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Generic Top Level Domain Name (gTLD) Decisions |
Invacare Corporation v. James Lee
Claim
Number: FA0304000153631
Complainant is
Invacare Corporation, Elyria, OH, USA (“Complainant”) represented
by Bradford J. Patrick, of Mansour Gavin Gerlack & Manos Co. LPA.
Respondent is James Lee, Shu Lin City, TAIWAN (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <invacare.net>, registered with Moniker
Online Services, Inc.
The
undersigned certifies that she has acted independently and impartially and to the
best of her knowledge has no known conflict
in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 4, 2003; the Forum
received a hard copy of the
Complaint on April 8, 2003.
On
April 15, 2003, Moniker Online Services, Inc. confirmed by e-mail to the Forum
that the domain name <invacare.net> is registered with Moniker
Online Services, Inc. and that Respondent is the current registrant of the
name. Moniker Online Services,
Inc. has verified that Respondent is bound by
the Moniker Online Services, 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
April 15, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
May 5, 2003 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@invacare.net 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.
On
May 9, 2003, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the Forum appointed Sandra
Franklin 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 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <invacare.net>
domain name is identical to Complainant’s IVACARE mark.
2. Respondent does not have any rights or legitimate
interests in the <invacare.net> domain name.
3. Respondent registered and used the <invacare.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant uses
the INVACARE mark in relation to its distribution of home medical products for
health and wellness to consumers and
those who provide care. Complainant has used the mark since
1971. Complainant holds a registration
for its INVACARE mark with the U.S. Patent and Trademark Office (Reg. No.
1,243,496) and the European
Union (Reg. No. 001368091).
Respondent,
James Lee, registered the <invacare.net>
domain name on April 27, 2002.
Respondent is making no use of the disputed domain name other than to
offer the domain name registration up for sale. Respondent’s homepage at <invacare.net> prominently
advertises the domain name registration for sale and provides links to other
websites.
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.
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 that it has rights in the INVACARE mark through registration and
continuous use since 1971 in relation
to the distribution of its home health
care products.
Respondent’s
<invacare.net> domain name is identical to Complainant’s mark
because it incorporates Complainant’s entire mark and merely adds the top-level
domain “.net” to the end. The addition
of a top-level domain is irrelevant when determining whether a domain name is
identical or confusingly similar. Thus,
Respondent’s domain name does not overcome a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain
(gTLD) “.com” after the name POMELLATO is not
relevant); see also Blue Sky
Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000)
(holding that the domain name <robohelp.com> is identical to
Complainant’s registered ROBOHELP
trademark, and that the "addition of
.com is not a distinguishing difference").
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Thus, the Panel is permitted to accept all reasonable allegations
and inferences in the Complaint as true.
See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA
95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant
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”).
Moreover,
Respondent has failed to invoke any circumstances that could demonstrate rights
and legitimate interests in the domain name.
When Complainant asserts a prima facie case against Respondent,
the burden of proof shifts to Respondent to show that it has rights or
legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug.
21, 2000) (finding that once Complainant asserts that Respondent has no rights
or legitimate interests with
respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
Respondent has failed to invoke any circumstance
that could demonstrate any
rights or legitimate interests in the domain name).
Respondent is
making no use of the <invacare.net> domain name other than to
offer the domain name registration for sale.
Respondent’s website prominently offers the domain registration for sale
and provides links to other websites. Respondent is making no other use of the domain name. Thus, the Panel finds that Respondent is not
engaging in a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i),
nor
is Respondent’s activity at the website a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale &
Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate
interests do not exist when one has made no use of the websites
that are
located at the domain names at issue, other than to sell the domain names for
profit); see also Wal-Mart Stores,
Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s
conduct purporting to sell the domain name suggests it has no legitimate use);
see
also Hewlett-Packard Co. v. High
Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000)
(finding no rights or legitimate interests where Respondent registered the
domain name
with the intention of selling its rights).
There is
no evidence on record that Respondent is known as INVACARE or <invacare.net>. Respondent is known to this Panel as James
Lee, and there is nothing on record establishing otherwise. Thus, the Panel finds that Respondent does
not have any rights or legitimate interests in the disputed domain name
pursuant to Policy
¶ 4(c)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); 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).
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Since
Complainant’s mark is registered with the U.S. Patent and Trademark Office,
Respondent had constructive notice of Complainant’s
rights in the INVACARE
mark. Registration of an infringing
domain name, despite actual or constructive knowledge of Complainant’s rights,
is evidence of bad faith
registration pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith,
[2002] USCA9 115; 279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse"); see also Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should
have been aware of
Complainant’s trademarks, actually or constructively”).
Respondent’s
only use of the <invacare.net> domain name has been to offer the
domain name for sale. The Panel infers
from this behavior that Respondent’s intention when registering the domain name
was merely to offer the domain name
registration up for sale. This type of behavior is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v.
“Infa dot Net” Web Serv., FA
95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the
domain name, even if no certain price is demanded,
are evidence of bad faith”);
see also Banca Popolare
Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad
faith where the Respondent offered the domain names for sale); see also Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where Respondent offered domain names for sale).
Thus, the Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <invacare.net> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: May 19, 2003
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