DECISION

Stevenson Industries, Inc. v. CPAP-PRO Online

Claim Number: FA0203000105778

PARTIES

Complainant is Stevenson Industries, Inc., Pacific Palisades, CA (“Complainant”) represented by Joseph Goldstein, of Stevenson Industries, Inc.  Respondent is CPAP-PRO Online, Houston, TX (“Respondent”) John Goodman.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <cpap-pro.net>, registered with BulkRegister.com.

PANEL

The undersigned certify that they have acted independently and impartially and that to the best of their knowledge they have no known conflicts in serving as Panelists in this proceeding. Panelists are M. Kelly Tillery, David E. Sorkin and Carolyn Marks Johnson.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 11, 2002; the Forum received a hard copy of the Complaint on March 12, 2002.

On March 15, 2002, BulkRegister.com confirmed by e-mail to the Forum that the domain name <cpap-pro.net> is registered with BulkRegister.com and that Respondent is the current registrant of the name.  BulkRegister.com has verified that Respondent is bound by the BulkRegister.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 March 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 4, 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@cpap-pro.net by e-mail.

A timely Response was received and determined to be complete on April 3, 2002.

On April 10, 2002, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed M. Kelly Tillery, David E. Sorkin and Carolyn Marks Johnson as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations:

Complainant has established rights in the mark contained in its entirety in the confusingly similar domain name registered by Respondent.  Respondent has no rights to or legitimate interest in the mark and domain name.  Respondent acted in bad faith.

B. Respondent urged the following in response:

<Cpap-pro.net> is the domain name of U.S. Expediters, Inc., a Texas corporation, with common law rights in the mark contained within the domain name. Respondent has rights to and legitimate interests in the mark contained within the domain name and that Respondent did not act in bad faith.  Respondent additionally urges that Complainant is attempting reverse cybersquatting with this Complaint.

FINDINGS

Complainant owns the registered mark CPAP PRO.  Stevenson Industries, Inc. developed, patented and obtained FDA approval for a nasal/oral interface for the treatment of sleep apnea that is not available from any other source and that was introduced to the medical, dental and respiratory industry on February 1, 1999.

Complainant has used the mark since February 1, 1999, and has invested in extensive promotion of the product in magazine articles, advertisements and professional journals and has shown the product at tradeshows and conferences.

Complainant registered the domain name <cpappro.com> on December 10, 1999, and Complainant filed its trademark application for CPAP PRO on September 29, 2000.  The trademark was not granted until February 19, 2002. Complainant developed the website at <cpappro.com>.  Respondent developed the name “cpap-pro” on eBay beginning March 2000.

Complainant urges that its device gained worldwide trademark recognition and that it is marketed throughout the world.

Complainant acknowledges that it became aware of the website with the domain name <cpap-pro.net> on September 25, 2000 and that it became aware that the domain name site was used to “sell related products such as CPAP machines, masks and other products within the sleep apnea field on E-Bay and at Yahoo auctions sites at discounted prices.”  Thereafter, Complainant urges that it sent a cease and desist letter to Respondent and reported that Mr. Goodman “graciously agreed ‘to obtain another name as soon as possible within an estimated time period of approximately 30-day.’”(sic) Respondent disputes Complainant’s version of the parties’ September 2000 communications.  In particular, Respondent says all it agreed to do was to change its web site, not relinquish its domain name, and that that promise was based on Complainant’s representation that it already had a registered trademark, when in fact Complainant had not yet even filed its trademark application.  Neither party offered evidence of this communication.

Apparently, rather than abandoning his site, Respondent increased the activity at the site.

Complainant filed for trademark registration of CRAP PRO September 29, 2000, and received registration number 2,539,816 on  February 19, 2002.  Complainant asserts that CPAP-PRO is falsely represented by Respondent to be Respondent’s registered trademark.

Respondent registered the <cpap-pro.net> domain name on August 11, 2000. The Administrative Contact is Respondent John Goodman of Missouri City, Texas.

Respondent also sells sleep related products on-line by E-bay from March 2000. Respondent would have the Panel hold that CPAP is “an extremely common word used in the sleep disorder field.”  Respondent asserts that he also is the “owner of other sleep disorder business including diagnostics and homecare treatment” and that “Complainant thus was not the first person to think of using these terms together and it was natural for us to want to use them on the internet.”  Moreover, Respondent urges that Complainant’s product represents “less than one tenth of one percent of the total cpap interface market.”

Respondent urges that Complainant made no contact with Respondent after September 2000.

Complainant’s proof included the USPTO trademark registration confirmation, showing as well that Complainant made no application to use CPAP alone but only CPAP in conjunction with PRO.  The sole proof presented by Respondent  was two pages of Ebay feedback.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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 to and/or Confusingly Similar

Complainant asserts that it has rights in the CPAP PRO mark in relation to the sale, marketing and manufacturing of a “unique” sleep apnea and respiratory product.  Complainant registered the CPAP PRO trademark with the United States Patent and Trademark Office as Reg. No.  2,539,816 on February 19, 2002.  This was well after the date that both parties registered their respective domain names.

Complainant argues that Respondent’s <cpap-pro.net> domain name is confusingly similar to Complainant’s CPAP PRO mark because it incorporates the entirety of Complainant’s mark and merely adds a hyphen between CPAP and PRO.  The Panel may find that the addition of the hyphen does not create a distinct mark capable of overcoming a claim of confusing similarity.  See Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain name <tele-place.com> is confusingly similar to Complainant’s TELEPLACE trademark).

Respondent asserts that it began using CPAP-PRO and <cpap-pro.net> before Complainant registered the trademark with the United States Patent and Trademark Office.  Respondent also asserts that it began selling its products on eBay under the name in March of 2000, and set up the website at <cpap-pro.net> in August of 2000, and that Complainant did not apply to register its trademark until September of that year.

Furthermore, Respondent asserts that CPAP is descriptive of the types of products that both Respondent and Complainant sell and therefore CPAP has no distinctive qualities as a trademark.  Respondent asserts that the combination of CPAP and PRO is not inherently distinctive and therefore Complainant does not have exclusive rights.  See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (stating that "[c]ommon words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis"); see also Rollerblade, Inc. v. CBNO and Redican, UDRP Policy ¶ 4(a)(i) “identical,” D2000-0427 (WIPO Aug. 24, 2000) (finding that “genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration”).  This is not persuasive because the Trademark Registration shows that Complainant does have a protected registered trademark of CPAP PRO but that the trademark does not attempt to register CPAP standing alone.

The Panel finds that Policy ¶ 4(a)(i) has been satisfied; the domain name is confusingly similar to Complainant’s registered mark.

Rights to or Legitimate Interests

Complainant urges that it has rights to and legitimate interests in the mark contained within the domain name and that Respondent has no such rights. The Panel may find that because Respondent’s domain name is confusingly similar to Complainant’s mark it will create Internet user confusion and attract Complainant’s customers to Respondent’s website.  It has been established that the diversion of Complainant’s customers to Respondent’s domain name is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name). However, here, Respondent points out that likely Internet users will access CPAP PRO before they access CPAP-PRO and any disadvantage will result to Respondent.

The Panel also may find that Respondent, known as John Goodman, is not commonly known by <cpap-pro.net> pursuant to Policy ¶ 4(c)(ii), and that therefore, Respondent has no rights or legitimate interests in the disputed domain name.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).  However, the argument could be made here that at the time of Respondent’s registration of the domain name, the Complainant, Stevenson Industries, Inc., also was not known by the name CPAP PRO.

The Panel further may find that Respondent is attempting to attract Complainant’s customers to its website by creating a likelihood of confusion as to source, sponsorship and affiliation of <cpap-pro.net> for Respondent’s commercial gain and therefore that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

Respondent asserts, and has shown some evidence, that Respondent has been selling products in the same area of commerce as Complainant’s product.  Even Complainant urges that Complainant’s product is “unique” to the market and that no one but Complainant sells that product.  Respondent has used the name CPAP-PRO on eBay since March of 2000 and set up the disputed domain name in August 2000, allegedly based on its eBay success.  Respondent asserts that it did this before Complainant registered its mark and therefore, it did not register the domain name in order to create user confusion for its own commercial gain.  Rather, Respondent urges that it registered a domain name that reflected the mark connected with the products Respondent had been selling on eBay.  Therefore Respondent asserts that it has used the disputed domain name in order to make a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).  See Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (finding that Respondent has rights and legitimate interests in the domain name where Respondent is using the domain name for a legitimate and fair purpose and there is evidence that it is known by the disputed domain name).

The evidence offered by Respondent to support his rights or legitimate interests in respect of the domain name is far from persuasive, although the Panel is mindful that Complainant bears the burden of proof.  If the existence of such rights or interest turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.

In light of the conclusion on the question of bad faith, which is dispositive of the present matter, the Panel declines to enter a finding on the question of rights or legitimate interests.

Registration and Use in Bad Faith

Complainant also urges that Respondent acted in bad faith. Complainant asserts that Respondent agreed to cease using <cpap-pro.net> in September of 2000 but that Respondent subsequently failed to act within the 30 day time period Complainant and Respondent agreed upon as a reasonable time frame for Respondent to create a new domain name.  The Panel may find that this is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding bad faith where Respondent sent e-mails to Complainant indicating that it would cancel the domain name registration, but refused to transfer it to Complainant); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”). 

However, Respondent notes that after Complainant’s notification that Respondent was doing something illegal that Respondent did a search and discovered that Complainant did not have the registration that Complainant claimed that it had and that Complainant did not thereafter contact Respondent until this action.

Complainant also asserts that Respondent registered a confusingly similar domain name in order to attract Complainant’s customers to Respondent’s website for Respondent’s commercial gain, which is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); 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 Complainant’s site to its own website for commercial gain).

 

However, Respondent asserts that it did not register the disputed domain name in bad faith because Complainant did not have a trademark for CPAP-PRO when Respondent registered the domain name, and therefore that Respondent did not register a confusingly similar domain name for commercial gain.  See PRIMEDIA Special Interest Publ'n. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding that Respondent did not register the domain names in bad faith where there is no evidence that Respondent intended to sell the domain name or disrupt the Complainant’s business); see also Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where Respondent has an active website that has been in use for two years and where there was no intent to cause confusion with Complainant’s website and business).  In fact, Complainant never had a registered trademark in the combination of CPAP-PRO and in fact had no right to use of the CPAP designation alone.  Complainant’s mark was CPAP PRO.

Respondent further asserts that it registered the domain name in good faith because it registered <cpap-pro.net> in relation to a legitimate business interest.  Respondent notes that it was known by the name when it registered the domain name.  Furthermore, Respondent argues CPAP-PRO is descriptive of the class of products Respondent sells.  See DJF Assocs,. Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of dispute); see also Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith where Respondent was using the descriptive domain name <thelowestfare.com> to lead consumers to a source of lowest fares in good faith).

On the balance of the evidence, it appears to the Panel that Respondent registered the domain name in order to reflect the name under which he was already doing business on eBay, and that he had selected that name because it was descriptive of his business rather than because of any fame Complainant’s mark may have enjoyed at that time.  Under the circumstances, the Panel cannot conclude that the domain name was registered in bad faith. Policy ¶ 4(a)(iii). 

Reverse Domain Name Hijacking

Respondent asserts that Complainant has brought this Complaint in bad faith because Complainant knew it did not have a trademark for CPAP PRO before Respondent began using the disputed domain name.  See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding that when Complainant knows it has no rights in the mark but brings a Complaint despite this fact, the Complainant has acted in bad faith and attempted Reverse Domain Name Hijacking which constitutes an abuse of the administrative proceeding).

The Panel is not persuaded that Complainant initiated this proceeding in bad faith.

DECISION

Having determined that not all of the three required showings has been satisfied, the relief requested by Complainant must be Denied.  Accordingly it is therefore ORDERED

that the domain name <cpap-pro.net> NOT be transferred and that the Complaint be dismissed.

Hon. Carolyn Marks Johnson, Panelist

Writing for the Majority of Johnson and David E. Sorkin

Date: April 24, 2002

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STEVENSON INDUSTRIES, INC. V. CPAP-PRO ONLINE

CLAIM NUMBER: FA0203000105778

DISSENT – M. KELLY TILLERY, ESQUIRE

I must respectfully dissent.

Respondent does not deny Complainant's claims regarding "first use" of its mark as early as March 1, 1999, one year before the earliest claimed use in commerce of Respondent.  Respondent is curiously silent on his knowledge of Complainant's use, Complainant's Trademark Application Filed on September 29, 2000 and Published For Opposition on November 27, 2001 and/or Complainant's registration of <cpappro.com> on December 10, 1999.  He is also curiously silent on his knowledge of <cpappro.com> or why he chose <cpap-pro.net>, rather than the more prominent and valuable .com.  Anyone seeking to register a domain name for a commercial enterprise is going to search the WHO IS database to determine if there is anything identical or close to what they seek to register.  If (when) Respondent had done so, he certainly would have seen that <cpappro.com> was registered by Complainant.  I have to assume that he did and that is why he chose .net.  ICANN Arbitrators, like any fact finders, must use our common sense.

As an experienced professional in this area of commerce, Respondent had to be aware of Complainant and Complainant's product.  He does not deny any of the allegations of Complainant regarding the nature of its product and its position in the sleep apnea community.

Under these circumstances, I cannot find that Respondent has legitimate interest in or rights to the CPAP-PRO domain name or that he has registered or is using the name in good faith.

Under these circumstances, Complainant was and is the first to use CPAP-PRO  in commerce.  I simply cannot believe that Respondent was not aware of same.  I conclude that he was aware of same, as my common sense dictates and thus would find that his uses do not establish a legitimate interest in or right to the domain name and that his registration and use are in bad faith. 

M. Kelly Tillery, Esquire

PANELIST

Date: April 25, 2002