Haemoscope Corporation v. Digital
Development Group
Claim Number: FA0508000542015
PARTIES
Complainant
is Haemoscope Corporation (“Complainant”),
represented by Robert Rose, 6231 W. Howard St., Niles, IL 60714. Respondent is Digital Development Group (“Respondent”), 8550 Daryl Dr., Lusby, MD
20657.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <teg.com>,
registered with Go Daddy Software, Inc.
PANEL
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.
David
E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
16, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 17, 2005.
On
August 16, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the <teg.com>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
August 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
12, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@teg.com by e-mail.
A
timely Response was received and determined to be complete on September 12,
2005.
On September 20, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant markets a line of haemostatic analyzers under
the TEG trademark (USPTO registration 2,118,613, on the Principal
Register). Complainant has marketed
this line of products since 1997.
Respondent’s <teg.com> domain
name is identical to Complainant’s TEG trademark. Complainant alleges that Respondent does not hold any trademark
rights relating to the disputed domain name and lacks any legitimate interest
in respect of the name.
Complainant
registered its TEG mark in December 1997.
At that
time, Complainant contends, the disputed domain name “was being validly used by
another company that had a line of products also called TEG.” According to Complainant, a web page was
later posted announcing that TEG was being offered for sale, with a link to an
e‑mail address apparently controlled by Respondent. Complainant states that it inquired about
the price on July 18, 2005, and received an e-mail response from Respondent
offering the disputed domain name for sale for $30,000. Complainant informed Respondent that its
trademark rights entitled it to obtain the domain name, and made a much lower
purchase offer. Respondent declined the
offer, stating that the domain name was not for sale, and disputed
Complainant’s infringement claim.
B.
Respondent
Respondent
denies sending the e-mail messages attributed to it by Complainant. Respondent states that it is in the business
of website development, not domain name speculation or blood measuring
equipment. Respondent contends that the
disputed domain name “has been privately held for over 10 years.”
FINDINGS
The disputed domain name is identical to
a trademark in which Complainant has rights, and Respondent lacks rights or
legitimate interests in respect of the disputed domain name. However, Complainant has failed to sustain
its burden of proving that the disputed domain name was registered and used in
bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
The disputed domain name is comprised of
Complainant’s registered trademark with the top-level domain “.com” appended
thereto. For purposes of the Policy,
the domain name is clearly identical to Complainant’s trademark.
Complainant’s allegations as to rights or
legitimate interests are sufficient to shift the burden of production to
Respondent, although Complainant ultimately bears the burden of proof on this
and all other elements required by the Policy.
See, e.g., Cappella v. Cappella Drumsticks, FA 393256 (Nat. Arb.
Forum Feb. 14, 2005). Respondent has
not come forward with any right or legitimate interest it may have in the
disputed domain name. The Panel
therefore finds that Respondent has no rights or legitimate interests in the
name.
In order to prevail on the third element
required under the Policy, Complainant must prove that the disputed domain name
was both registered and used in bad faith.
Bad faith registration may be inferred from subsequent conduct in
appropriate instances, but only where such an inference is consistent with
other evidence in the record. See,
e.g., Viz Commc’ns, Inc., v. Redsun, D2000-0905 (WIPO Dec. 22, 2000).
The record before this Panel does not
indicate when Respondent registered or acquired the disputed domain name. The domain name registration (“WHOIS”)
record states that the domain name was registered on June 9, 1997. Respondent is listed as the current
registrant, although the Panel recognizes the possibility that the record may
have been modified at some point to reflect a change in ownership while
retaining the original registration date.
Respondent’s unsubstantiated claim that the domain name “has been
privately held for over 10 years,” even if accurate, sheds little light on when
the domain name was registered or acquired by
Respondent. Nor do Complainant’s
ambiguous reference to “another company” as the registrant of the domain name
in 1997 or Complainant’s subsequent discovery of a web page offering the domain
name for sale provide the Panel with competent evidence of Respondent’s
acquisition or registration date. For purposes
of this proceeding, therefore, the Panel must rely upon the domain name
registration record, and treat June 9, 1997, as the relevant date when
considering the question of bad faith registration.
Complainant states that it has marketed
products under the TEG mark since 1997 and that it registered the TEG mark in
December 1997. It seems extremely
unlikely that Respondent was even aware of Complainant’s mark in June 1997, let
alone that Respondent selected the domain name for reasons related in any way
to Complainant or its mark. Indeed,
such an inference is belied by Complainant’s own admission that the domain name
was being used for unrelated legitimate purposes in 1997.
The e-mail messages produced by
Complainant and disavowed by Respondent might well be relevant to the question
of present bad faith use (if in fact
Respondent did offer the domain name for sale, subsequently denied having done
so, and then falsely disavowed both of these statements), but it is difficult
for the Panel to see the relevance of such evidence to Respondent’s motivations
for registering the domain name eight years earlier. The Panel notes that Complainant’s trademark registration record
reflects a date of first use for the mark that predates the domain name
registration date, but even if the mark was in active use well before 1997, the
record is still devoid of evidence to support a reasonable inference that
Respondent knew of the mark at that time or selected the domain name for
reasons related to the mark.
The Panel therefore finds that
Complainant has failed to sustain its burden of proving that the domain name
was registered and used in bad faith.
DECISION
Having
considered all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
David E. Sorkin, Panelist
Dated:
September 30, 2005
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