Generic Top Level Domain Name (gTLD) Decisions

Kessler Rehabilitation Corporation,
Kessler Institute for Rehabilitation, Inc.
COMPLAINANT,

vs.

Nelson Santos
RESPONDENT.

DECISION
Forum File No.: FA0005000094789

Disputed Domain Name: Kesslerinstitute.com

The above-entitled matter came on for an administrative hearing on June 8, 2000 before Robert T. Pfeuffer as arbitrator on the Complaint of KESSLER REHABILITATION CORPORATION and KESSLER INSTITUTE FOR REHABILITATION, INC., hereafter referred to as “Complainant” and against NELSON SANTOS, hereinafter referred to as “Respondent”.  Mary Ann McDonald, Esquire, West Orange, New Jersey represents the Complainant.  No representative appears of record for the Respondent.  Upon the written submitted record, the following decision is made:

                                                      PROCEDURAL FINDINGS

Domain Name: KESSLERINSTITUTE.COM

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: Nelson Santos

Date of Domain Name Registration: March 22, 1999

Date Complaint Filed: May 8, 2000

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)[1] and Rule 4(c): May 11, 2000

Due date for a Response: May 31, 2000

Respondent did not file a response as required by Rule 5(a).

A decision favorable to Complainant requiring the transfer of the domain name to Complainant for the reasons set out below is hereby ordered.

After reviewing the Complainant and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORUM (THE FORUM) forwarded the Complaint to the Respondent on May 11, 2000 in compliance with the Rules and the administrative proceedings were commenced. The Forum immediately notified the Registrar Network Solutions, Inc. and  the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceedings had commenced.  The Respondent did not file a response within the time provided by Rule 5(a).

On March 22, 1999, Respondent registered the domain name Kesslerinstitute.com with the domain name Registrar NETWORK SOLUTIONS,  INC., the entity that is the Registrar of the domain name.  The Registrar has verified that the Respondent is the Registrant for the domain name Kesslerinstitute.com and that further by registering its domain name with the NETWORK SOLUTIONS, INC., the Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules of Uniform Domain Name Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution Policy. 

                                                           FINDINGS OF FACT

It is uncontroverted that the evidence establishes that:

1. Complainant first used the name “Kessler” when it commenced to do business some 52 years ago when founded in 1948 by Dr. Henry H. Kessler. 

2. The Kessler Institute for Rehabilitation, Inc. has been the name used by that business after it was incorporated in the State of New Jersey.  Kessler Rehabilitation Corporation is a Delaware corporation which wholly owns the Kessler Institute for Rehabilitation, Inc., (“Institute”).

3. Both the Institute and Kessler Rehabilitation Corporation (“KRC”), have widely used the name “Kessler” in its business. 

4. KCR holds a service mark registered with the U.S. Patent and Trade Office for “Kessler” which was issued February 23, 1999 and which was assigned by the Institute to KRC on September 1, 1999.  The Institute and its affiliated companies maintain a website http://www.kessler-rehab.com and regularly uses the name Kessler Institute.

5. The mark “Kessler” is used by the Complainant in its website and has been continuously and exclusively used in interstate commerce since 1948.

6. Respondent owns a website using the Kessler name but indicating that it is  an on-line bike shop.

7. That there is no connection between the principal Nelson Santos and the name Kessler Institute which would give the Respondent any reason for legitimate use of the Kessler Institute name.

8. Kessler Institute is involved in rehabilitative activities for the physically disabled, wheelchair users and other persons who are physically disadvantaged.  In addition it provides sports enhancing services to non-physically disabled persons including sports training in the area of golf enhancement, strengthening, and human performance measurement.

9. Kessler Wilpage Medical is a Kessler affiliate which distributes medical equipment including devices such as wheelchairs, braces and artificial limbs to persons needing such devices. 

10. Respondent in its 12 line web page provides only the following information:

1. “Thanks for visiting our web site but my partner and I are contemplating on using another name for our online bike shop.”

2. “If anyone is interested in purchasing this domain name, we would be interested in hearing from you.”

11. That the content of Respondent’s website message demonstrates Respondent’s awareness of the likelihood that confusion will arise between the names of the Institute and KRC and the registration of the domain name  by the Respondent, thereby demonstrating Respondent’s bad faith.  Use of the name “Kessler” in association with bicycles and bicycle repairs will lead members of the general public to believe that the Kessler Institute for Rehabilitation or it’s affiliates are selling or endorsing the products and services of Respondent and the products supplied by Kessler Wilpage Medical. 

12. That Respondent is located in Verona, New Jersey approximately 4.4 miles from the headquarters of Kessler Institute for Rehabilitation in West Orange, New Jersey. 

13. The purpose of the homepage message used by Respondent in it’s website is solely for the purpose of soliciting buyers for the use of the domain name and not for the sale of on-line bicycles. 

14. There is no evidence that Respondent has ever made legitimate use of the domain name to sell on-line bicycles, but solely for the purpose of soliciting buyers for the name “Kessler Institute”.

15. That Respondent seeks to profit from its registration of the name “Kesslerinstitute.com” as it’s sole purpose.

16. That Respondent has failed to provide a telephone or fax number and has not provided a correct mailing address for its business, nor has it advised the United States Postal Service of an appropriate forwarding address.

17. That the name “Kessler Institute” has been used with several filings with the United States Patent & Trademark Office and numerous filings with the New Jersey Secretary of State as well as listings in telephone directories and websites maintained by Complainant.

18. The following is evidence of the Respondent’s bad faith in registering the domain name “Kesslerinstitute.com”.

A.        Contrary to ICANN’s Uniform Domain Name Dispute Resolution Policy, Respondent utilized the name “Kessler” and “Kessler Institute” in it’s domain name in an effort to market such name for profit to which it has shown no legitimate authority to use.

2. That Respondent failed to act in good faith in ascertaining the availability of the name “Kessler Institute” when he registered the domain name in dispute.

                                                                CONCLUSIONS

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this matter.  Having been duly selected, and being wholly impartial, the Arbitrator makes the following conclusions:

1. The name “Kessler” and “Kessler Institute” are names to which Complainant has established its legal right and to which Respondent has failed to show any evidence of its legitimate right or interest.

2. That Respondent acted in bad faith by registering or acquiring the domain name  “Kesslerinstitute.com” for the sole purpose of selling, renting or otherwise transferring the domain name which contains the name “Kessler” and “Kessler Institute”. 

3. That by using the domain name Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website or other on-line location by creating a likelihood of confusion with the Complainant’s mark as a source, sponsorship, affiliation or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

                                                                    DECISION

Based upon the above findings and conclusions, a decision is rendered as follows:

The Arbitrator, Robert T. Pfeuffer, directs that the domain name “Kesslerinstitute.com” be transferred to the Complainant, Kessler Institute for Rehabilitation, Inc.

SIGNED this 12 day of June, 2000.     Honorable Robert T. Pfeuffer, Arbitrator