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Dr. Foster & Smith v. Jaspreet Lalli [2000] GENDND 934 (21 August 2000)

National Arbitration Forum

DECISION

Drs. Foster & Smith, Inc. v Jaspreet Lalli

Claim Number: FA0007000095284

PARTIES

The Complainant is Dr. Foster & Smith, Inc., Rhinelander, WI, USA ("Complainant"). The Respondent is Jaspreet Lalli, Palo Alto, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is "DRFOSTERSMITH.COM", registered with Network Solutions Inc ("NSI").

PANELIST

The Panelist 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 the panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on July 24, 2000; The Forum received a hard copy of the Complaint on July 24, 2000.

On July 26, 2000. NSI confirmed by e-mail to The Forum that the domain name "DRFOSTERSMITH.COM" is registered with and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On July 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 17, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail. It was also e-mailed to postmaster@drfostersmith.com.

On August 17, 2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default.

On August 18, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody 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 Uniform 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 Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

1. Complainant

The Complainant contends that:

(1). The Domain Name Is Confusingly Similar To Drs. Foster & Smith's Trademark.

(2). Healthy Pets, Inc. Has No Rights Or Legitimate Interest With Respect To The Domain Name, "drfostersmith.com".

(3). Healthy Pets, Inc. Has Registered and Used The Domain Name "drfostersmith.com" In Bad Faith.

B. Respondent

The Respondent failed to submit a response in this UDRP proceeding. Accordingly, all reasonable allegations of fact in the Complaint will be deemed true.

FINDINGS

The Complainant owns rights in the U.S. registered trademark DOCTORS FOSTER & SMITH (No. 1,979,759) registered on June 11, 1996. The Complainant uses this mark in connection with retail mail order services in the field of animal products. The Complainant uses the domain name <drsfostersmith.com> for its website to promote and conduct sales of its products online.

The Respondent is in the business of selling pet supplies. The Respondent uses the domain name <healthypets.com> to market its products on the Internet. The Respondent and Complainant are direct competitors.

The Respondent registered the domain name in question on January 29, 2000. The Respondent has linked the said domain name to its website, <healthypets.com>.

The Complainant has sent correspondence to the Respondent on multiple occasions, requesting transfer or cancellation of the domain name because it interferes with the Complainant’s trademark rights. The Respondent responded on one occasion, stating that there was no evidence of trademark infringement in that the domain name is directly related to the name of one of their professional consultants.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The Complainant has rights in the registered mark trademark DOCTORS FOSTER & SMITH. The Respondent has deleted the letter "s" and abbreviated the word "doctor" to "dr." These minute changes to the Complainant’s mark do not elude the confusing similarity test. The panel concludes that the domain name is confusingly similar to the Complainant’s mark. See V Secret Catalogue, Inc et al v. Internet Investment Firm Trust "In Trust", FA 94344 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <victoriasecret.com> is confusingly similar to the Complainant’s mark, VICTORIAS SECRET).

The Complainant contends that the Respondent has no rights or legitimate interests in the domain names.

The Respondent is not commonly known by the domain name in question. Policy ¶ 4(c)(ii). The Respondent has not claimed to use the domain name in connection with any bona fide offering of goods or services nor for any legitimate or fair noncommercial use. Policy ¶ 4(c)(i), (iii).

Respondent has made no showing with respect to any of the above factors. The panel finds that Respondent has no rights or legitimate interest in the domain name.

The Complainant contends that the Respondent registered and used the domain name in bad faith. The Respondent does not deny this claim.

The Respondent directed Internet users seeking the Complainant’s site to its website. The panel finds that the Respondent has violated Policy ¶4.b.(iv) by attracting Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, endorsement, or affiliation of its website. Policy ¶ 4.b.(iv). This is evidence of bad faith. See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the Respondent attracted customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as the Complainant).

The Panel concludes that the domain name was registered and used in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "DRFOSTERSMITH.COM" be transferred from the Respondent to the Complainant.

James A. Carmody, Former Judge, Arbitrator
Dated: August 21, 2000