Stork Vision Systems, Inc. v. Noel Mikeska / Signature Fitness and Wellness
Claim Number: FA1610001699646
Complainant is Stork Vision Systems, Inc. (“Complainant”), represented by Robert E. Vinson of Vinson Franchise Law Firm, Nevada, USA. Respondent is Noel Mikeska / Signature Fitness and Wellness (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <storkvision.biz>, registered with 1&1 Internet SE.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 24, 2016; the Forum received payment on October 24, 2016.
On October 27, 2016, 1&1 Internet SE confirmed by e-mail to the Forum that the <storkvision.biz> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 November 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@storkvision.biz. Also on November 1, 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 November 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 cancelled.
A. Complainant
1. Complainant, Stork Vision Systems, Inc., is a business in the field of fetal ultrasound imaging. Complainant uses the STORK VISION mark in connection with this business. Complainant has rights in the STORK VISION mark based on registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,687,114, registered Sept. 22, 2009).
2. Respondent’s <storkvision.biz> is identical to Complainant’s mark as it differs only by the removal of the space between the words and the addition of the generic top-level domain (“gTLD”) “.biz.”[1]
3. Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the STORK VISION mark to register a domain name.
4. The domain name resolves to a website prominently featuring Complainant’s word and design marks at the top of each page, and offering competing ultrasound services.
5. Respondent’s registration and use of the domain name is in bad faith. Respondent uses the confusingly similar domain name to attract Internet users and compete with Complainant.
6. Due to the regional fame of Complainant’s business, and the fact that Respondent appears to have moved into the physical location of a former STORK VISION franchise, and prominently displays Complainant’s STORK VISION mark on its resolving website, Respondent is clearly using the domain name in an attempt to profit from the goodwill in Complainant’s mark through competing use.
7. It is apparent that Respondent also had actual or constructive notice of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the STORK VISION mark. Respondent’s domain name is confusingly similar to Complainant’s STORK VISION mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <storkvision.biz> domain name, and that Respondent registered and uses the domain name in bad faith.
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 (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 has rights in the STORK VISION mark based on registration of the mark with the USPTO (Reg. No. 3,687,114, registered Sept. 22, 2009). Registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (FORUM Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant claims, and the Panel agrees, that the <storkvision.biz> domain name is identical to Complainant’s mark as it differs only by the removal of the space between the words and the addition of the gTLD “.biz.” Omission of a space and addition of a gTLD such as “.biz” are insufficient to distinguish a domain name from a registered mark. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (FORUM Dec. 26, 2007) (finding that the domain name <continentalairlines.biz> is identical to the complainant’s CONTINENTAL AIRLINES mark). Therefore, the Panel finds that Respondent’s domain name is identical to the STORK VIEW mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <storkvision.biz> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
The record reflects that Respondent is not commonly known by the domain name. Complainant has shown that the number listed on the website connects to a voicemail system that identifies the business as “3 D 4 Baby Ultrasound Boutique.” Complainant states, and Respondent has not denied, that Noel Mikeska is the owner or principal of 3 D 4 Baby Ultrasound Boutique. Moreover, the WHOIS information on record identifies Respondent as “Noel Mikeska” with “Signature Fitness and Wellness.” Accordingly, the Panel finds that Respondent is not commonly known by the domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (FORUM July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant contends that the Respondent’s domain name resolves to a website that prominently features Complainant’s word and design marks, and connects to one of Complainant’s competitors in an attempt to trade off Complainant’s famous mark. Respondent does not dispute this assertion. Thus, the Panel finds this conduct to constitute bad faith under Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CAN Insurance, FA1401001541484 (FORUM Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the STORK VIEW mark. Complainant argues that Respondent’s use of Complainant’s mark, the prominence of Complainant in the local market, and the fact that the physical location Respondent resides in is a former location for a franchisee of Complainant, all indicate that Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees that this establishes evidence of bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <storkvision.biz> domain name be CANCELLED.
Bruce E. Meyerson, Panelist
Dated: December 1, 2016
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