Amerimark Direct, LLC and its affiliate Dr. Leonard's Healthcare Corp. v. Pham Dinh Nhut
Claim Number: FA1509001636772
Complainant is Amerimark Direct, LLC and its affiliate Dr. Leonard's Healthcare Corp. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <amerimarksads.com>, <drleonars.com>, <timeformecatalogue.com> and <timeformecatolog.com> ('the Domain Names'), registered with April Sea Information Technology Company Limited, April Sea Information Technology Corporation.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 8, 2015; the Forum received payment on September 8, 2015. The Complaint was received in both Vietnamese and English.
On September 10, 2015 and September 17, 2015, April Sea Information Technology Company Limited, April Sea Information Technology Corporation confirmed by e-mail to the Forum that the <amerimarksads.com>, <drleonars.com>, <timeformecatalogue.com> and <timeformecatolog.com> domain names are registered with April Sea Information Technology Company Limited, April Sea Information Technology Corporation and that Respondent is the current registrant of the names. April Sea Information Technology Company Limited, April Sea Information Technology Corporation has verified that Respondent is bound by the April Sea Information Technology Company Limited, April Sea Information Technology Corporation 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 September 23, 2015, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of October 13, 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@amerimarksads.com, postmaster@drleonars.com, postmaster@timeformecatalogue.com, and postmaster@timeformecatolog.com. Also on September 23, 2015, Vietnamese language 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 Forum transmitted to the parties a Notification of Respondent Default.
If applicable, enter date Additional Submission was received here – otherwise delete this point. If Additional Submission does not comply with Supplemental Rule 7, please address here.
On October 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant's contentions can be summarised as follows:
Complainant is a direct mail catalog and online retailer specialising in a variety of products for the well being of senior citizens established in 1979 by Dr Leonard Feldman. It is the owner of federal trade mark registrations in the United States for AMERIMARK (first filed for registration 2000, first use in commerce 2000), AMERIMARK DIRECT (first filed for registration 2000, first use in commerce 2000), DR LEONARD'S (first filed for registeration 1992, first use in commerce 1980) and TIME FOR ME (first filed for registration 2007, first use in commerce January 2005) for such products or retail services related thereto. Based on these registrations and extensive use the Complainant owns the exclusive right to use its marks for these goods and services.
The Domain Names are confusingly similar to the Complainant's marks because they are either a mispelling of or include the Complainant's marks.
The gTLD is not taken into account when assessing confusing similarity.
Respondent is not commonly known by the Domain Name and does not appear to have any relevant trade mark rights. Respondent is not sponsored by or legitimately affiliated with the Complaiant in any way. Complainant has not given permission to the Respondent to use the Complainant's marks.
The Respondent did not reply to a cease and desist letter from the Complainant.
Respondent is using the Domain Names to redirect Internet users to a website featuring generic links to third party websites some of which directly compete with the Complainant's business. This is not bona fide or legitimate non commercial or fair use as allowed under the Policy. The Respondent is attracting and misleading consumers for profit and is disrupting the Complainant's business. Respondent has caused the website reachable by the Domain Names to display the Complainant's marks spelt correctly and to display content and keywords directly related to the Complainant's business which removes any doubt as to whether or not the mispelling was intentionally designed to improperly capitalise on the Complainant's famous marks.
The Domain Names are classic examples of typosquatting, designed to take advantage of Internet users' typographical errors, which means the Domain Names must be confusingly similar by design. Typosquatting is in itself evidence of bad faith. Respondent is a recalcitrant serial cybersquatter/typosquatter.
Respondent's use of apparently falsified or incomplete WHOIS contact information demonstrates a desire to avoid being accountable which is further evidence of bad faith.
The Domain Names were registered in 2004 and 2005 after first use in commerce of all of the Complainant's marks and after registration by the Complainant of its domain names amerimark.com, drleonards.com and timeformecatalog.com
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a direct mail catalog and online retailer specialising in a variety of products for the well being of senior citizens established in 1979 by Dr Leonard Feldman. It is the owner of federal trade mark registrations in the United States for AMERIMARK (first filed for registration 2000, first use in commerce 2000), AMERIMARK DIRECT (first filed for registration 2000, first use in commerce 2000), DR LEONARD'S (first filed for registeration 1992, first use in commerce 1980) and TIME FOR ME (first filed for registration 2007, first use in commerce January 2005) for such products or retail services related thereto.
The Domain Names were registered in 2004 and 2005 after first use of the Complainant's marks and registration by the Complainant of simlar domain names and have been used for pay per click sites which resolve to sites relating both to the Complainant and third party competing goods.
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: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” The Panelist finds that, as Amerimark Direct LLC purchased Dr Leonard's Healthcare Corp in 2008, there is sufficient nexus between these companies to proceed as Complainant together in this proceeding.
Identical or Confusingly Similar
The Domain Names consist of a mispelling of the Complainant's DR LEONARDS mark or use of the Complainant's AMERIMARK and TIMEFORME marks plus additional terms of a generic nature. The Panel agrees with the Complainant that the alterations to the Complainant's marks do not negate the confusingly similarity between the Complainant's marks and the Domain Names pursuant to the Policy. See Reuters Limited v Global Net 2000, Inc. D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trade mark was confusingly similar to the mark) and See Arthur Guiness Son & Co. (Dublin) Ltd. v Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)(finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term)
The addition of the gTLD .com does not serve to distinguish the Domain Names from the Complainant's marks See Isleworth Land Co. v Lost in Space SA, FA 117330 (Nat Arb Forum Sept. 27, 2002)(It is a well established principle that generic meaning top level domains are irrelevant when conducting a Policy 4(a)(i) analysis.)
Accordingly, the Panel holds that the Domain Names are each confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Respondent has not responded and given any reasons for its registration and use of the Domain Names. Respondent does not appear to be commonly known by the Domain Names. Complainant has not authorised the use of its marks and the Respondent does not appear to be connected with the Complainant in any way.
The Domain Names have been used to link to pay-per-click advertising for other third party commercial web sites including competitors of the Complainant. The Panel notes Compania Mexicana de Aviacion, SA de CV v Bigfoot Ventures LLC, FA 1195961(Nat. Arb. Forum July 14, 2008)(holding that the respondent had not demonstrated a bona fide offering of goods and services or a legitimate noncommercial or fair use where the web site resolving from the domain name displayed links to competing goods and services).
The Panel thus concludes that there are no rights or legitimate interests in the Domain Names under para 4 (c) (i) or (iii) of the Policy.
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.” s4(b)(iv)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amerimarksads.com>, <drleonars.com>, <timeformecatalogue.com> and <timeformecatolog.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: October 27, 2015
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