DECISION
Academy of General Dentistry v. Paul Schafer
Claim Number: FA2310002065474
PARTIES
Complainant is Academy of General Dentistry ("Complainant"), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA. Respondent is Paul Schafer ("Respondent"), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ncagd.com>, registered with Wild West Domains, LLC.
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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on October 9, 2023. Forum received payment on October 9, 2023.
On October 9, 2023, Wild West Domains, LLC confirmed by e-mail to Forum that the <ncagd.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 October 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2023 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@ncagd.com. Also on October 10, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
On November 1, 2023 the Panel issued a procedural order requesting Complainant to provide evidence that it had acquired its claimed common law rights before the disputed domain name was registered and have it e-mailed to Forum and Respondent no later than November 8, 2023. The order requested Respondent to provide any response to Complainant's evidence of its claimed common law rights and have it e-mailed to Forum and Complainant no later than November 15, 2023. The time period for the Panel's Decision was extended until further directive. On November 8, 2023, Complainant complied with the procedural order. Respondent failed to submit any response to Complainant's evidence.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Founded in 1952, Complainant, Academy of General Dentistry, is the only professional association that exclusively represents the needs and interests of general dentists. Complainant provides its more than 40,000 members with the resources, support, education, and inspiration they need to deliver the best dental care and oral health education to the public.
Complainant has rights in the ACADEMY OF GENERAL DENTISTRY and AGD trademarks both at common law and through registrations with the United States Patent and Trademark Office ("USPTO"). Complainant's chapter serving Complainant's members in northern California is named the Northern California Academy of General Dentistry and has an official website accessible at the <norcalagd.org> domain name.
Respondent's <ncagd.com> domain name is confusingly similar to Complainant's AGD mark.
Respondent has no rights or legitimate interests in the <ncagd.com> domain name because Respondent has never been known or referred to as AGD or any variation thereof; is not licensed or otherwise authorized by Complainant to use the AGD and/or ACADEMY OF GENERAL DENTISTRY marks; and has not used the domain name in connection with a bona fide offering of goods or services. Until very recently, the domain name resolved to a website that constituted a clear and willful attempt to impersonate the website of the Northern California Academy of General Dentistry.
After Complainant notified Respondent of Complainant's rights in its marks and requested Respondent to relinquish control of the domain name, the domain name now resolves to an inactive website that displays the NCAGD mark, a copyright notice (© NCAGD 2023), and the text "Maintenance mode is on Site will be available soon. Thank you for your patience!"
Upon information and belief, Respondent is a former member of the board of the Northern California Academy of General Dentistry. Hence Respondent was well-aware of Complainant's prior rights in the AGD and ACADEMY OF GENERAL DENTISTRY marks and nevertheless proceeded to register and use the <ncagd.com> domain name in bad faith for a website with the intent to create the false impression that it was the official website for the Northern California Academy of General Dentistry.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has established all the elements entitling it to relief.
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."
(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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint. However, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ('Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint').
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the ACADEMY OF GENERAL DENTISTRY and AGD trademarks through registrations with the USPTO (e.g., ACADEMY OF GENERAL DENTISTRY Reg. No. 3,610,985, filed on November 14, 2007, registered on April 28, 2009 and claiming first use in commerce in 1952; AGD, Reg. No. 5,828,806, filed on February 5, 2009, registered on August 6, 2019 claiming first use in commerce in 1952; and stylized "A" ACADEMY of GENERAL DENTISTRY, Reg. No. 5,838,587, filed on January 11, 2019, registered on August 20, 2019 and claiming first use in commerce in 2017).
The Panel finds Respondent's <ncagd.com> domain name to be confusingly similar to Complainant's AGD mark, only differing by the addition of the letters "nc", which do not distinguish the domain name from the mark, and the inconsequential ".com" generic top-level domain ("gTLD"), which may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <ncagd.com> domain name was registered on March 14, 2008, prior to the registration of Complainant's ACADEMY OF GENERAL DENTISTRY mark and prior to the filing of Complainant's application to register its AGD mark. However, in response to the Panel's procedural order, Complainant has provided screenshots of Complainant's website as it appeared from 1997 through March 2008 showing the use of Complainant's AGD and ACADEMY OF GENERAL DENTISTRY marks. Accordingly, the Panel is satisfied that Complainant had acquired common law rights in those marks prior to the registration of Respondent's <ncagd.com> domain name.
Until recently, the <ncagd.com> domain name resolved to a website purporting to be and having the look and feel of the official website of the Northern California Academy of General Dentistry. It presently resolves to an inactive webpage.
These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <ncagd.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA 1849706 (Forum July 17, 2019). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's AGD ACADEMY OF GENERAL DENTISTRY marks when Respondent registered the <ncagd.com> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's mark as to the source of Respondent's website and of the services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ncagd.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: November 18, 2023
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