EBSCO Industries, Inc. v. Domain Administrator / Terra Serve
Claim Number: FA1406001566834
Complainant is EBSCO Industries, Inc. (“Complainant”), represented by Wanda Dimon of EBSCO Industries, Inc., Alabama, USA. Respondent is Domain Administrator / Terra Serve (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dynamed.com>, registered with Rebel.com 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2014; the National Arbitration Forum received payment on June 26, 2014.
On Jul 02, 2014, Rebel.com Corp. confirmed by e-mail to the National Arbitration Forum that the <dynamed.com> domain name is registered with Rebel.com Corp. and that Respondent is the current registrant of the name. Rebel.com Corp. has verified that Respondent is bound by the Rebel.com 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 July 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2014 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@dynamed.com. Also on July 2, 2014, 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 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, 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
i. Complainant has used the DYNAMED mark in commerce since 1995 in connection with medical reference information systems.
ii. Complainant has a valid registration with the United States Patent and Trademark Office (“USPTO”) for the DYNAMED trademark (Reg. No. 2,524,113, registered January 1, 2002).
iii. The disputed domain name <dynamed.com> is identical to Complainant’s trademark DYNAMED.
i. Respondent is not commonly known by the disputed domain name.
ii. Respondent is not using the disputed domain name for a bona fide offering of goods or services.
i. The disputed domain name is a parked domain.
ii. When accessing the disputed domain name, the user is redirected to other websites, some being malicious URLs.
B. Respondent
a. Respondent failed to submit a Response in this proceeding.
b. Respondent registered the disputed domain name <dynamed.com> on August 31, 1995.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used 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 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 alleges that it has used the DYNAMED mark in commerce since 1995 in connection with medical reference information systems. Complainant asserts that it has a valid registration with the United States Patent and Trademark Office (“USPTO”) for the DYNAMED trademark (Reg. No. 2,524,113, registered January 1, 2002). See Compl. Attached Ex. A. The Panel notes that although Respondent resides in the Cayman Islands, it is irrelevant under Policy ¶ 4(a)(i) as Complainant need not register its mark in the country where Respondent operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant’s registration of the DYNAMED mark with the USPTO shows that it has the rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the disputed domain name is identical to the mark in which it has rights. The Panel sees that the disputed domain name <dynamed.com> is identical to the DYNAMED mark, save for the addition of a generic top-level domain (“gTLD”) “.com”. The Panel notes that the addition of a gTLD does not defeat the finding of an identical mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel therefore determines that the disputed domain name is identical to the mark in which Complainant has rights under 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.”).
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.”).
Complainant urges that Respondent is not commonly known by the disputed domain name. The Panel notes that the registrant of the disputed domain name is listed as “Domain Administrator”. In Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) the panel found that the respondent had registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders’, and that given the WHOIS domain name registration information, Respondent was not commonly known by the [<awvacations.com>] domain name. The circumstances are comparable at present because the only information available to the Panel is the information listed in the WHOIS information due to Respondent’s default. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name <dynamed.com> under Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not using the disputed domain name for a bona fide offering of goods or services. The Panel agrees that Respondent is not using the disputed domain name for a bona fide offering of goods or services, and thus the Panel finds that Respondent has no rights or legitimate interest in the domain name under Policy ¶ 4(c)(i). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
Complainant claims that the disputed domain name is a parked domain. The Panel agrees that the disputed domain name <dynamed.com> is a parked domain with no actual website, and thus the Panel finds that Respondent is responsible for the content on the page resolved to by the disputed domain name under Policy ¶ 4(b)(iv). See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”).
Complainant states that when accessing the disputed domain name, the user is redirected to other websites, some being malicious URLs. See Compl. Attached Ex. B. As the Panel agrees that the disputed domain name redirects Internet users to other websites, some of which are malicious in nature, the Panel finds evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to 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 <dynamed.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 9, 2014
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