Babak J. Mehrara, M.D. v. Vladimir Smirnov
Claim Number: FA1310001522831
Complainant is Babak J. Mehrara, M.D. (“Complainant”), represented by J.S. Walland, New York, USA. Respondent is Vladimir Smirnov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <babakmehrara.com>, registered with INTERNET.BS CORP.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2013; the National Arbitration Forum received payment on October 4, 2013.
On October 6, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <babakmehrara.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 October 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@babakmehrara.com. Also on October 10, 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 November 6, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s<babakmehrara.com> domain name, the domain name at issue, is confusingly similar to Complainant’s BABA MEHARA mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Babak J. Mehrara, M.D., is a plastic surgeon who treats cancer patients at Memorial Sloan-Kettering Cancer Center and is known as Babak Mehrara and has used this name in his professional practice, acquiring distinctive meaning since 1993. The disputed domain name is identical to Complainant’s BABAK MEHRARA mark.
Respondent has no rights or legitimate interests in respect of the domain name. Respondent initially posted a photograph and misleading biographical sketch of Complainant on the disputed website. After initial contact with Respondent, Respondent removed the photo and biographical information and replaced them with vulgar sexually explicit graphics purportedly showing the results of plastic surgery. Respondent has attempted to extort money from Complainant in order to sell the website registration. Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant.
Respondent registered the <babakmehrara.com> domain name on January 25, 2013.
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 is a plastic surgeon who treats cancer patients at Memorial Sloan-Kettering Cancer Center. Although Complainant does not specify whether his mark is BABAK MEHRARA or BABAK J. MEHRARA, M.D., Complainant alleges that he is known as “Babak Mehrara.” The Panel therefore infers, for the purposes of this dispute, that Complainant’s mark is BABAK MEHRARA. Although Complainant has not registered his BABAK MEHRARA mark with a trademark agency, Policy ¶ 4(a)(i) does not require Complainant to register its mark with a trademark agency, so long as it establishes secondary meaning in its mark. 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 contends that he is known as Babak Mehrara and has used this name in his professional practice, acquiring distinctive meaning since 1993. Complainant has a physician profile on the “Memorial Sloan-Kettering Cancer Center,” stating his specialty in cancer reconstruction and clinical expertise in “Plastic and Reconstructive Surgery; Breast and Facial Reconstruction; Microsurgery.” The Panel also notes that Complainant’s physician profile contains links to “Clinical Trials Co-Investigated by Babak J. Mehrara,” “Publications by Babak J. Mehrara,” and a video titled “Meet Reconstructive Surgeon Babak Mehrara,” showing Complainant’s use of his mark. In light of the fact that Complainant has used its BABAK MEHRARA mark continuously since 1993, the Panel finds that Complainant has established secondary meaning in its mark pursuant to a Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Accordingly, the Panel finds that Complainant has rights in his BABAK MEHRARA mark under Policy ¶ 4(a)(i).
Respondent’s <babakmehrara.com> domain name is identical to Complainant’s BABEK MEHRARA mark. Respondent removes the space in Complainant’s BABAK MEHRARA mark and adds the generic top-level domain (“gTLD”) “.com.” In Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the panel found that <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.” Therefore, Respondent’s <babakmehrara.com> domain name is identical to Complainant’s BABAK MEHRARA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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); 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.”).
Respondent does not appear to be commonly known by the <babakmehrara.com> domain name. The WHOIS information for the disputed domain name lists “Vladimir Smirnov” as the registrant. Additionally, Respondent fails to provide any evidence that it is known by the domain name. Prior panels have concluded that where the WHOIS information and other evidence does not indicate that respondent is known by the domain name, respondent is not commonly known by the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Consequently, Respondent is not commonly known under the <babakmehrara.com> domain name under Policy ¶ 4(c)(ii).
Respondent initially posted a photograph and misleading biographical sketch of Complainant on the website resolving from the <babakmehrara.com> domain name. The Panel notes that Internet users may confuse Respondent’s website for Complainant’s website and thus find that Respondent is attempting to pass itself off as Complainant. As such, Respondent has no bona fide offering of goods or services, nor is it making a legitimate noncommercial or fair use of the domain name. Because Respondent used the domain name to pass itself off as Complainant, Respondent is not using the <babakmehrara.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
Complainant states that after he initially contacted Respondent, Respondent removed Complainant’s photo and corresponding biographical information and replaced them with vulgar sexually explicit graphics purportedly showing the results of plastic surgery. Respondent’s use of the <babakmehrara.com> domain name to post an adult-oriented comic is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.See Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with [adult-oriented] material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has attempted to extort money from Complainant in order to sell the website registration. Respondent placed the e-mail address “3800USD@[redacted].com” on its website, in an apparent effort to extort funds from Complainant. The Panel notes that the amount of $3,800 sought by Respondent could be considered excessive to Respondent’s out-of-pocket costs for the disputed domain name. In World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000), the panel found that respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs. Thus, the Panel finds that Respondent has registered and is using the <babakmehrara.com> domain name in bad faith under Policy ¶ 4(b)(i).
Respondent is using the <babakmehrara.com> domain name to misleadingly divert consumers or to tarnish Complainant’s reputation. Respondent is attempting to attract users to its own website by disguising itself as Complainant. Accordingly, Respondent has used the domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <babakmehrara.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 7, 2013
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