DECISION

 

Neil Kline D/B/A American Sleep Association v. ryan gregerson / Natruell, LLC

Claim Number: FA1603001663516

 

PARTIES

Complainant is Neil Kline D/B/A American Sleep Association (“Complainant”), represented by Steven L. Rinehart of Western IP Law, Utah, USA.  Respondent is ryan gregerson / Natruell, LLC (“Respondent”), Utah, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americansleepassociation.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 1, 2016; the Forum received payment on March 1, 2016.

 

On March 2, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <americansleepassociation.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  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 March 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 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@americansleepassociation.com.  Also on March 3, 2016, 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 March 25, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant’s Contentions

1.    Complainant uses its AMERICAN SLEEP ASSOCIATION mark in connection with its business of providing consulting services in the treatment of patients with snoring and sleep apnea disorders. Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,862,270, registered December 1, 2015), which demonstrates Complainant’s rights in its mark. The Panel is directed to Attached Annex C for a copy of Complainant’s USPTO registration. Complainant also owns common law rights in the mark going back to 2002, when Complainant began doing business as the American Sleep Association. The <americansleepassociation.com> domain is identical to Complainant’s mark with the exception of the elimination of the spacing between the words of Complainant’s mark and the addition of the generic top-level domain (“gTLD”) “.com.”

2.    Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not make a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent’s domain currently resolves to a generic landing page with a notice that Respondent is no longer in business. The Panel is directed to Attached Annex O for a screenshot of Respondent’s resolving webpage.

3.    Respondent has registered and is using the disputed domain name in bad faith. First, Respondent uses the domain in an attempt to divert Internet traffic from Complainant’s legitimate business to that of Respondent. Second, Respondent registered and is using the domain with constructive and/or actual knowledge of Complainant’s mark.

 

B.   Respondent’s Contentions

1.    Respondent did not submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <americansleepassociation.com> domain name is confusingly similar to Complainant’s AMERICAN SLEEP ASSOCIATION  mark.

2.    Respondent does not have any rights or legitimate interests in the  <americansleepassociation.com> domain name.

3.    Respondent registered or used the <americansleepassociation.com> domain name in bad faith.

 

DISCUSSION

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(f), 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.”).

 

Identical and/or Confusingly Similar

Complainant uses its AMERICAN SLEEP ASSOCIATION mark in connection with its business of providing consulting services in the treatment of patients with snoring and sleep apnea disorders. Complainant has registered the mark with the USPTO (Reg. No. 4,862,270, registered December 1, 2015). Complainant asserts that its USPTO registration demonstrates its rights in the mark. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).

 

Complainant argues that it owns common law rights in its mark going back to 2002. In support of this contention, Complainant provides several articles that refer to Complainant by its mark. One such article, among a number submitted, is from EMS World and was published on February 1, 2004; the article refers to Complainant as an authority on sleep disorders and makes use of Complainant’s mark.  Also in support of its contention, Complainant has provided a copy of its USPTO registration, which details a “First Use in Commerce” date of May 19, 2002; 2002 is also the year in which Complainant started doing business as the American Sleep Association. Previous panels have found that the continuous use of a mark can establish a complainant’s common law rights. See  Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999). Therefore, the Panel finds that Complainant has demonstrated common law rights in its mark under Policy ¶ 4(a)(i).

 

The <americansleepassociation.com> domain is identical to Complainant’s mark with the exception of the elimination of the spacing between the words of Complainant’s mark and the addition of the generic top-level domain (“gTLD”) “.com.” Previous panels have determined that neither the elimination of spacing between the words of a complainant’s mark nor the affixation of the gTLD “.com” suffice to adequately distinguish a respondent’s domain from a complainant’s mark. See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark). For these reasons, the Panel finds that Respondent’s disputed domain is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “ryan gregerson / Natruell, LLC” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration.  As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent’s domain currently resolves to a generic landing page with a notice that Respondent is no longer in business. Previous panels have held that a respondent’s use of a domain to redirect Internet users to Respondent’s own website, for Respondent’s benefit, does not does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)                  (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent uses the domain in an attempt to divert Internet traffic from Complainant’s legitimate business to that of Respondent, for Respondent’s benefit.  Previous panels have held that a respondent’s use of a domain to divert Internet users from a complainant’s legitimate website is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See CMG Worldwide, Inc. v. Lombardi, FA 95966 (Nat. Arb. Forum Jan. 12, 2001) (finding that the respondent’s use of the complainant’s VINCE LOMBARDI mark to divert Internet users to its commercial website located at the <vincelombardi.com> domain name constituted bad faith use and registration of the disputed domain name). As such, the Panel finds that Respondent registered and is using the domain in bad faith per Policy ¶ 4(b)(iv).

 

Complainant contends that Respondent registered and is using the domain with constructive and/or actual knowledge of Complainant’s mark. Specifically, Complainant argues that because of its significant and continuous investments, marketing, and membership, it is inconceivable that Respondent registered the domain without at least constructive knowledge of its mark. While panels have concluded that constructive notice is insufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant’s mark, Respondent had actual knowledge of the mark and Complainant’s rights. Thus, the Panel holds that Respondent registered the domain in bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Accordingly, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).

 


 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <americansleepassociation.com> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  April 1, 2016

 

 

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