Suneva Medical, Inc. v. Servet Temir / Nokta France
Claim Number: FA1201001425709
Complainant is Suneva Medical, Inc. (“Complainant”), represented by Stewart M. Brown, California, USA. Respondent is Servet Temir / Nokta France (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <suneva.com>, registered with 1&1 Internet AG.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2012; On February 1, 2012, Complainant filed a Pre-Commencement Request to Withdraw under National Arbitration Forum Supplemental Rule 12(a) so that it could translate the Complaint into French; Complainant’s Request was approved on February 1, 2012; Complainant resubmitted its translated Complaint on February 27, 2012; the National Arbitration Forum received payment on February 27, 2012. The Complaint was submitted in both French and English.
On February 28, 2012, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <suneva.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 March 5, 2012, the Forum served the French language Complaint and all Annexes, including a French language Written Notice of the Complaint, setting a deadline of March 26, 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 firstname.lastname@example.org. Also on March 5, 2012, the French language Written Notice of the Complaint, notifying Respondent of the email 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 April 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant makes the following submissions.
1. Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for its SUNEVA MEDICAL mark (Reg. No. 3,998,651 filed April 23, 2009; registered July 11, 2011).
2. Complainant first used the SUNEVA MEDICAL mark on April 13, 2009 in connection with medical devices and other medical products.
3. Complainant is an innovator in the field of dermal fillers for aesthetic medical use.
4. After Complainant received its trademark, the owner of the disputed domain name changed the appearance of the resolving website from solar energy to focus on dermal fillers.
5. Complainant is not aware of any legitimate use of the disputed domain name by Respondent.
6. Respondent is seeking to “squat” on a domain name that is confusingly similar to Complainant’s own “sunevamedical” domain name and its “SUNEVA MEDICAL” trademark.
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is an innovator in the field of dermal fillers for aesthetic medical use.
2. Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for its SUNEVA MEDICAL mark (Reg. No. 3,998,651 filed April 23, 2009; registered July 11, 2011).
3. Complainant first used the SUNEVA MEDICAL mark on April 13, 2009 in connection with medical devices and other medical products.
4. Respondent registered the disputed domain name on September 12, 2006 and has subsequently re-registered it.
5. Initially, Respondent devoted the website to which the domain name resolved to solar energy products. But at a date after Complainant received its trademark for medical devices including implants, Respondent changed the contents and appearance of the website from one dealing with solar energy products to one referring to dermal fillers and carrying the Complainant’s name.
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.”).
Preliminary issue: Language of the Proceeding
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the French language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The Panel finds that Complainant has rights in the SUNEVA MEDICAL mark and that the disputed domain name is confusingly similar to the mark. In that regard, Complainant argues that it has rights in the SUNEVA MEDICAL mark through its trademark registration with the USPTO (Reg. No. 3,998,651 filed April 23, 2009; registered July 11, 2011). The Panel finds that Complainant’s trademark registration provides it with protectable rights under Policy ¶ 4(a)(i) and that those rights date back to the filing date of April 23, 2009. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a) (i).”); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
As Complainant has rights in the SUNEVA MEDICAL mark, the next question that arises is whether the disputed domain name is confusingly similar to the mark. The applicable comparison made under Policy ¶ 4(a) (i) to enable that question to be answered is between the disputed domain name and Complainant’s trademark and it is generally accepted that the comparison is to be made at the time the Complaint is filed. The Panel notes that the <suneva.com> domain name does not include the MEDICAL portion of Complainant’s mark. In the opinion of the Panel, however, an internet user would assume that the domain name, invoking as it does, the substance of the trademark, is referring to the Complainant and thus to its trademark of the same name. The domain name also adds the generic top-level domain (“gTLD”) “.com” which of course does not alter the substance of the domain name or its similarity to the trademark. Therefore, the Panel determines that the disputed domain name is confusingly similar to Complainant’s mark as proscribed in Policy ¶ 4(a) (i) as those minor changes are non-distinguishing. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a) (i) analysis).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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); 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.”).
Having regard to those principles, the Panel finds that Complainant has made out its prima facie case. The basis of which the Panel finds Complainant has made out its prima facie case is as follows.
(a)the disputed domain name resolves to a website for the contents of which Respondent is clearly responsible and which deals with dermal fillers, a medical field in which Complainant works in which it is an innovator and for which it has a trademark that covers specifically described medical products and implants;
(b)this use of the disputed domain name is in sharp contrast to the use to which Respondent put the domain name before Complainant obtained its trademark for SUNEVA MEDICAL on July 11, 2011; prior to that time, the website was devoted to solar energy products; for instance, the screenshot adduced in evidence by Complainant and showing the website as at May 9, 2008 shows that the website dealt with solar energy; moreover, a search conducted by the Panel using the Wayback Machine at www.archive.org shows that on January 28, 2011, the Respondent’s website dealt with “Energie renouvelable” , but Complainant ‘s screenshot of the site, taken on August 10, 2011, only a month after Complainant obtained its trademark, shows that the site was by then devoted to “dermal fillers” with specific references to Complainant consisting of the words “ Suneva Medical”, giving the false impression that it was Complainant’s website. It also appears from the evidence that the disputed domain name uses the term “Suneva Medical” more than 66 times in the source code for the domain name. In other words, by August 10, 2011, Respondent was clearly attempting to pass itself off as Complainant through its use of the domain name, falsely claiming that it was Complainant and that its website was devoted to the same medical products as Complainant for which Complainant had just received a registered trademark;
(c) these activities , involving as they did, the use of Complainant’s trademark, were engaged in by Respondent without the consent or approval of Complainant;
(d) such a use of the domain name cannot give rise to a right or legitimate interest;
(e)Respondent’s use of the domain name just described is also not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
(f)Moreover, the Panel has noted from the evidence of the WHOIS information on record that it identifies “Servet Temir / NOKTA FRANCE” as the registrant. Based upon this information, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii) as the WHOIS information does not indicate any relationship between Respondent and 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
These matters go to establish the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, it is clear that Respondent has acted in bad faith in the use to which it is currently putting the disputed domain name. As has been pointed out, Respondent originally used the domain name to promote solar energy products. However, at some time after Complainant obtained its trademark for SUNEVA MEDICAL, Respondent changed the complexion of its website so that it dealt with the specific medical products for which Complainant had obtained its trademark. It went further and used Complainant’s name on the website , giving the false impression that it was in fact the website of Complainant. Specifically, it is apparent from the evidence that after Complainant received its trademark registration, Respondent changed its website and began to refer to “dermal filler” products on the site to give the false impression that it supplied or was associated with those products or was endorsed by Complainant in supplying them. It also placed on the website specific references to Complainant by using the words “Suneva Medical” thereby giving the false impression that it was Complainant’s website. It also appears from the evidence that the domain name uses the term “Suneva Medical” more than 66 times in the source code for the domain name. In other words, Respondent is now attempting to pass itself of as Complainant through its use of the domain name and in attempting to mislead internet users.
This analysis makes it plain that Respondent has used and is currently using the disputed domain name in bad faith.
But the Policy, as presently drafted, makes it equally plain that the domain name must also have been registered in bad faith. The disputed domain name was registered on September 12, 2006. However, Complainant’s SUNEVA MEDICAL was not registered until July 7, 2011. Indeed, it was not applied for until April 23, 2009. So, the disputed domain name was registered two and a half years before the trademark was applied for and almost 5 years before it was granted.
In the normal course of events it would be said that Respondent could not have been motivated by bad faith towards Complainant and its trademark at the time the domain name was registered, for at that time the trademark did not exist.
It is for that reason that prior UDRP panels have found that where a respondent registers a domain name before a complainant uses the applicable mark, bad faith registration cannot exist under Policy ¶ 4(a) (iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Nat. Arb. Forum Mar. 28, 2005) (because the respondent’s domain name registration predated the complainant’s trademark filing date and alleged date of first use, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name”).
However, a recent development would suggest that in some specific circumstances, such as those in the present case, it might be said that a Respondent had registered a domain name in bad faith even if it had been registered before the trademark was registered. That situation is where a Respondent has re-registered the domain name in circumstances that would amount to bad faith if they had occurred after the trademark had been registered.
“The operative verbs in that provision (Policy ¶ 4(a) (iii)) are clearly conjunctive – registered and used. …ICANN…, when it adopted the Policy and the Rules, apparently made a conscious decision at the time of adoption to require two distinct “infringing” acts. …The two distinct inquiries required under the UDRP have been criticized as a shortcoming that can countenance unscrupulous conduct, and has led in a few cases to a respondent that engaged in abusive use getting away with it because of insufficient proof of abusive registration. Several subsequently adopted Policy counterparts have declined to require bad faith in both registration and use for transfer.”
Before proceeding, it is useful to note that the present case is clearly one where Respondent’s conduct has clearly been abusive. It is also useful to note that in some policies such as the Australian Policy for .au, it is necessary for a Complainant to prove only that the domain name was registered or used in bad faith, but not both.
The panel then proceeded to consider the effect of Policy ¶ 2 that requires a registrant to ensure that “… the registration of the domain name will not infringe upon or otherwise violate the rights of any third party…”.
The panel interpreted Policy ¶ 2 as follows: “Equally clear, on this Panel's reading, is the introductory clause of paragraph 2 that sets its applicability as a matter of contract. A registrant provides his undertaking “By applying to register a domain name, or by asking [a registrar] to maintain or renew a domain name registration.” … Paragraph 2 does not distinguish among the initial date of registration and subsequent requests for renewal – the undertaking by its terms applies as of all such dates.”
The panel then noted that in the case before the panel,
“… at the time of its most recent renewal last year Respondent's use of the disputed domain name had become prototypical cybersquatting and in no way related to any of Respondent's businesses. The change came about not through intervening circumstances unrelated to Respondent's prior good faith use but by Respondent's conscious choice to change website content. If Respondent's paragraph 2 representation and warranty were given in October 2009 it would have been knowingly false. To summarize, in this Panel's assessment:
- Respondent intentionally changed its use of the disputed domain name.
- The new use is unrelated to Respondent's earlier business.
- The new use is textbook cybersquatting.
- The new use occurred prior to the renewal held to be a registration subject to for purposes of paragraph 4(a) (iii).
- There has been no legitimate use since renewal.”
The panel then noted that there were cases where “… a Respondent that originally registered a domain name in good faith retains ownership it is free continuously and flagrantly to exploit Complainant's trademark – license it to a competitor, perhaps – without fear of a Policy proceeding. These consequences could of course be said to flow in part from the conjunctive language of paragraph 4(a) (iii). Yet in this Panel's considered opinion it is not unreasonable to temper those consequences by giving the plain language of paragraph 2 equal standing with the plain language of paragraph 4(a) (iii).”
Applying those principles to the case then before it and to give a practical operation to both of Policy ¶ 2 and Policy ¶ 4(a) (iii), the panel concluded that:
“Based upon the record in this proceeding, the Panel deems Respondent's 2009 renewal of the disputed domain name to be the date on which to measure whether the disputed domain name was registered and used in bad faith for purposes of paragraph 4(a) (iii), and finds that the Respondent registered and used the disputed domain name in bad faith. The Panel further finds that Respondent's use of it to redirect to a website that includes hyperlinks to Complainant's competitors not legitimate under paragraph 4(a) (ii).”
Although the debate on this issue is almost certainly not closed, the Panel is of the view that a similar approach should be taken in the present case, in the light of the clearly bad faith activities of Respondent that were carried out after the renewal of the disputed domain name. Moreover, when the dates when various events occurred are examined closely, the present case is just as deserving of a finding of bad faith registration of the domain name after renewal as was Eastman Sporto Group LLC v. Jim and Kenny (supra).
In the present case, as has already been pointed out, the sequence of events was as follows: for some years after registration of the disputed domain name, Respondent had devoted its website to solar energy; the screenshot adduced in evidence by Complainant and showing the website as at May 9, 2008 shows that the website dealt with solar energy; moreover, a search conducted by the Panel using the Wayback Machine at www.archive.org shows that on January 28, 2011, the Respondent’s website dealt with “Energie renouvelable” . The evidence also shows that Complainant’s trademark was registered on July 11, 2011. Shortly thereafter and no later than August 10, 2011, as is shown by a screenshot of that date adduced in evidence by Complainant, the new website appeared and it is clear that this was devoted not solar energy but to medical products and that it carried Complainant’s name and trademark without Complainant’s permission. The only conclusion that can be reached from this sequence of events is that Respondent changed the contents of its website because the trademark had been granted and in circumstances that show bad faith.
Since then, it appears from a search using the Domain Tools WHOIS service that the registration of the disputed domain name was renewed on September 27, 2011, i.e., shortly after the known date on which the new contents of Respondent’s website were on public display, namely August 10, 2011. In other words, Respondent renewed the registration after changing the contents of its website so that it traded on Complainant’s name, improperly used Complainant’s name and trademark and falsely claimed an association with Complainant’s medical products which are known as dermal fillers. Respondent knew, of course, of the changes it had made, as it was responsible for them and clearly knew from that time that it would be actively misleading the internet public by the false claims to be made on its website. Moreover, such a renewal must be taken to have been in breach of paragraph 2 of the Policy because it was clearly infringing upon and violating the rights of a third party, namely Complainant.
The events that occurred also meet all of the criteria set out in Eastman Sporto Group LLC v. Jim and Kenny (supra), namely:
(a) “Respondent intentionally changed its use of the disputed domain name.”
(b) “The new use is unrelated to Respondent's earlier business.”
(c) “The new use is textbook cybersquatting”.
(d)”The new use occurred prior to the renewal held to be a registration subject to for purposes of paragraph 4(a)(iii).”
(e)”There has been no legitimate use since renewal.”
Accordingly, in all the circumstances and giving full effect to the combined operation of Policy ¶ 2 and Policy ¶ 4(a) (iii), the Panel finds that the renewal of the registration of the disputed domain name was in bad faith and that, as a result, the disputed domain name was registered and used in bad faith.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <suneva.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Dated: April 12, 2012
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