DECISION

Cardiac Science, Inc. v. Affinity International Inc. a/k/a Affinity International c/o Clyde Tenberg

Claim Number:  FA0409000325925

PARTIES

Complainant is Cardiac Science, Inc. (“Complainant”), represented by Michael Bondi, 80 South 8th Street, #4800, Minneapolis, MN 55402.  Respondent is Affinity International Inc. a/k/a Affinity International c/o Clyde Tenberg (“Respondent”), 118 Beach Lane, Mooresville, NC 28117.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <personalpowerheart.com>, <powerheart.com>, <powerheart.net>, <powerheartaed.com>, <powerheartaed.net> and <powerheartaed.org>, registered with Network Solutions, Inc. and Dotster.

PANEL

The undersigned 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 Panelist in this proceeding.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 10, 2004; the Forum received a hard copy of the Complaint on September 13, 2004.

On September 15, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <personalpowerheart.com>, <powerheart.com> and <powerheart.net> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 September 10, 2004, Dotster confirmed by e-mail to the Forum that the domain names <powerheartaed.com>, <powerheartaed.net> and <powerheartaed.org> are registered with Dotster and that Respondent is the current registrant of the names.  Dotster has verified that Respondent is bound by the Dotster registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.

On September 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 12, 2004 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@personalpowerheart.com, postmaster@powerheart.com, postmaster@powerheart.net, postmaster@powerheartaed.com, postmaster@powerheartaed.net and postmaster@powerheartaed.org 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 October 18, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s  <powerheart.com> and  <powerheart.net> domain names are identical and Respondent’s <personalpowerheart.com>, <powerheartaed.com>, <powerheartaed.net> and <powerheartaed.org> domain names are confusingly similar to Complainant’s POWERHEART mark.

2. Respondent does not have any rights or legitimate interests in the <personalpowerheart.com>, <powerheart.com>, <powerheart.net>, <powerheartaed.com>, <powerheartaed.net> and <powerheartaed.org> domain names.

3. Respondent registered and used the <personalpowerheart.com>, <powerheart.com>, <powerheart.net>, <powerheartaed.com>, <powerheartaed.net> and <powerheartaed.org> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Cardiac Science, Inc., is in the business of developing, manufacturing and marketing automated external defibrillators (AEDs).  Furthermore, Complainant offers training and program management services to facilitate the use of its products.

Complainant is the owner of a trademark registration with the United States Patent and Trademark Office for the POWERHEART mark (Reg. No. 1,955,504 issued February 13, 1996).  Complainant has used its POWERHEART mark continuously and extensively in commerce since at least 1993 in association with its AED products.  Three of Complainant’s products are Powerheart AED G3 Pro, Powerheart AED G3 and Powerheart AED G3 Automatic.

Respondent registered the <powerheartaed.com>, <powerheartaed.net> and <powerheartaed.org> domain names on June 5, 2002, the  <powerheart.com> and <powerheart.net> domain names on June 27, 2002, and the <personalpowerheart.com> domain name on July 15, 2002.  After Complainant contacted Respondent regarding the disputed domain names, Respondent offerd to sell the domain name registrations to Complainant for $8,000 each.  Following Complainant’s refusal to purchase the domain name registrations, Respondent began using the disputed domain names to redirect Internet users to a website promoting extended service programs for vehicles.  Furthermore, Respondent is a former distributor of Complainant’s AED products.

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 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.

Identical and/or Confusingly Similar

Complainant has established in this proceeding that it has rights in the POWERHEART mark through registration with the United States Patent and Trademark Office and by continuous use of its mark in commerce for at least the last eleven years.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).

The <powerheart.com> and <powerheart.net> domain names registered by Respondent are identical to Complainant’s POWERHEART mark because the domain names incorporate Complainant’s mark in its entirety, adding only the generic top-level domain (gTLD) “.com” or “.net.”  The addition of a gTLD to Complainant’s registered mark is irrelevant to determining its identical nature pursuant to Policy ¶ 4(a)(i).  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also 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).

Furthermore, the <personalpowerheart.com>, <powerheartaed.com>, <powerheartaed.net> and <powerheartaed.org> domain names registered by Respondent are confusingly similar to Complainant’s POWERHEART mark because the domain names fully incorporate Complainant’s mark, adding only the generic or descriptive word “personal” or the letter combination “aed.”  The addition of generic or descriptive terms or letters to Complainant’s registered mark is insufficient to negate the confusing similarity of the domain names.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).

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

Rights or Legitimate Interests

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names, which contain Complainant’s POWERHEART mark in its entirety.  Since Respondent has failed to respond to the Complaint, the Panel assumes that Respondent lacks rights and legitimate interests in the disputed domain names.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also 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).

Moreover, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”).

Respondent is a former distributor of Complainant’s AED products and is using the disputed domain names to redirect Internet users to Respondent’s website that promotes extended service programs for vehicles.  Respondent’s use of domain names that are either identical or confusingly similar to Complainant’s POWERHEART mark to redirect Internet users interested in Complainant’s products and services to Respondent’s commercial website is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website).

Furthermore, Respondent offered no evidence and no proof in the record suggests that Respondent is commonly known by any of the disputed domain names.  Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also 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).

Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent intentionally registered the domain names, containing Complainant’s registered mark in its entirety, for Respondent’s commercial gain.  The domain names registered by Respondent divert Internet users who seek Complainant’s POWERHEART mark to Respondent’s commercial website through the use of domain names that are identical or confusingly similar to Complainant’s mark.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s POWERHEART mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. 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 Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Respondent registered six domain names incorporating Complainant’s POWERHEART mark, demonstrating a pattern of conduct in which Respondent intentionally registered domain names to prevent Complainant from reflecting its mark in a corresponding domain name.  Thus, Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(ii).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad faith pattern of conduct where Respondent registered many domain names unrelated to its business which infringe on famous marks and websites).

Additionally, when Complainant contacted Respondent regarding the disputed domain names, Respondent offered to sell the domain name registrations to Complainant for $8,000 each.  Respondent then began offering the extended services programs for vehicles after Complainant declined this offer.  This evidence constitutes circumstances that indicate that Respondent registered the disputed domain names for the purpose of selling them to Complainant, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See 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); see also Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (finding that Respondent registered and used the domain names to profit where Respondent offered to sell the domain names for $2,300 per name).

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 relief shall be GRANTED.

Accordingly, it is Ordered that the <personalpowerheart.com>, <powerheart.com>, <powerheart.net>, <powerheartaed.com>, <powerheartaed.net> and <powerheartaed.org> domain names be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  October 28, 2004

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