Unilabs SA v. bookstore87
Claim Number: FA1512001652349
Complainant is Unilabs SA (“Complainant”), represented by Patrick Gustavsson of Domain and Intellectual Property Consultants, Dipcon AB, Sweden. Respondent is bookstore87 (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <unilabs.se.com>, registered with Network Solutions, LLC.
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 participated in the mandatory CentralNic Mediation, and the mediation process was concluded/terminated prior to the initiation of the instant proceeding.
Complainant submitted a Complaint to the Forum electronically on December 15, 2015; the Forum received payment on December 21, 2015.
On December 15, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <unilabs.se.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On December 28, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2016 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@unilabs.se.com. Also on December 28, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 to the CDRP 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 CDRP Policy, CDRP 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contention.
Complainant uses the UNILABS mark in connection with its business encompassing diagnostic services. Complainant has registered the UNILABS mark with Sweden’s trademark office (App. No. 2008-04476, Reg. No. 398547, registered October 31, 2008). See Am. Compl., at Attached Annex 5. Respondent’s <unilabs.se.com> domain name incorporates the mark entirely while merely appending the top-level domain “.se.com.”
Respondent has no rights or legitimate interests in the <unilabs.se.com> domain name. Respondent is not commonly known by <unilabs.se.com>. Respondent has not operated with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, Respondent has traded off the goodwill associated with the UNILABS mark to operate a competing website with services that mirror the services offered by Complainant online. See Am. Compl., at Attached Annex 4 (resolving website).
Respondent registered and used the disputed domain name in bad faith. Respondent attempts to draw Internet traffic to the <unilabs.se.com> domain name and likely profiting from the confusion associated with the identical nature of the name when compared with the UNILABS mark. Lastly, Respondent registered and subsequently used the disputed domain with actual knowledge of the UNILABS mark and Complainant’s rights therein.
B. Respondent
Respondent did not submit a response in this proceeding.
1. Complainant is a Swiss company engaged in the provision of diagnostic services.
2. Complainant has registered the UNILABS mark with Sweden’s national trademark office (App. No. 2008-04476, Reg. No. 398547, registered October 31, 2008) and also has several international registered trademarks for UNILABS.
3. Respondent registered the <unilabs.se.com> domain name on September 11, 2015.
4. The disputed domain name is used to operate a competing website with services that mirror the services offered by Complainant online.
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.
The CDRP also requires that Complainant has participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon decisions made by UDRP panels as applicable in rendering its decision in this proceeding.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant uses the UNILABS mark in connection with its business encompassing diagnostic services. Complainant submits that it has registered the UNILABS mark with the Swedish trademark office (App. No. 2008-04476, Reg. No. 398547, registered October 31, 2008) and that it also has several international registrations for UNILABS, evidence of which is adduced and the Panel accepts. See Am. Compl., at Attached Annex 5. Where a mark has been registered with a relevant governmental authority, panels have recognized that such registrations confer trademark rights according Policy ¶ 4(a)(i) rights in a mark. See, e.g., The Toronto-Dominion Bank v. DOMAIN CONTROLLER / YOYO EMAIL, FA 1622018 (Nat. Arb. Forum July 14, 2015) (holding that “Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world. The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market. When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.”). In light of Complainant’s showing, the Panel determines that Policy ¶ 4(a)(i) rights exist for Complainant in the UNILABS mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s UNILABS mark. Complainant argues that Respondent’s <unilabs.se.com> domain name incorporates the mark entirely while merely appending the top-level domain “.se.com,” and therefore is identical/confusingly similar. Country-code top-level domains (“ccTLDs”) and generic top-level domains (“gTLDs”) alike have been seen by panels as dispositive of Policy ¶ 4(a)(i) confusing similarity where the dominant portion of the domain is identical to a complainant’s corresponding mark. See ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Nat. Arb. Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”). Therefore, the Panel agrees that Respondent’s <unilabs.se.com> domain name is identical to the UNILABS mark pursuant to Policy ¶ 4(a)(i).
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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s UNILABS mark and to use it in its domain name;
(b) Respondent has then used the domain name to operate a competing website with services that mirror the services offered by Complainant online;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has no rights or legitimate interests in the <unilabs.se.com> domain name. Complainant asserts that Respondent is not commonly known by <unilabs.se.com>. While the publicly-available WHOIS indicates registrant of record as “bookstore87,” and in light of the fact that Respondent has failed to submit any evidence to the record for the Panel’s consideration, the Panel sees no basis for recognizing rights in Respondent under Policy ¶ 4(c)(ii) rights. See, e.g., 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);
(e) In addition, Complainant submits that Respondent has not operated with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, Respondent has traded off the goodwill associated with the UNILABS mark to operate a competing website with services that mirror the services offered by Complainant online. See Am. Compl., at Attached Annex 4 (resolving website). Panels have seen competing use as a clear indication that no bona fide offering of goods or services is present. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). As Respondent’s use is commercial in nature , the Panel determines that its competing use with respect to Complainant’s business indicates that its use of the <unilabs.se.com> domain name is neither a bona fide offering of goods or services per Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
All of these matters go to make out 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 has 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, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant urges that Respondent registered and used the disputed domain name in bad faith. In arguing bad faith, Complainant submits under Policy ¶ 4(b)(iv) that Respondent attempts to draw Internet traffic to the <unilabs.se.com> domain name and is likely profiting from the confusion associated with the identical nature of the name when compared with the UNILABS mark. The Panel notes Respondent’s use at Attached Annex 4. Panels have seen competing commercial use of a disputed domain to indicate bad faith under Policy ¶ 4(b)(iv). See, e.g., Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)). Here, while Respondent reportedly offers competing diagnostic services identical to those services Complainant alleges it offers, the Panel agrees that Policy ¶ 4(b)(iv) bad faith is present.
Secondly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the UNILABS mark. Complainant argues that Respondent's offering of Complainant's own services at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, but the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the UNILABS mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <unilabs.se.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: January 22, 2016
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