ZOLL Medical Corporation v. Amnart Apilukworakul
Claim Number: FA1810001810970
Complainant is ZOLL Medical Corporation (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, New York, USA. Respondent is Amnart Apilukworakul (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zollthailand.com>, registered with Register.com, Inc.
The undersigned certify that they have acted independently and impartially and, to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.
Petter Rindforth, Sandra J. Franklin, and Paul M. DeCicco (Chair), as Panelists.
Complainant submitted a Complaint to the Forum electronically on October 9, 2018; the Forum received payment on October 9, 2018.
On October 10, 2018, Register.com, Inc. confirmed by e-mail to the Forum that the <zollthailand.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 October 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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 postmaster@zollthailand.com. Also on October 10, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 6, 2018, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Petter Rindforth, Sandra J. Franklin, and Paul M. DeCicco (Chair) as Panelists.
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.
A. Complainant
Complainant is a recognized leader in therapeutic and diagnostic devices in connection to medical devices and software solutions for advanced emergency care and otherwise. Complainant has rights in the ZOLL mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <zollthailand.com> domain name is confusingly similar to Complainant’s ZOLL mark as it incorporates the mark in its entirety while adding a geographically descriptive term “thailand” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <zollthailand.com> domain name. Respondent is not authorized or licensed to use Complainant’s ZOLL mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name pass off as Complainant in order to sell competing goods or services.
Respondent registered and uses the <zollthailand.com> domain name in bad faith. Respondent attempted to sell the disputed domain name to Complainant in excess of out-of-pocket costs. Additionally, Respondent attempts to attract, for commercial gain, users to the disputed domain name where it sells competing goods or services. Respondent also failed to respond to Complainant’s cease and desist letters. Finally, Respondent had actual knowledge of Complainant’s rights in the ZOLL mark prior to registering and subsequent use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ZOLL mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the ZOLL trademark.
Respondent uses the <zollthailand.com> domain name to pass itself off as Complainant and inappropriately exploit Complainant’s ZOLL mark for its commercial gain.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant asserts that it registered its ZOLL mark with the USPTO. Although Complainant does not annex copies of the registration record to its Complaint, given that there is no opposition to such allegation the Panel accepts Complainants references to trademark rights to ZOLL, with a registration date prior to the date of registration of the disputed domain name, and thereby the Panel finds Complainant’s claim as true. Complainant’s USPTO trademark registration is sufficient evidence of Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <zollthailand.com> domain name contains Complainant’s entire ZOLL trademark, followed by the generic geographic term “thailand” with the top-level “.com” appended thereto. The differences between Complainant’s trademark and the <zollthailand.com> domain name fail to distinguish the domain name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <zollthailand.com> domain name is confusingly similar to Complainant’s ZOLL trademark. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Amnart Apilukworakul / N/A” and the record before the Panel contains no evidence that otherwise proves that Respondent is commonly known by the <zollthailand.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <zollthailand.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the <zollthailand.com> domain name to pass itself off as Complainant so that it may unfairly compete with Complainant. The domain name addresses a website offering products that compete with those marketed by Complainant. There, Respondent inappropriately displays Complainant’s trademark and offers for sale Automated External Defibrillators which are purported to be ZOLL products when in fact they are not. Such products are not manufactured by Complainant and do not meet Complainant’s product standards. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business 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 also Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent’s <zollthailand.com> domain name creates confusion among internet users not only because the domain name includes Complainant’s trademark but also because it addresses a website displaying Complainant’s ZOLL trademark. Further and as mentioned above regarding rights and legitimate interests, Respondent’s <zollthailand.com> website offers products that compete with those products offered by Complainant. These circumstances show that Respondent is passing itself off as Complainant for commercial gain and demonstrate Respondent’s bad faith registration and use of the <zollthailand.com> domain name under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See H-D U.S.A., LLC v. Janis Vecvanags, FA1503001608165 (Forum Apr. 6, 2015) (holding that the respondent’s use of the disputed domain name to sell counterfeit HARLEY-DAVIDSON products disrupted the complainant’s business and indicated bad faith under Policy ¶ 4(b)(iii)); see also, Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Next, Complainant claims that prior to filing its Complaint while was attempting to get Respondent to cease using the <zollthailand.com> domain name, Respondent offered to transfer the domain name to Complainant for an amount substantially greater than its out of pocket costs in acquiring the domain name. Respondent’s offer demonstrates its bad faith registration and use of the <zollthailand.com> domain name pursuant to Policy ¶ 4(a)(ii). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Finally, Respondent had actual knowledge of Complainant’s rights in the ZOLL mark when it registered the <zollthailand.com> domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark in the relevant area of commerce, from Respondent’s use of Complainant’s trademark on the <zollthailand.com> website, and from Respondent’s offering competing services on such website. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name indicates bad faith registration and use pursuant to 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 had actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zollthailand.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Sandra J. Franklin,
Paul M. DeCicco (Chair),
Panelists
Dated: November 8, 2018
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