Migun Medical Instrument Co., Ltd. v. Steven Krane
Claim Number: FA0607000744458
Complainant is Migun Medical Instrument Co., Ltd. (“Complainant”), represented by Jun Y. Lee, 1952 Gallows Rd., Suite 303, Vienna, VA 22182. Respondent is Steven Krane (“Respondent”), 9683 Parkview Avenue, Boca Raton, FL 33427.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <migun.com>, registered with Go Daddy Software, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 6, 2006.
On July 6, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <migun.com> domain name 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 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 2, 2006 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@migun.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 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <migun.com> domain name is identical to Complainant’s MIGUN mark.
2. Respondent does not have any rights or legitimate interests in the <migun.com> domain name.
3. Respondent registered and used the <migun.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Migun Medical Enterprises Co., Ltd., uses the MIGUN mark to sell therapeutic beds, mats and belts that apply heat, friction and pressure. Complainant also uses the mark in connection with medical instruments and related accessories. Complainant has registered the MIGUN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,967,438 issued July 12, 2005, filed March 27, 2001).
Respondent registered the <migun.com> domain name on July 3, 2001. Respondent’s domain name resolves to the <therasage.com> domain name, where Respondent sells competing products. Complainant alleges that Respondent is the Chief Sales and Marketing Officer of Therasage Corporation, a competitor of Complainant. Upon receiving Complainant’s cease-and-desist letter in March 2006, Respondent stopped redirecting Internet users to its competing website but then resumed forwarding Internet users to the <therasage.com> domain name a few weeks later.
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 has established rights in the MIGUN mark as a result of its registration of the mark with the USPTO. Complainant’s rights to the MIGUN mark predate Respondent’s registration of the <migun.com> domain name on July 3, 2001, because Complainant filed for a trademark registration on March 27, 2001. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
In addition, Respondent has not sufficiently distinguished
the <migun.com> domain name from Complainant’s MIGUN mark by
merely adding the generic top-level domain (“gTLD”) “.com.” Previous panels have concluded that gTLDs
are irrelevant in conducting a Policy ¶ 4(a)(i) analysis. Consequently, Respondent’s domain name,
which includes Complainant’s registered mark in its entirety, is identical to
the MIGUN mark under Policy ¶ 4(a)(i). See
Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May
27, 2003) (“The addition of a top-level domain is irrelevant when establishing
whether or not a mark is identical or confusingly similar, because top-level
domains are a required element of every domain name.”); see also
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or confusingly
similar).
The Panel holds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <migun.com> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <migun.com> domain name.
See CMGI, Inc.
v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s
failure to produce requested documentation supports a finding for the
complainant); see also Am. Online,
Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or
legitimate interests where the respondent fails to respond). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
There is no evidence in the record suggesting that Respondent is commonly known by the <migun.com> domain name. As a result, Respondent has not established rights or legitimate interests in the <migun.com> domain name under Policy ¶ 4(c)(ii). See The 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Moreover, Respondent is using the <migun.com>
domain name to forward Internet users to its own website at the
<therasage.com> domain name, which offers therapeutic bed products in
direct competition with Complainant. In
Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum Jul. 29, 2005),
the Panel held that the respondent’s use of disputed domain names to market
competing limousine services was not a bona fide offering of goods or
services under Policy ¶ 4(c)(i). In
this case, Respondent is also using a competing company’s mark in order to
attract Internet users to its own website.
The Panel finds that Respondent is not using the <migun.com>
domain name 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”).
The Panel holds that Complainant has satisfied Policy ¶ 4(a)(ii).
By using the <migun.com> domain name to divert
Internet users looking for Complainant’s products and services under the MIGUN
mark to its own competing website, Respondent has registered and is using the
<migun.com> domain name in order to disrupt Complainant’s business
in violation of Policy ¶ 4(b)(iii). See
Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where the respondent and the
complainant were in the same line of business in the same market area); see
also SR Motorsports v. Rotary
Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it
"obvious" that the domain names were registered for the primary
purpose of disrupting the competitor's business when the parties are part of
the same, highly specialized field).
Respondent’s <migun.com> domain name redirects Internet users to the <therasage.com> domain name, where Respondent maintains a website offering therapeutic bed products in direct competition with Complainant. In Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006), the panel found that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to Respondent’s website offering competing travel services established Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Therefore, Respondent is taking advantage of the confusing similarity between the <migun.com> domain name and Complainant’s MIGUN mark for commercial gain, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
The Panel holds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <migun.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 21, 2006
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