DECISION

Delta Radiology Medical Group, Inc. v. California Catalog and Technology

Claim Number: FA0112000103471

PARTIES

Complainant is Delta Radiology Medical Group, Inc., Lodi, CA (“Complainant”) represented by Lisa L. Ruth, of Downey, Brand, Seymour, & Rohwer, LLP.  Respondent is California Catalog and Technology, Lodi, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <deltamri.com> and <deltaopenmri.com>, registered with Network Solutions.

PANEL

On February 7, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 31, 2001; the Forum received a hard copy of the Complaint on December 31, 2001.

On January 3, 2002, Network Solutions confirmed by e-mail to the Forum that the domain names <deltamri.com> and <deltaopenmri.com> are registered with Network Solutions and that Respondent is the current registrant of the names.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 January 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 23, 2002 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@deltamri.com and postmaster@deltaopenmri.com by e-mail.

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.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain names <deltamri.com> and <deltaopenmri.com> are identical to DELTA MRI and DELTA OPEN MRI, marks in which Complainant holds rights at common law.

Respondent has no rights or legitimate interests in respect of the disputed domain names.

Respondent registered and used the disputed domain names in bad faith.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant has provided medical radiology services under the DELTA RADIOLOGY mark in Lodi, California, since at least 1969.  Since January 2000, Complainant has offered both radiology and magnetic resonance imaging (“MRI”) services under the DELTA MRI and DELTA OPEN MRI marks.

Between January 2000 and August 2001, Complainant spent approximately $17,629 to promote its services under the DELTA RADIOLOGY, DELTA MRI, and DELTA OPEN MRI marks.  Complainant asserts that, through its efforts, it has gained common law rights in its marks.

Respondent registered <deltamri.com> on July 12, 2000, and <deltaopenmri.com> on August 3, 2000, and has used the domain names to redirect users to the website of an organization in competition with Complainant.

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 the 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.

Paragraph 4(a) of the 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; and

(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.

Identical and/or Confusingly Similar

Complainant asserts that it holds trademark rights in DELTA MRI and DELTA OPEN MRI at common law.  In the absence of a contrary claim by Respondent, the Panel may accept Complainant’s assertion as true.  See 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”).

Under Policy ¶ 4(a)(i), common law trademark rights have been held to sufficiently give a Complainant standing to make out a UDRP Complaint.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”); see also Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding that the Complainant established sufficient rights by virtue of its distribution and advertising to enable it, at common law, to prevent another magazine by the same name from being passed off as that of Complainant. Thus Complainant established that it had rights under ICANN Policy ¶ 4(a)(i)).

The disputed domain names are identical to Complainant’s marks.  See Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (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”); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is identical to the Complainant’s MYSTIC LAKE trademark and service mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has demonstrated its rights to and legitimate interests in the DELTA MRI and DELTA OPEN MRI marks.  Because Respondent has not offered any evidence to suggest it has rights or interests in the disputed domain names, the Panel may presume no such rights or interests exist.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Complainant has also demonstrated that Respondent has no rights or legitimate interests in respect of the disputed domain names within the meaning of Policy ¶ 4(a)(ii).  By using the disputed domain names to confuse Internet users and redirect them to a competing organization’s website, Respondent has not used the domain names to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services).

Additionally, there is no evidence Respondent is commonly known by either of the disputed domain names pursuant to Policy ¶ 4(c)(ii); Respondent is only known to this Panel as California Catalog and Technology.  See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names and that Policy ¶ 4(a)(ii) has thus been satisfied.

Registration and Use in Bad Faith

Respondent’s registration and use of the disputed domain names, which are identical to Complainant’s marks, evidence bad faith under Policy ¶ 4(a)(iii). 

The fact that Respondent registered two infringing domain names within a short amount of time suggests it intended to prevent Complainant from obtaining Internet domains that reflect its marks.  This has been held to demonstrate bad faith under Policy ¶ 4(b)(ii).  See YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark).

Respondent further demonstrated its bad faith intentions by redirecting users of the disputed domain names to a website belonging to Complainant’s competitor.  Such use has been deemed to be in bad faith under Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Gorstew Ltd. & Unique Vacations, Inc. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring <sandalsagency.com> and <sandalsagent.com> from Respondent travel agency to Complainants, who operate Sandals hotels and resorts).

Finally, given the confusion that has likely resulted from Respondent’s use of domain names wholly incorporating Complainant’s marks to divert unsuspecting Internet traffic, it may be concluded that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark by offering the same chat services via his website as the Complainant).

Accordingly, 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 the requested relief should be hereby granted.

Accordingly, it is Ordered that the <deltamri.com> and <deltaopenmri.com> domain names be transferred from Respondent to Complainant.

James P. Buchele, Panelist

Dated:  February 11, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/199.html