Breast Microseed, Inc. v. Christopher Nicholson / Compass Capital Services, Inc.
Claim Number: FA1505001619955
Complainant is Breast Microseed, Inc. (“Complainant”), represented by Leslie C. Ruiter of Stokes Lawrence, P.S., Washington, USA. Respondent is Christopher Nicholson / Compass Capital Services, Inc. (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <breastmicroseed.com> and <breastmicroseedtreatment.com> registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 18, 2015; the Forum received payment on May 18, 2015.
On May 19, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <breastmicroseed.com> and <breastmicroseedtreatment.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2015 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@breastmicroseed.com, postmaster@breastmicroseedtreatment.com. Also on May 26, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
1. Policy ¶ 4(a)(i)
a. Complainant has common law rights in the BREAST MICROSEED TREATMENT and BREAST MICROSEED marks.
b. Respondent’s <breastmicroseedtreatment.com> domain name is identical to Complainant’s BREAST MICROSEED TREATMENT mark because it is differentiated by only the removal of spaces between words and the addition of the generic top-level domain (“gTLD”) “.com.” Respondent’s <breastmicroseed.com> domain name is identical to Complainant’s BREAST MICROSEED mark because it is also differentiated by only the removal of spaces between words and the addition of the gTLD “.com.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the disputed domain names as the WHOIS information lists “Christopher Nicholson” as Registrant. Respondent has not submitted any further evidence to indicate being commonly known by the disputed domain name. Moreover, Respondent is not authorized to use Complainant’s marks.
b. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domains resolve to inactive websites.
c. Respondent lacks rights or legitimate interests in the domain name because it offers the domains for sale.
3. Policy ¶ 4(a)(iii)
a. Respondent offers the disputed domain names to Complainant for sale, which constitutes bad faith.
b. Respondent had actual knowledge of Complainant’s rights in the BREAST MICROSEED TREATMENT and BREAST MICROSEED marks at the time of registration.
c. Respondent’s domain names resolve to inactive websites, constituting bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the field of the provision of goods and services for enhancing and simplifying radiation treatment for cancer.
2. Complainant has common law rights to the BREAST MICROSEED TREATMENT and BREAST MICROSEED marks.
3. The <breastmicroseed.com> and <breastmicroseedtreatment.com> domain names were registered by Respondent on January 18, 2011, for and on behalf of Core Oncology, Inc., Complainant’s predecessor-in-title and at a time when Respondent was employed by Core Oncology, Inc.
4. Respondent has failed and refused to transfer the disputed domain names to Complainant, has used them to resolve to inactive websites and has offered them for sale.
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant does not have a registration of the BREAST MICROSEED TREATMENT or BREAST MICROSEED marks with a national registration organization. However, past panels have found that Policy ¶ 4(a)(i) does not require registration if a complainant can demonstrate having common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). The Panel also notes that Complainant has a pending trademark registration with the United States Patent and Trademark Office (“USPTO”) as provided in Annex 3.
Complainant alleges that it has common law trademark rights in the BREAST MICROSEED TREATMENT and BREAST MICROSEED marks. In order to have common law rights, a complainant must show that the mark has secondary meaning. Relevant evidence of secondary meaning can include holding domain names identical to a mark. See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark). That element has been established by the evidence in the present case, as it is apparent that when the domain names were registered in 2011, incorporating the two marks respectively, they were registered in the name of the Respondent as registrant, but for and on behalf of his employer at the time, namely Core Oncology, Inc. Complainant subsequently acquired the domain names from Core Oncology, Inc..and it owns them at the present. The Panel therefore finds that Complainant’s evidence is sufficient to establish secondary meaning in the BREAST MICROSEED TREATMENT and BREAST MICROSEED marks and that Complainant has common law rights in the marks pursuant to Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s marks. Complainant alleges that Respondent’s <breastmicroseedtreatment.com> domain name is identical to Complainant’s BREAST MICROSEED TREATMENT mark because it is differentiated by only the removal of spaces between words and the addition of the “gTLD “.com.” Complainant also submits that Respondent’s <breastmicroseed.com> domain name is identical to Complainant’s BREAST MICROSEED mark because it is also differentiated by only the removal of spaces between words and the addition of the generic top-level domain gTLD “.com.” Past panels have found that such changes to a mark in a domain name result in a domain name that is identical to the mark. See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ . . . [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Accordingly, the Panel finds that Respondent’s <breastmicroseedtreatment.com> and <breastmicroseed.com> domain names are identical to Complainant’s BREAST MICROSEED TREATMENT and BREAST MICROSEED marks respectively under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent chose to take the BREAST MICROSEED
TREATMENT and BREAST MICROSEED trademarks and to use
them in his domain names, at a time when he was employed by Core Oncology, Inc and acting for an on its behalf;
(b)Respondent uses the disputed domain names to resolve to inactive websites and has offered them for sale;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant alleges that Respondent is not commonly known as the disputed domain names. The Panel notes that the WHOIS information lists “Christopher Nicholson” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain names. Moreover, Complainant urges that Respondent is not authorized to use Complainant’s marks. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Accordingly, the Panel finds that Respondent is not commonly known by the <breastmicroseed.com> or <breastmicroseedtreatment.com> domain names under Policy ¶ 4(c)(ii);
(e)Complainant alleges that Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domains resolve to inactive websites. Complainant has provided documentation of this in Annex 9. Past panels have found that a failure to make an active use of a domain name is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). As the Panel finds such inactive use by Respondent, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii);
(f)Complainant also alleges that Respondent lacks rights or legitimate interests in the <breastmicroseed.com> and <breastmicroseedtreatment.com> domain names because Respondent offers the domains for sale. Complainant has inferred this offer of sale from Respondent’s behavior, believing there to be no other rationale for Respondent’s continued holding of the domain names after having received the letter requesting the return of assets, provided by Complainant in Exhibit 8. The Panel agrees with this interpretation of the facts. Past panels have found registration of a domain name while intending for it be used by a complainant sufficient to establish a lack of Respondent’s rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii). See Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the complainant). As the Panel finds such an intent here, the Panel finds that Respondent lacks rights or legitimate interests in the<breastmicroseed.com> and <breastmicroseedtreatment.com> domain names under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, it is abundantly clear that Respondent had no right to register the domain names in his own name as registrant at a time when he was an employee of Core Oncology, Inc. The Panel finds that this constitutes bad faith registration of the domain names.
Secondly, Respondent had no right to retain the registration of the domain names and to fail and refuse to transfer them to Complainant. Complainant, demanded by its attorney’s letter of demand of June 23, 2014 that Respondent transfer to Complainant “…the breast brachytherapy assets of Core Oncology, Inc( “Core “)…(including)…the electronic files and drive architecture held by Compass…”, Respondent’s corporate entity. The Panel finds that the failure and refusal of Respondent to effect the transfer constitutes bad faith use of the disputed domain names.
Thirdly, Complainant alleges that Respondent retains the domain names for the purpose of selling them to Complainant. Complainant has inferred this offer of sale from Respondent’s behavior, believing there to be no other rationale for Respondent’s continued holding of the domain names after receiving the letter of demand. The Panel agrees with this interpretation of the facts. Past panels have found that an offer of sale accompanied by evidence that a domain has been registered because of its value, dependent on the trademark of another is sufficient to show bad faith under Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). As the Panel finds such behavior here, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(i).
Fourthly, it is apparent from the evidence that Respondent registered the disputed domain names with actual knowledge of the rights of Core Oncology Inc. in the BREAST MICROSEED TREATMENT and BREAST MICROSEED marks. Complainant urges that Respondent registered the domain names in conjunction with his employment by Complainant’s predecessor-in-interest. Because of this, Complainant argues that it would be impossible for Respondent to have not known of Core Oncology Inc.’s and, subsequently, of Complainant’s rights in the marks at the time of registration. The Panel agrees with that submission. Past panels have found that when respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). As the Panel finds that Respondent had actual knowledge of Core Oncology Inc.’s rights in the BREAST MICROSEED TREATMENT and BREAST MICROSEED marks at the time of registration and of Complainant’s subsequent rights, the Panel finds that Respondent registered and used the <breastmicroseed.com> and <breastmicroseedtreatment.com> domains in bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant alleges that Respondent’s domain names resolve to inactive websites. Complainant has provided evidence of such use in Annex 9. Past panels have found inactive holding sufficient to find bad faith in use and registration under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Accordingly, the Panel finds Respondent registered and uses the breastmicroseed.com> and <breastmicroseedtreatment.com> domain names in bad faith under Policy ¶ 4(a)(iii).
In addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the BREAST MICROSEED TREATMENT or BREAST MICROSEED marks and its conduct since the registration, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <breastmicroseed.com> and <breastmicroseedtreatment.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 20, 2015
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