4(b)(i) and not generally under 4(a)(iii) based on inactivity.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <hemolung.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 29, 2013
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