Joseph H. Dawson v. Doctor
Claim Number: FA0507000521036
Complainant is Joseph H. Dawson (“Complainant”),
represented by Susan Okin Goldsmith,
of Duane Morris LLP, 240 Princeton
Avenue, Suite 150, Hamilton, NJ 08619.
Respondent is Doctor (“Respondent”),
250/25 P.V.S Tower, Prahonyothin 64 Kukod, Lumlookka, 12130, Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <drgem.com>,
registered with Go Daddy Software, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 25, 2005.
On
July 21, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <drgem.com>
is registered with Go Daddy Software, Inc. and that 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
July 26, 2005, a Notification of Complaint and Commencement of Administrative Proceeding
(the "Commencement Notification"), setting a deadline of August 15,
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@drgem.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 20, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (Ret.) 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 <drgem.com> domain name is identical to Complainant’s DR. GEM
mark.
2. Respondent does not have any rights or
legitimate interests in the <drgem.com>
domain name.
3. Respondent registered and used the <drgem.com> domain name in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Joseph H. Dawson, has used the DR. GEM mark since 1980. Complainant has
appeared on television programs and other media under the moniker “Dr.
Gem.” High quality gemstones and
semi-precious gems are Complainant’s stock in trade. Complainant also provides informational items about gemstones and
jewelry.
Complainant
holds numerous registrations with the United States Patent and Trademark Office
(“USPTO”) for the DR. GEM mark (E.g., Reg.
No. 2,455120 issued May 29, 2001; Reg. No. 2,555,673 issued April 2, 2002; Reg.
No. 2,455,121 issued May 29, 2001).
Complainant
operates several websites at the <doctorgem.com> and
<doctorgem.net> domain names, which offer information and products for
sale.
Respondent
registered the <drgem.com> domain
name on February 7, 2003. Respondent’s
domain name resolves to a website that offers products in direct competition
with Complainant’s business.
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.
Complainant
asserts that it has established rights in the DR. GEM mark through registration
with the USPTO. See 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.”).
Additionally,
Complainant asserts that Respondent’s <drgem.com>
domain name is identical to Complainant’s DR. GEM mark pursuant to Policy ¶
4(a)(i), as the domain name fully incorporates the mark and merely removes the
period after the abbreviation “DR.”
Moreover, Respondent’s domain name adds the generic top-level domain
“.com.” Such changes are not enough to overcome a finding of identicalness of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See
Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum
Apr. 24, 2000) (finding that punctuation is not significant in determining the
similarity of a domain name and mark); see
also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000)
(holding “that the use or absence of punctuation marks, such as hyphens, does
not alter the fact that a name is identical to a mark"); see also Fed’n
of Gay Games, Inc. v. Hodgson,
D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to the complainant's registered trademark GAY
GAMES); see also Snow Fun, Inc. v.
O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain
name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent does
not have rights or legitimate interests in the <drgem.com> domain name.
When a complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the
respondent to prove that it has rights or legitimate interests. 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. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the
complainant asserts that the respondent does not have rights or legitimate
interests with respect to the domain, the burden shifts to the respondent to
provide credible evidence that substantiates its claim of rights or legitimate
interests in the domain name); see also
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000) (finding that, under certain circumstances, the mere assertion by the
complainant that the respondent does not have rights or legitimate interests is
sufficient to shift the burden of proof to the respondent to demonstrate that
such rights or legitimate interests do exist); 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).
Moreover,
Respondent is not commonly known by the <drgem.com>
domain name. Thus, the Panel may
conclude that Respondent has not established rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000) (finding no rights or legitimate interest where respondent was not
commonly known by the mark and never applied for a license or permission from
complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see
also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum
Aug. 29, 2000) (finding that the respondent has no rights or legitimate
interests in domain names because it is not commonly known by the complainant’s
marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services
or for a legitimate noncommercial or fair use).
Furthermore,
Respondent is using a identical domain name to operate a website that markets
competing jewelry. Such competitive use is not a use in connection with 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 Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that respondent’s use of the
disputed domain name to redirect Internet users to a financial services
website, which competed with complainant, was not a bona fide offering of goods or services); see also Avery Dennison Corp. v. Steele, FA
133626 (Nat. Arb. Forum Jan 10, 2003) (finding that respondent had no rights or
legitimate interests in the disputed domain name where it used complainant’s
mark, without authorization, to attract Internet users to its business, which
competed with complainant).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the <drgem.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by using the domain
name, which contains an identical version of Complainant’s DR. GEM mark, to
sell jewelry in direct competition with Complainant. Such use constitutes disruption and is evidence that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(b)(iii). See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding respondent acted in bad faith
by attracting Internet users to a website that competes with complainant’s
business); see also EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of variation from complainant's marks
suggests that respondent, complainant’s competitor, registered the names
primarily for the purpose of disrupting complainant's business).
Moreover,
Respondent registered and used the disputed domain name in bad faith under
Policy ¶ 4(b)(iv), as Respondent is using the <drgem.com> domain name to intentionally attract, for
commercial gain, Internet users to its website, by creating a likelihood of
confusion with Complainant as to the source, sponsorship, affiliation or
endorsement of its website. See Fanuc Ltd v. Mach. Control Servs.,
FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated
Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's
mark by using a domain name identical to the complainant’s mark to sell the
complainant’s products); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
Furthermore,
Respondent has used the <drgem.com>
domain name, which contains Complainant’s DR. GEM mark, to redirect
Internet users to Respondent’s website featuring goods and services that
compete with Complainant’s business.
This suggests that Respondent had actual knowledge of Complainant’s
rights in the mark when it registered the domain name and chose the disputed
domain name based on the goodwill Complainant has acquired in its DR. GEM
mark. Furthermore, Complainant’s
registration of the DR. GEM mark with the USPTO bestows upon Respondent
constructive notice of Complainant’s rights in the mark. Respondent’s registration of a domain name
containing Complainant’s mark in spite of Respondent’s actual or constructive
knowledge of Complainant’s rights in the mark is evidence of bad faith registration
and use pursuant to Policy ¶ 4(a)(iii).
See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO
Apr. 24, 2002) (finding that because the link between the complainant’s mark
and the content advertised on the respondent’s website was obvious, the
respondent “must have known about the Complainant’s mark when it registered the
subject domain name”); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <drgem.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
September 1, 2005
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