national arbitration forum

DECISION

Dr. Sydney R. Coleman v. Support for Patients

Claim Number: FA0607000743682

PARTIES

Complainant is Dr. Sydney R. Coleman (“Complainant”), represented by John W. Dozier, of Dozier Internet Law, P.C., 301 Concourse Boulevard, West Shore III, Suite 300, Glen Allen, VA 23059. Respondent is Support for Patients (“Respondent”), P.O. Box 99800, EmeryVille, CA 94662.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <drsydneycoleman.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 3, 2006.

On July 4, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <drsydneycoleman.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 July 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 1, 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@drsydneycoleman.com by e-mail.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On August 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <drsydneycoleman.com> domain name is identical to Complainant’s DR. SYDNEY COLEMAN mark.

2. Respondent does not have any rights or legitimate interests in the <drsydneycoleman.com> domain name.

3. Respondent registered and used the <drsydneycoleman.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Dr. Sydney R. Coleman, is a plastic surgeon involved in the provision of medical services and products, the publication of medical industry literature, and the presenter of extensive lectures and instruction related to plastic surgery since 1985, at latest. Complainant bases his practice in New York and serves as Clinic Assistant Professor at the New York University Medical Center. Complainant internationally lectures, publishes and promotes LipoStructure, a technique invented by Complainant for fat grafting and plastic surgery. Complainant has published numerous articles on plastic surgery and LipoStructure, including Structural Fat Grafts and Facial Recontouring with LipoStructure, Long-term Survival of Fat Transplants, and Structural Fat Grafting of the Face: Lessons from a Teacher and His Student. Due to the high demand for training and education regarding the LipoStructure technique, Complainant also lectures extensively throughout the world.

Respondent registered the <drsydneycoleman.com> domain name on January 17, 2005. The disputed domain name resolves to a website that purports to be a support group for former dissatisfied patients of Complainant and provides a link to contact the administrator of the website via e-mail.

DISCUSSION

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. See 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.

Identical and/or Confusingly Similar

An individual may acquire common law rights to their name if that individual can demonstrate that they have acquired secondary meaning in the name with the submission of extrinsic evidence. The Panel finds that Complainant has established common law rights in the DR. SYDNEY COLEMAN mark for the purposes of Policy ¶ 4(a)(i) by creating sufficient secondary meaning in his name through his international presence, numerous lectures and publications in the field of plastic surgery. See Bayless v. Cayman Trademark Trust, FA 648245 (Nat. Arb. Forum Apr. 3, 2006) (finding that a chefs use of his name for over 20 years was sufficient to establish common law rights in the name); see also Kaino v. Fix, FA 699578 (Nat. Arb. Forum June 19, 2006) (finding that an artist that displayed work under his name for 6 years sufficiently established secondary meaning in the name).

Complainant asserts that the <drsydneycoleman.com> domain name is identical to his DR. SYDNEY COLEMAN mark. The disputed domain name merely removes the punctuation and spaces from Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” Accordingly, the Panel finds the disputed domain to be identical to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Dawson v. Doctor, FA 521036 (Nat. Arb. Forum Sept. 1, 2005) (finding the <drgem.com> domain name to be identical to the complainant’s DR. GEM mark because it “fully incorporates the mark and merely removes the period after the abbreviation ‘DR.’”); see also Marino v. Video Images Prods., D2000-0598 (WIPO Aug. 2, 2000) (finding <danmarino.com> to be identical to the complainant’s DAN MARINO mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Pursuant to Policy ¶ 4(a)(ii), Complainant bears the initial burden of proof to show that Respondent lacks rights and legitimate interests in the disputed domain name. However, once Complainant sufficiently establishes a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Respondent’s failure to respond to the Complaint creates a presumption that Respondent lacks rights and legitimate interests in the disputed domain name. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel, however, shall evaluate the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

Respondent is using the disputed domain name to resolve to a single-page website that purports to be a support group for former dissatisfied patients of Complainant and provides a link to contact the administrator of the website via e-mail. The Panel finds that Respondent’s use of Complainant’s mark in its identical state within a domain name to divert Internet users to a website that criticizes Complainant is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial use pursuant to Policy ¶ 4(c)(iii). The Panel wishes to emphasize that the freedom of speech affords individuals the right to publish websites that criticize or critique the actions of a company or an individual; however, such criticism or critiques shall not take place at a domain name that contains the identical common law or registered mark of the targeted company or individual. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); see also Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”).

Furthermore, the Panel finds no evidence in the record to suggest that Respondent is commonly known by the <drsydneycoleman.com> domain name. According to the WHOIS database, the registrant of the disputed domain name is “Support for Patients.” Accordingly, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s registration and use of the disputed domain name that is identical to Complainant’s mark to resolve to a website that criticizes Complainant and purports to run a support group constitutes disruption and evidences bad faith pursuant to Policy ¶ 4(b)(iii). See Nw. Airlines, Inc. v. Jorgenson, FA 96586 (Nat. Arb. Forum Mar. 28, 2001) (“Respondent registered the domain name for the purpose of bringing Internet users desiring to learn more about Complainant to Respondent's site for the intended purpose of publishing contrary and critical views of Complainant thus disrupting the business of Complainant. Registering a domain name identical with the mark of Complainant, for this purpose, is bad faith.”); see also Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent’s registration and use of a domain name nearly identical to Complainant’s mark to criticize Complainant’s business practices is evidence of registration and use of the <diners-club.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <drsydneycoleman.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: August 18, 2006

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