Implantech Associates, Inc. v. Norbert Kiss / NKG Services LLC / InvisiDerm Healthcare / InvisiDerm, LLC / Company Admin / Invisi Derm / Private Registration US / Registration Private / Domains By Proxy, LLC
Claim Number: FA1504001617336
Complainant is Implantech Associates, Inc. (“Complainant”), represented by David A. Plumley of Christi, Parker & Hale, LLP, California, USA. Respondent is Norbert Kiss / NKG Services LLC / InvisiDerm Healthcare / InvisiDerm, LLC / Company Admin / Invisi Derm / Private Registration US / Registration Private / Domains By Proxy, LLC (“Respondent”), represented by Alexis Crawford Douglas of K&L Gates LLP, Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <myinvisiderm.com>, <myinvisiderm.info>, <myinvisiderm.biz>, <myinvisiderm.co>, <myinvisiderm.org>, <invisiderm.co>, <myinvisiderm.mobi>, <invisiderm.mobi> and <invisiderm.biz>, registered with Melbourne IT, Ltd (R141-LRMS); GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2015; the Forum received payment on April 30, 2015.
On May 1, 2015, and June 26, 2015 GoDaddy.com, LLC confirmed by e-mail to the Forum that the <myinvisiderm.biz>, <myinvisiderm.co>, <myinvisiderm.org>, <myinvisiderm.mobi>, <invisiderm.co>, <invisiderm.mobi>, <invisiderm.biz>, and <myinvisiderm.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 5, 2015, Melbourne IT, Ltd (R141-LRMS) confirmed by e-mail to the Forum that the <myinvisiderm.info> domain name is registered with Melbourne IT, Ltd (R141-LRMS) and that Respondent is the current registrant of the name. Melbourne IT, Ltd (R141-LRMS) has verified that Respondent is bound by the Melbourne IT, Ltd (R141-LRMS) 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 May 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2015 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@myinvisiderm.com, postmaster@myinvisiderm.info, postmaster@myinvisiderm.biz, postmaster@myinvisiderm.co, postmaster@myinvisiderm.org, postmaster@myinvisiderm.mobi, postmaster@invisiderm.co, postmaster@invisiderm.mobi, and postmaster@invisiderm.biz. Also on May 12, 2015, 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.
A timely Response was received and determined to be complete on June 22, 2015.
Complainant’s additional submission was received and determined to be compliant on June 26, 2015, and Respondent’s additional submission was received and determined to be compliant on June 29, 2015.
On June 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
In its Complaint and Additional Submission, Complainant alleges, among other things, the following:
Complainant utilizes the INVISIDERM mark in connection with its distribution of medical products, and it has earned significant goodwill in association with the products connected to that mark.
Complainant holds a registration for the INVISIDERM trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) (as Registry No. 2,882,688, registered September 7, 2004).
Respondent registered the contested domain names <myinvisiderm.biz>, <invisiderm.co>, <myinvisiderm.co>, <myinvisiderm.org>, <myinvisiderm.mobi>, <invisiderm.mobi>, <invisiderm.biz>, <myinvisiderm.info> and <myinvisiderm.com> in 2010 and 2011.
The domain names are confusingly similar to Complainant’s INVISIDERM mark.
Respondent holds no trademark or service mark that is identical to any of the disputed domain names.
Respondent has not been commonly known by any of the domain names.
Complainant has given no authorization to Respondent to use the INVISIDERM mark in connection with domain name registrations.
Respondent has not employed the domain names in connection with any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Instead, Respondent uses the domain names to redirect Internet users to a website which sells products for the healing of wounds, and for prevention and management of the formation of scar tissue, which use competes with Complainant’s business.
Respondent has no rights to or legitimate interests in respect of any of the disputed domain names.
Respondent attempts to profit from its use of the domain names by misleading Internet users as to the possibility of an association between Complainant and the domain names and their resolving website.
Respondent registered and uses all of the domain names in bad faith.
B. Respondent
In its Response and Additional Submission, Respondent asserts, inter alia, as follows:
The pertinent WHOIS information plainly indicates a direct relationship between Respondent and the contested domain names.
Respondent has rights in the mark INVISIDERM under the common law for the marketing of circulatory health technologies.
Respondent has been commonly known by the disputed domain names for at least the past four years.
Respondent therefore has rights to and legitimate interests in the domain names.
Respondent has operated the domain names in connection with a bona fide offering of goods and services unrelated to the products offered under Complainant’s INVISIDERM mark.
Complainant’s INVISIDERM mark should not be considered to encompass “medical products” in general.
Respondent registered the domain names to further its own circulatory health business, not to disrupt the business of Complainant.
Rather Complainant’s product offered under the INVISIDERM mark is a type of silicone gel sheet used for topically treating scar tissue after cosmetic surgery.
Complainant’s product is distinguishable from Respondent’s product, D’OXYVA, which, unlike Complainant’s product which affects the skin externally, instead affects the body’s processes internally, specifically the vasodilation process, thus benefitting underlying conditions related to circulation.
Because Complainant’s product and Respondent’s product are distinguishable, they are not commercial competitors.
Respondent registered and is using the contested domain names in good faith.
This dispute is outside the scope of the Policy.
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."
From our review of the submissions of the parties, it is clear that this is not a dispute within the contemplation of the Policy, which is intended solely to address instances of “cyber-squatting,” defined as the abusive registration and use of Internet domain names. Rather, this is a contest as to the respective rights of the parties to the same claimed mark, INVISIDERM. Such a dispute should be entrusted to the jurisdiction of the appropriate courts. See, for example, Nintendo of America Inc. v. Alex Jones, D2000-0998 (WIPO Nov. 17, 2000):
It is not the function of an ICANN Administrative Panel to resolve all issues concerning the use of intellectual property rights. Matters beyond the narrow purview of the Policy are for the courts of appropriate jurisdictions.
See also Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007):
A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy …. Thus, … [the Panel] … dismisses the Complaint.
DECISION
Accordingly, it is Ordered that the Complaint in this proceeding is dismissed, without prejudice.
Terry F. Peppard, Panelist
Dated: July 8, 2015
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