BCR, Inc v None, a/k/a YM Quan
Claim Number: FA0512000615308
Complainant is BCR, Inc. (“Complainant”), represented by Roberta S. Bren, of Oblin, Spivak, McClelland, Maier & Neustadt, P.C., 1940 Duke Street, Alexandria, VA 22314. Respondent is None, a/k/a YM Quan (“Respondent”), 206 Rhine St., San Francisco, CA 94112.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <impra.com>, registered with Bulkregister, LLC.
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.
Hon. James A. Carmody, David P. Miranda, and Dennis A. Foster as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 27, 2005.
On December 30, 2005, Bulkregister, LLC. confirmed by e-mail to the National Arbitration Forum that the <impra.com> domain name is registered with Bulkregister, LLC. and that Respondent is the current registrant of the name. Bulkregister, LLC. has verified that Respondent is bound by the Bulkregister, LLC. 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 30, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 19, 2006 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@impra.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2005, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. James A. Carmody, David P. Miranda, and Dennis A. Foster as Panelists.
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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <impra.com> domain name is identical/confusingly similar to Complainant’s IMPRA mark.
2. The Complainant and its predecessors in interest have been producing and selling surgical and medical devices in the U.S. under the IMPRA mark since at least as early as 1975.
3. The Complainant’s exclusive right to use IMPRA for the goods identified in registrations no. 1,439,868 and no. 1,075,432 has become incontestable pursuant to 15 U.S.C. Sect. 1065 (Exhibit 5).
4. As a result of the long-standing and continuing use by Complainant’s predecessors-in-interest and Complainant’s related companies, the IMPRA mark has acquired distinctiveness and substantial secondary meaning, and is well-known in its field. Complainant owns valuable goodwill that is symbolized by its IMPRA mark.
5. Respondent does not have any rights or legitimate interests in the <impra.com> domain name.
6. Complainant has never licensed its IMPRA mark to Respondent.
7. Upon information and belief, Respondent is not using the disputed domain name <impra.com> for a website. Copies of printouts showing that there is no website accessible at <impra.com> are attached in complainant’s exhibits.
8. Respondent registered and used the <impra.com> domain name in bad faith. Bad faith registration and use may be inferred where a Responent registered a domain name with actual or constructive knowledge of Complainant’s mark, and then passively held the domain name. See, e.g., Morgan Stanley v. Dov Loker, Case No. FA 584859 (Complaint Exhibit 18); Caravan Club v. Mrgsale, FA95314; Dollar Financial Group, Inc. v. Marc Bertola and Abbeyway Contracts Ltd., Case No. FA489397; Vienna Beef, Ltd. v. Elias Papadeas, Case No. FA360718.
B. Respondent failed to submit a Response in this proceeding.
The Complainant has several registered trademarks for the IMPRA name and has been using them for some years to sell medical devices.
The Respondent does not have a website for the disputed domain name, <impra.com>, and no other use is apparent from the record.
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 the Complaint pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and draw the inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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:
(i.) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Complainant has exhibited copies of its IMPRA United States trademark registrations as follows: no. 1075432 for prosthetic vascular structures (international class 010) registered on October 18, 1977; no. 1439868 for prosthetic vascular grafts (international class 010) registered on May 19, 1987; and no. 2947708 for medical shunts and grafts (international class 010) registered on May 10, 2005.
The disputed domain name, <impra.com>, is identical to Complainant’s IMPRA trademark. It is well settled under the Policy that the general top level domain “.com” has no influence on an analysis for identity and confusing similarity.
The Panel therefore finds Complainant has met the requirements of ¶ 4(a)(i) of the Policy.
Complainant has stated that Respondent has no license or any other type of permission to use Complainant’s IMPRA trademark. This is sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name.
For its part, Respondent is in default and thus has not come forward, as allowed under Policy ¶ 4(c)(i-iii), to attempt to show that it does have rights or legitimate interests in the disputed domain name.
The Panel finds, then, that Complainant has satisfied the proof requirement of ¶ 4(a)(ii) of the Policy.
The Panel observes that Respondent has been making no use at all of the disputed domain name since registering it on September 7, 2005. The Panel notes, too, that Complainant’s IMPRA trademark is an invented name that has been used for several decades in connection with a niche market that would be well-known to those familiar with medical vascular prosthetic devices. Hence, the Panel believes Respondent was well aware of Complainant’s trademark and was deliberately “warehousing” the disputed domain name.
This passive holding of a valuable trademark, in this case well-known in its specialized medical market, constitutes bad faith. This is not one of the enumerated bad faith grounds under ¶ 4(b)(i-iv) of the Policy, but Rule 15(a) of the Rules gives the Panel the authority to find additional grounds for bad faith when appropriate, and this particular ground is widely known and accepted in Policy decisions. Telstra v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Morgan Stanley v. Dov Loker, FA584859 (Nat. Arb. Forum Dec. 13, 2005).
The Panel finds Complainant has met its burden of proof under ¶ 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <impra.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Honorable James A. Carmody, David P. Miranda, Dennis A. Foster, Panelists
Dated: February 14, 2006
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