national arbitration forum

 

DECISION

 

Ortho-Tain, Inc. v. DotRegistrar Private Registration

Claim Number: FA0701000906238

 

PARTIES

Complainant is Ortho-Tain, Inc. (“Complainant”), represented by Brian M. Mattson, 2849 W. Armitage Ave., Chicago, IL 60647.  Respondent is DotRegistrar Private Registration (“Respondent”), PO Box 821066, Vancouver, WA 98682-0024.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <orthotain.com>, registered with DotRegistrar.com.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 30, 2007.

 

On January 31, 2007, DotRegistrar.com confirmed by e-mail to the National Arbitration Forum that the <orthotain.com> domain name is registered with DotRegistrar.com and that Respondent is the current registrant of the name.  DotRegistrar.com has verified that Respondent is bound by the DotRegistrar.com 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 February 1, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 21, 2007, 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@orthotain.com by e-mail.

 

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

 

On February 27, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <orthotain.com> domain name is identical to Complainant’s ORTHO TAIN mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Ortho-Tain, Inc., is a world leader in orthodontic appliances.  Complainant holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the ORTHO TAIN mark (Reg. No. 871,384 issued June 17, 1969). 

 

Respondent, DotRegistrar Private Registration, registered the <orthotain.com> domain name on April 17, 2006.  Respondent is using the disputed domain name to display hyperlinks that advertise various orthodontic goods and services.

 

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

 

Complainant’s registration of the ORTHO TAIN mark with the USPTO in 1969 predates Respondent’s registration of the <orthotain.com> domain name in 2006.  Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to Complainant.  Thus, the Panel finds that Complainant has established rights in the ORTHO TAIN mark pursuant to Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2000) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., 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.”).

 

Respondent’s <orthotain.com> domain name contains Complainant’s entire ORTHO TAIN mark, but with the omission of the space and an addition of the generic top-level domain (gTLD) “.com.”  These slight changes fail to properly distinguish the disputed domain name from Complainant’s mark for purposes of Policy ¶ 4(a)(i).  Therefore, the Panel finds that Respondent’s <orthotain.com> domain name is identical to the complainant’s ORTHO TAIN mark pursuant to Policy ¶ 4(a)(i).  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)”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <orthotain.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Because of Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not 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) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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 a right or legitimate interest does exist).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

 

Complainant has alleged that Respondent is not commonly known by the <orthotain.com> domain name.  The Panel finds no evidence in the record indicating that Respondent is commonly known by the disputed domain name.  Thus, the Panel finds that Respondent is not commonly known by the <orthotain.com> 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

 

Respondent is using the <orthotain.com> domain name to display hyperlinks that advertise various orthodontic goods and services.  These goods and services compete with Complainant’s business, and using the <orthotain.com> domain name to advertise these competing goods and services does not constitute either a bona fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

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

 

Registration and Use in Bad Faith

 

Respondent is using the <orthotain.com> domain name to display hyperlinks that advertise various orthodontic goods and services.  This use of the disputed domain name is likely to disrupt Complainant’s business by diverting business away from Complainant.  Therefore, the Panel finds that Respondent’s registration and use of the <orthotain.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii).  See Expedia, Inc. v. Fernandez, FA 881130 (Nat. Arb. Forum Feb. 13, 2007) (finding that operating a commercial website featuring links to other companies providing competing products and services disrupts the complainant’s business and thus indicates bad faith according to Policy ¶ 4(b)(iii)); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

Respondent’s use of the <orthotain.com> domain name, which is identical to Complainant’s ORTHO TAIN mark, may confuse customers as to the affiliation, sponsorship, or endorsement of the orthodontic products and services advertised on Respondent’s website.  Respondent presumably profits from this confusion by receiving click-through referral fees for each redirected Internet user.  The Panel finds that such registration and use of the <orthotain.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

 

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 <orthotain.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

                                                                                               

                                                           

                                                                        John J. Upchurch, Panelist

                                                                        Dated:  March 16, 2007