Accuray Incorporated v. Sanjay Mongia / Nuero Network
Claim Number: FA1409001582340
Complainant is Accuray Incorporated (“Complainant”), represented by Alaleh Nouri, California, USA. Respondent is Sanjay Mongia / Neuro Network (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cyberknifeindia.net>, registered with Melbourne IT Ltd.
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 Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2014; the National Arbitration Forum received payment on September 29, 2014.
On October 5, 2014, Melbourne IT Ltd confirmed by e-mail to the National Arbitration Forum that the <cyberknifeindia.net> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cyberknifeindia.net. Also on October 8, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 14, 2014.
Complainant submitted its Additional Submission which was accepted and found complete on October 21, 2014.
On October 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.
On October 27, 2014 Respondent submitted a response to Complainant’s Additional Submissions, which has also been admitted and considered by the Panel.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the CYBERKNIFE trademark through its trademark registrations listed below and alleges that the disputed domain name is confusingly similar to Complainant’s CYBERKNIFE mark.
The disputed domain name <cyberknifeindia.net>, incorporates Complainant’s CYBERKNIFE mark in its entirety. Complainant submits that the additional elements “india”, being a geographic term, and the generic top-level domain name (gTLD) extension “.net” do not substantially diminish the disputed domain name’s confusing similarity with Complainant’s mark.
Complainant alleges that Respondent has no rights or legitimate interests in either the disputed domain name or Complainant’s CYBERKNIFE mark. Complainant submits that Respondent is not commonly known by the disputed domain name; that Respondent is not a customer of Complainant or an authorized distributor of the CYBERKNIFE product and as such has no legitimate purpose in advertising Complainant’s product. Complainant asserts that Respondent has no bona fide sales for goods or services offered at the disputed domain that relate to the CYBERKNIFE mark as he is not an authorized distributor.
Complainant submits that the disputed domain name was registered and is being used in bad faith. Complainant argues that the CYBERKNIFE trademark was first registered with the USPTO in 1998 and registered in India in 2010, whereas the disputed domain name was not registered until May 2013, therefore indicating that the Respondent had prior notice of the CYBERKNIFE trademark and was intentionally infringing Complainant’s CYBERKNIFE mark.
Complainant has provided copies of elements of both the website which it maintains itself at the <cyberknife.com> address and the website to which the disputed domain name resolves and submits that the text found on the Respondent’s website was taken verbatim from Complainant’s <cyberknife.com> website and has been reproduced without Complainant’s consent. Complainant submits that such reproduction of the content of its website by Respondent is evidence of bad faith use.
Furthermore Complainant complains that Respondent’s website contain links to information about a competing product Gamma Knife, which can capture sales by consumers looking for Complainant’s CYBERKNIFE product. Respondent’s further association with Complainant’s competitor, Gamma Knife, is shown by Respondent’s link on his website to his Twitter account where he is listed as a Gamma Knife Surgeon.
Complainant submits that it follows that Respondent has intentionally attempted to attract, possibly for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Because of the confusing similarity of the domain name and Complainant’s mark, Internet users who conduct a web search for Complainant’s CYBERKNIFE product or who type Complainant’s domain name incorrectly, can easily be directed to this site and easily believe it to be hosted by Complainant.
B. Respondent
Respondent alleges that the Complaint is without merit, frivolous and based on incomplete and incorrect facts and wrong assumptions and is not maintainable.
Respondent denies that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights.
Addressing Complainants claimed rights, Respondent argues that the intellectual property rights of Complainant in the CYBERKNIFE mark relate to the use of the mark in relation to goods and not to the services provided with the use of their products. The Complaint is based on claimed rights in the trademarks registered in Classes 9 and 10 for goods, namely surgical equipments and apparatus etc. and is not a Service Mark.
Denying that there is any confusing similarity between the disputed domain name and Complainant’s mark, Respondent argues that the two additional elements “india” and “.net” adequately distinguish the domain name and mark and denies that an Internet user who conducts a web search could believe that the website to which the disputed domain name resolves belongs to Complainant. Respondent argues that such a submission questions the intellect or competence of the web users which is unwarranted. Respondent refers to the results of a simple search on Google to demonstrate the presence of several websites with the term CYBERKNIFE as part of the domain name address.
Respondent claims to have rights or legitimate interest in the disputed domain name because he is a “Cyberknife Associate Consultant” and makes bona fide use of Complainant’s equipment in carrying out operations. Respondent states that he is a qualified and well known Neurological and Radio Surgeon based in India. He claims to be a “Cyberknife Associate Consultant” recognized by HCG CyberKnife Centre and treats patients by Cyberknife Radio surgery at HCG centre Bangalore and BLK centre at New Delhi. Respondent submitted a letter from the HCG Centre to this effect in an annex to the Response.
Respondent states that there is very little information about the CYBERKNIFE radio surgery system in India and submits that he established the website to which the disputed domain name resolves purely for information and knowledge of patients about the availability of the technology for treatment.
Addressing the complaint that he is not a direct customer or distributer of Complainant and therefore not entitled to use the CYBERKNIFE trademark, Respondent argues that Complainant has failed to understand and appreciate that he is a bona fide end user and is making no attempt to sell their or any other products on his website.
Respondent does not deny that he has reproduced some text verbatim from the Complainant's website but asserts that it is only a small part of the text and copied only to ensure accuracy of information about the technology. In India as in other advanced countries, the patient has the right and the doctor treating him is under an obligation to provide all pertinent information before an operation. Any inaccuracy in the information could lead to breach of trust and consequent litigation. It is for this reason the small part of the text only relating to the technology has been reproduced on Respondent’s website.
Respondent submits that Complainant has made a wrong assumption that that this website is maintained to promote or sell products infringing its intellectual property rights in the CYBERKNIFE trademark. He denies that he infringed Complainant’s trademarks as alleged and asserts that no attempt has been made to sell any goods under CYBERKNIFE or any other brand. Respondent asserts that he maintains an educational website providing information about the state of the art technology in health services.
Respondent argues that no harm or loss of any kind will be caused to Complainant if the remedy sought is denied. However on the contrary a finding in favor of Complainant will cause irreparable damage to the reputation of the Respondent.
C. Complainant’s Additional Submissions
In additional submissions, Complainant rejects the proposition that the “india” and “.net” elements distinguish the name and mark, asserting that the former is a geographic identifier which does not add any distinctiveness, citing Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) and the latter is the generic top level domain name extension which may be ignored for the purpose of comparison, citing Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007).
Complainant denies that Respondent has acquired rights in Complainant’s trademark or the disputed domain name as a “CyberKnife Associate Consultant.” The letter presented by Respondent was not from Complainant or any party authorized to grant any rights in Complainant’s mark. Furthermore, nothing in the letter states that the author has any rights to exploit the CYBERKNIFE mark and Respondent fails to provide the letter’s attached agreement detailing the role and responsibility of a CyberKnife Consultant.
Complainant denies that Respondent has any rights in Complainant’s trademark or the disputed domain name as an “end user” of the product. Hundreds of medical personnel worldwide have worked in connection with a CYBERKNIFE system however this does not give rise to rights in Complainant’s trademark or cause Complainant to forego its rights in related domain names. Complainant reserves these rights to itself and authorized users. Complainant has subsidiaries, direct sales, and distributors in India which engage in the promotion and marketing of Complainant’s product which is interrupted and disturbed by Respondent.
Complainant denies Respondent’s claim of fair use of the disputed domain name as an “educational site” on two grounds. Firstly, Respondent’s website makes repetitive use of general product descriptions and does not contain any commentary, opinions, or explanations from Respondent on/of Complainant’s product. Therefore, there is no context giving rise to the belief that this site is for educational purposes.
Secondly, a claim of fair use for educational purposes cannot be found if there is commercial gain by Respondent. The disputed domain name <cyberknifeindia.net> is clearly for self promotion and represents possible commercial gain for Respondent. Complainant finds that the disputed domain is for the benefit and self promotion of Respondent because the disputed domain name “consists primarily of links to other sites run by Complainant (sic), links to Respondent’s twitter page, links to Respondent’s blog, and links to contact Respondent” . The links to other sites run by Respondent include <cyberknife.co.in>, <gammaknife.in>, <gammaknifeonline.in>, and <cyber-knife.ae>. The lack of substance and the proliferation of Respondent’s information demonstrate that the purpose of Respondent’s site is not to educate Internet users about radio surgery but to educate users about Respondent, Respondent’s services and to attract patients.
In addition, Respondent’s letter annexed to the Response states that he is a CyberKnife Associate Consultant. Complainant is not privy to the details of the agreement on which Respondent was so appointed however; if this consulting agreement results in any referral or consultation fees a commercial gain could be had by Respondent if the disputed domain name has resulted in new patients for Respondent.
Lastly, Respondent’s position as an end user of the product automatically proves a commercial interest which eclipses Respondent’s ability to make a fair use claim of education.
Complainant rebuts Respondent’s claims that the content from Complainant’s website was reproduced on Respondent’s site only to ensure the accuracy of technical information and prevent litigation from patients. Complainant refers to the following text which was reproduced from its website and submits that it was not technical in nature: “The CyberKnife Robotic Radiosurgery System is a non-invasive alternative to surgery for the treatment of both cancerous and non-cancerous tumors anywhere in the body, including the prostate, lung, brain, spine, liver, pancreas and kidney. The treatment – which delivers beams of high dose radiation to tumors with extreme accuracy – offers new hope to patients worldwide.” Complainant submits that this language is the most general of overviews detailing the CYBERKNIFE System and could have easily been re-worded by Respondent.
Complainant also rebuts Respondent’s claims that Internet users would not believe the disputed domain name to be the Complainant’s site and that many website addresses contain the term CYBERKNIFE, arguing firstly that any use of CyberKnife in other domain names is not relevant to the proceedings at hand; secondly, other domain names that contain the term CYBERKNIFE belong either to Complainant or an authorized representative of Complainant, where Complainant has control over the domain name and the information provided. In these cases, likelihood of confusion is not at issue as the site is in fact sponsored by, affiliated with or endorsed by Complainant. Complainant does not have the same control over Respondent’s site and so it is imperative that Internet users are not confused and led to believe that Respondent’s site is sponsored, endorsed, affiliated, or created by Complainant.
Addressing Respondent’s statement that he is not selling the Complaints product or any other products on his website, Complainant asserts that Respondent is using the disputed domain name to promote the competing Gamma Knife product. This could lead to a drop in sales for Complainant.
D. Respondent’s Additional Submissions
Respondent replied to Complainant’s Additional Submissions, reasserting his earlier arguments and in particular stating that Complainant is refusing to understand and appreciate that as an end user of the products in the conduct of medical surgeries he needs to provide information to patients about the equipment in use. He is not providing information about the products as such and only providing information about the radio surgery technology. He re-asserts that his website is purely educational and the links to other websites are for educational information only- all being related to radio surgery. Respondent states that he has every right to provide links on his website to other education sites about the topic of radio surgery and denies that he is making commercial gain or commercial advantage through his website.
Complainant is a producer of a device used in radio surgery which Complainant promotes as a non-invasive alternative to surgery for the treatment of both cancerous and non-cancerous tumors.
Complainant is the registered owner of the following trademarks:
Trademark Registration No. Class Goods
CYBERKNIFE 74452587 10 Stereotactic radiosurgery and
radiotherapy apparatus in the nature of a robotic linear accelerator used for the precision delivery of therapeutic x-rays.
CYBERKNIFE 2003493 9,10 Stereotactic radiosurgery and
radiotherapy apparatus in the nature of a robotic linear accelerator used for the precision delivery of therapeutic x-rays.
The disputed domain name <cyberknifeindia.net> was registered by Respondent on May 23, 2013.
The disputed domain name is registered in the name Nuero Network and is owned by Sanjay Mongia who states that he is a qualified surgeon in practice in India and an end user of Complainant’s CYBERKNIFE products.
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."
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 provided evidence of its rights in the trademark CYBERKNIFE through its ownership of the above-listed registered trademarks.
This Panel finds that the disputed domain name is confusingly similar to Complainants mark as it consist of Complainant’s mark in its entirety in combination with the geographical place-name “India” and the “.net” generic domain name extension. This Panel finds that words “cyber” and “knife” in combination are, taken together, the dominant element of the disputed domain name. Neither the geographic word “India” nor the “.net” domain name extension distinguish the domain name from Complainant’s mark in any way.
Complainant has therefore succeeded in the first element of the test as set out in Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name. Respondent’s case in this regard is that as an end user he is entitled to make use of Complainant’s trademark to provide information about radio surgery to the public in India.
This Panel finds that, as an end user, Respondent has no need and no right to adopt Complainants distinctive trademark CYBERKNIFE as the dominant element of the domain name in order to provide educational information about the radio surgery technique. Radio surgery techniques can be readily identified without having recourse to the use of Complainant’s trademark and furthermore the manner in which it is being used would, initially at least, give the impression that there is some association between the website to which the disputed domain name resolves and Complainant.
The fact that Respondent may use the CYBERKNIFE product in providing medical services do not give him any rights or interest in the mark. Notwithstanding his the position that he has adopted that the website is purely for educational purposes, it is used clearly in association with, and to promote his professional practice and such use, without consent cannot in the circumstances be construed as a bona fide use of the Complainant’s mark, particularly when the domain name is clearly created and registered because of its association with the Complainant’s product and used as the address of a website that is being used to promote competing products in this manner.
Additionally, Respondent, who, in these circumstances, bears the burden of proof in establishing that he has rights or legitimate interest in the disputed domain name, had not provided any evidence that the organization, HCG CyberKnife Centre which has appointed him as a “Cyberknife Associate Consultant” has any rights or legitimate interest in the CYBERKNIFE mark or the domain name either and Complainant denies that it has any such rights.
In the circumstances this Panel finds that Respondent has not acquired any rights or legitimate interest in the disputed domain name. Complainant has therefore also succeeded in the second element of the test as set out in Policy ¶ 4(a)(ii).
Complainant’s rights in the CYBERKNIFE mark predate the registration of the disputed domain name in 2013. It is clear from his submissions that Respondent has been aware of Complainant and its reputation and that the disputed domain name was chosen and registered specifically because it refers to Complainant’s CYBERKNIFE product.
Insofar as Respondent’s case is based on his claimed right to use the disputed domain name because he is an end user of Complainant’s product, this Panel finds that whereas Respondent indeed has every right to establish a website with information about radio surgery technology and to provide appropriate links to other education sites about the same topic he is not entitled to use the disputed domain name which is confusingly similar to Complainant’s trademark in order to attract Internet users to a commercial site such as this. Respondent’s denial that he is receiving some commercial advantage through the use of the disputed domain name as the address of his website is incorrect. Respondent’s website is clearly a marketing tool to promote his surgery services in addition to providing basic information about radio surgery technology to Internet users.
Furthermore, the fact that Respondent is providing links to a third party competing product on the website to which the disputed domain name resolves defeats any merit in his argument that it is purely an educational site.
In the circumstances this Panel finds that Respondent has registered and is using the disputed domain name in bad faith. Complainant has therefore also succeeded in the third and final element of the test as set out in Policy ¶ 4(a)(iii) and is entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cyberknifeindia.net> domain name be TRANSFERRED from Respondent to Complainant.
_________________________
James Bridgeman, Panelist
Dated: November 3, 2014
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