BodyMedia, Inc. v. Webserv LLC c/o Webserv Manager
Claim Number: FA0511000601027
Complainant is BodyMedia, Inc. (“Complainant”), represented by John A. Monocello III, of BodyMedia, Inc., 11th Floor, Pittsburgh, PA 15222. Respondent is Webserv LLC c/o Webserv Manager (“Respondent”), 8 Copthall Roseau, Roseau 00152 DM.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sensewear.com>, registered with Network Solutions, Inc.
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 National Arbitration Forum electronically on November 22, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 28, 2005.
On November 23, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <sensewear.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 December 1, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 21, 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@sensewear.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 27, 2005, a timely Additional Submission was filed by Complainant and received by the National Arbitration Forum.
On December 28, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <sensewear.com> domain name is identical to Complainant’s SENSEWEAR mark.
2. Respondent does not have any rights or legitimate interests in the <sensewear.com> domain name.
3. Respondent registered and used the <sensewear.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BodyMedia, Inc., provides monitoring devices such as heart and pulse rate monitors, respiration rate monitors, and skin temperature monitors. Complainant has registered the SENSEWEAR mark (Reg. No. 2,700,826 issued March 25, 2003) with the United States Patent and Trademark Office in connection with these products.
Complainant was the original registrant of the <sensewear.com> domain name. However, Complainant inadvertently allowed its domain name registration to lapse, Respondent immediately registered the domain name in its own name. Respondent’s disputed domain name resolves to a website featuring links to various non-competing commercial websites.
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."
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(e), 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. 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.”).
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 has established rights in the SENSEWEAR mark
through registration with the United States Patent and Trademark Office. Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”);
see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Complainant contends that the <sensewear.com> domain name is identical to Complainant’s mark. The disputed domain name features Complainant’s entire SENSEWEAR mark and merely adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of the gTLD “.com” is irrelevant to the determination of whether a domain name is identical to an established mark. As such, the Panel finds that the disputed <sensewear.com> domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <sensewear.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain name. G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant contends that Respondent is using the <sensewear.com>
domain name to operate a website featuring links to various non-competing
commercial websites from which Respondent presumably receives referral
fees. The Panel finds that such use is
neither a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
Furthermore, no affirmative evidence has been set
forth showing that Respondent either has permission to register domain names
featuring Complainant’s SENSEWEAR mark or that Respondent is commonly known by
the <sensewear.com> domain name.
In the absence of such evidence, the Panel finds that Respondent is not
commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) the
respondent is not a licensee of the complainant; (2) the complainant’s prior
rights in the domain name precede the respondent’s registration; (3) the
respondent is not commonly known by the domain name in question).
Finally, Complainant’s
prior ownership and Respondent’s subsequent registration of the disputed domain
name contributes further to the Panel’s finding that Respondent lacks rights
and legitimate interests pursuant to Policy ¶ 4(a)(ii). American Anti-Vivisection Soc’y v. “Infa dot Net”
Web Servs., FA 95685 (Nat. Arb.
Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the
same domain name is a factor in considering the respondent’s rights or
legitimate interests in the domain name); see also RH-Interactive
Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003)
(“Complainant’s prior registration of the domain name, coupled with
Respondent’s failure to respond to this dispute, is evidence that Respondent
has no rights or legitimate interests in the domain name pursuant to Policy
4(a)(ii).”).
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Complainant previously owned the <sensewear.com>
domain name and accidentally let the name lapse. Upon lapse, Respondent subsequently registered the name currently
in dispute. Absent evidence to the
contrary, the Panel finds that such conduct is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). InTest Corp. v. Servicepoint,
FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been
previously used by the Complainant, subsequent registration of the domain name
by anyone else indicates bad faith, absent evidence to the contrary.”); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000)
(finding bad faith where the respondent took advantage of the complainant’s
failure to renew a domain name).
Furthermore, Complainant’s assertion that Respondent is
using the disputed domain name to operate a website featuring links to various
commercial websites from which Respondent presumably receives click-through
fees is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the
disputed domain name was registered and used in bad faith pursuant to Policy ¶
4(b)(iv) through the respondent’s registration and use of the infringing domain
name to intentionally attempt to attract Internet users to its fraudulent
website by using the complainant’s famous marks and likeness); see also Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sensewear.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 11, 2006
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