Oxyhealth, LLC. v. Benjamin Galbraith
Claim Number: FA1801001767229
Complainant is Oxyhealth, LLC. (“Complainant”), represented by Sunil A. Brahmbhatt of Law Office of Sunil A. Brahmbhatt, PLC., California, USA. Respondent is Benjamin Galbraith (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oxyhealthused.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.
M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 16, 2018; the Forum received payment on January 16, 2018.
On Jan 18, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <oxyhealthused.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 January 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2018 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 firstname.lastname@example.org. Also on January 29, 2018, 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.
A timely Response was received and determined to be complete on February 19, 2018.
On February 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed M. KELLY TILLERY, ESQUIRE 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, Oxyhealth, LLC. claims that it is the leading manufacturer and distributor of hyperbaric chambers in the United States, and its product line is known under the brand name of OXYHEALTH. Complainant claims rights in the OXYHEALTH mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (No. 4,066,991, Registered Dec. 6, 2011). Complainant claims common law rights in the mark dating back to at least 2002 and that Respondent’s <oxyhealthused.com> domain name is confusingly similar to Complainant’s OXYHEALTH mark.
Complainant claims that Respondent has no rights or legitimate interests in the <oxyhealthused.com> domain name, that Respondent is not commonly known by the disputed domain name, nor is it a licensed or authorized distributor of OXYHEALTH products, and that Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use, but rather, Respondent uses the domain name to pass off as Complainant.
Complainant claims that Respondent registered and is using the <oxyhealthused.com> domain name in bad faith that Respondent uses Complainant’s logo, color scheme, and pictures of the product line to mislead consumers and disrupt Complainant’s business.
Respondent claims that it does not sell or buy Complainant’s products; that the products listed on the website are provided by third parties via eBay and that listings on Respondent’s website are from eBay and link to eBay.
Respondent claims its purpose of the website is to provide information and links to used products sold by other private individuals on eBay and that Respondent therefore uses the OXYHEALTH and products names in a strictly descriptive manner, and such use is Fair Use.
The Panel notes the <oxyhealthused.com> domain name was created on April 7, 2017.
1) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is confusingly similar to a Trademark in which Complainant has rights.
2) Complainant has not met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.
3) Complainant has not met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name has been registered and is being used 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.
Complainant claims rights in the OXYHEALTH mark based upon registration of the mark with the USPTO (No. 4,066,991, Registered Dec. 6, 2011). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (registration with USPTO sufficient to establish rights in HOME DEPOT mark). The Panel holds that Complainant’s registration of the OXYHEALTH mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <oxyhealthused.com> domain name is confusingly similar to the OXYHEALTH mark. The Panel notes the name contains Complainant’s mark in its entirety, adding the term “used” and the “.com” generic top-level domain (“gTLD”). Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by addition of generic or descriptive phrase and top-level domain.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Panel therefore finds the <oxyhealthused.com> domain name is confusingly similar to the OXYHEALTH mark per Policy ¶ 4(a)(i).
Respondent claims it is using the <oxyhealthused.com> domain name in a strictly descriptive and informative manner, which constitutes Fair Use. Use of a domain name which is descriptive of the services offered thereon can indicate legitimate interest in the name, if the use does not take advantage of the trademark value of an incorporated mark. See Advanced Drivers Educ. Prods. & Training, Inc. v. MDNH, Inc., FA 567039 (Forum Nov. 10, 2005) (disputed domain name not used in the trademark sense, but was “a descriptor of the site’s intended content or theme,” and therefore that complainant failed to prove that Respondent lacked any rights or legitimate interests in the disputed domain name); see also Heart of Success, Inc. v. PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER, FA 1689461 (Forum Oct. 10, 2016) (the domain name is descriptive of services offered online since domain name registration date… Respondent has not attempted to take advantage of the trademark value of Complainant’s mark and has made a bona fide offering of services per Policy ¶ 4(c)(i).”). Respondent claims it only uses the domain name to display third-party eBay listings for used products. The Panel agrees that Respondent’s use of the domain name amounts to Fair Use and that it therefore has legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii).
Respondent also includes a disclaimer on its website to detail its lack of affiliation with Complainant. A respondent’s inclusion of a disclaimer may defeat a complainant’s argument that the respondent does not make a legitimate use of the name. See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug, 9, 2017) (existence of disclaimer on disputed domain name’s resolving site that “is certainly visible and makes its basic point clear enough” is sufficient to mitigate Internet user confusion); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Forum Apr. 11, 2003) (respondent had rights or legitimate interests in the domain name by virtue of prominent use of disclaimer). The Panel finds this disclaimer sufficient to defeat Complainant’s argument that Respondent lacks rights and legitimate interests in the <oxyhealthused.com> domain name.
Since the Panel concludes that Respondent has rights or legitimate interests in the <oxyhealthused.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (issue of bad faith registration and use moot once found respondent had rights or legitimate interests); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (because respondent had rights and legitimate interests in its registration of the name was not in bad faith).
The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Respondent also claims it did not register or use the <oxyhealthused.com> domain name in bad faith, as demonstrated by the name itself and the disclaimer on the resolving website. Inclusion of a sufficient and easy to access disclaimer on a resolving website may also defeat a finding of bad faith. See Al-Anon Family Group Headquarters Inc. v. Reid, D2000-0232 (WIPO June 5, 2000) (refusing to find bad faith where respondent conspicuously informs viewers that site is not affiliated with complainant and alternatively finding that such a disclaimer is evidence of good faith on the part of the respondent which precludes any determination that the respondent intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website); see also Alcoholics Anonymous World Servs., Inc. v. Friends of Bill W & Jimmy K, D2001-1124 (WIPO Dec. 28, 2001) (“[A]t times disclaimers can, depending upon their wording and prominence, mitigate claims of bad faith use by a [r]espondent.”). See, Toyota Motor Sales, USA v. Tabari, 2010 U.S. App. LEXIS 13930 (9th Cir. 2010) The Panel therefore finds that Respondent registered and used and is using the <oxyhealthused.com> domain name in good faith.
Respondent also claims it registered and used the domain name in good faith to provide information and links to used products of Complainant. Such use may not amount to bad faith use per the Policy. See Election Systems & Software, Inc. v. Stewart, FA 805224 (Forum Nov. 14, 2006) (Where respondent registered disputed domain name to reflect one of the products available from Respondent, the panel did not find bad faith pursuant to Policy ¶ 4(b)(iii)); see also Chicago Bd. Options Exch. Inc. v. Private, FA 804703 (Forum Nov. 29, 2006) (finding no bad faith registration and use where respondent used complainant’s trademark in its domain name in order to provide information on the complainant’s Options Exchange, and respondent was not attempting to brand itself as related to the domain name or to steal business or customers from the complainant). Respondent does not sell Complainant’s goods, but rather merely displays eBay listings of other people who offer the goods for sale. The Panel finds this is a good faith use.
Having not established two of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <oxyhealthused.com> domain name REMAIN WITH Respondent.
M. KELLY TILLERY, Panelist
Dated: February 22, 2018
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