Shenzhen Medica Technology Development Co., Ltd. v. Malaika Schmidt
Claim Number: FA1603001665816
Complainant is Shenzhen Medica Technology Development Co., Ltd. (“Complainant”), represented by Chad Belville, Arizona, USA. Respondent is Malaika Schmidt (“Respondent”), represented by Aaron Boyajian of Goetz Fitzpatrick LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sleepace.com>, registered with GoDaddy.com, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 15, 2016; the Forum received payment on March 15, 2016.
On March 16, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sleepace.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 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 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@sleepace.com. Also on March 18, 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 April 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
Complainant
Complainant uses the SLEEPACE mark in connection with a series of products intended to monitor and track sleeping patterns of users by measuring heart rate, breathing and movements during the sleep of the user. Complainant has registered the SLEEPACE mark in Europe (EUTM Reg. No. 13,172,036, filed August 14, 2014, registered December 12, 2014), which establishes rights in the SLEEPACE mark. Respondent’s <sleepace.com> domain name is identical to the SLEEPACE mark as the domain incorporates the mark entirely and without alteration, save for the addition of the “.com” generic top-level domain (“gTLD”) suffix.
Respondent has no rights or legitimate interests in respect of the <sleepace.com> domain name. Respondent is not commonly known by the disputed domain or any variation of the SLEEPACE mark per Policy ¶ 4(c)(ii). Further, Respondent has parked the disputed domain, and the resolving website includes various unrelated click-through hyperlinks, demonstrating no bona fide offering or legitimate noncommercial or fair use.
Respondent registered and used the <sleepace.com> domain name in bad faith. Respondent has utilized the disputed domain to commercially gain from Internet user confusion, which imputes bad faith under Policy ¶ 4(b)(iv). Moreover, Respondent registered the disputed domain on March 23, 2015, after Complainant had gained trademark protection and notoriety, and therefore did so with actual or constructive knowledge of the SLEEPACE mark and Complainant’s rights in the SLEEPACE mark.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <sleepace.com> domain name.
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.”).
Complainant uses the SLEEPACE mark in connection with a series of products intended to monitor and track sleeping patterns of users by measuring heart rate, breathing and movements during the sleep of the user. Complainant asserts that it has registered the SLEEPACE mark in Europe (EUTM Reg. No. 13,172,036, filed August 14, 2014, registered December 12, 2014), and argues that its EUTM registration along with the chart of alleged domain registrations included in its exhibits confers rights in the SLEEPACE mark. In Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015), the panel found, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶ 4(a)(i).” Accordingly, the Panel finds that Complainant’s registration with the EUTM is adequate to confer Policy ¶ 4(a)(i) rights in the SLEEPACE mark.
Respondent’s <sleepace.com> domain name is identical to the SLEEPACE mark as the domain incorporates the mark entirely and without alteration, save for the addition of the gTLD “.com.” Panels have consistently founds that the “.com” affixation to a fully incorporated mark is irrelevant to a Policy ¶ 4(a)(i) analysis. See Practice Management Institute v. Steve Lemmon / The Studio, FA 1655005 (Nat. Arb. Forum February 3, 2016) (finding that because the affixation of the gTLD “.com” does not serve to adequately distinguish a complainant’s mark from a respondent’s domain name, Respondent’s <practicemanagementinstitute.com> domain is confusingly similar to Complainant’s PRACTICE MANAGEMENT INSTITUTE mark); see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s < frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel therefore finds that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 posits that Respondent has no rights or legitimate interests in the <sleepace.com> domain name. In establishing its position under Policy ¶ 4(a)(ii), Complainant notes that Respondent is not commonly known by the disputed domain or any variation of the SLEEPACE mark per Policy ¶ 4(c)(ii). Panels have found a respondent is not commonly known by a disputed domain name where there is no evidence in the record to indicate otherwise. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum March 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the panel finds that respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel therefore finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent has parked the disputed domain, and the resolving website includes various unrelated click-through hyperlinks, demonstrating no bona fide offering or legitimate noncommercial or fair use. These click-through hyperlinks include the following: “Best Mattress Reviews,” “Eco-Friendly Mattresses,” and “Best Memory Foam Mattress.” Panels have found that unrelated click-through hyperlinks on a parked page are not a bona fide offering of goods or services or a noncommercial or fair use. See, e.g., Bloomberg Finance L.P. v. Syed Hussain / Domain Management, FA1410001582912 (Forum November 10, 2014) (concluding that the respondent’s use of the disputed domain name to host hyperlinks, unrelated to the complainant’s business, did not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)); see also Cengage Learning Inc. v. Myers, FA 1116919 (Forum, Jan. 15, 2008)(“the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.”). Therefore, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <sleepace.com> domain name in bad faith. Respondent has utilized the disputed domain to commercially gain from Internet user confusion by including click-through hyperlinks. This behavior is typical of cybersquatters, and commercial profit from hyperlinks has been presumed by past panels. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)); but cf. Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Forum Dec. 3, 2007) (finding that, even though the Respondent posited that it did not receive any revenue from the hyperlinks displayed on the website and that the revenues are received by the parking service, the Respondent still registered and used the domain name in bad faith because it still allowed the parking service to access the domain name, instead of resolving the webpage to a blank page). Therefore, the Panel finds that Respondent commercially gains through its use of the parking service and finds this is evidence of bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain on March 23, 2015, after Complainant had gained trademark protection and notoriety, with actual or constructive knowledge of Complainant’s rights. Past panels have rejected the “constructive knowledge” argument. See, e.g., Way Int’l Inc. v. Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”). Respondent has completely incorporated the SLEEPACE mark, and seems to be attempting to profit from the goodwill associated with the mark through the inclusion of click-through links. The Panel therefore finds, given the totality of the circumstances, that Respondent had actual knowledge and therefore registered and used the disputed domain in bad faith per Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <sleepace.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 18, 2016
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