DECISION

Innomed Technologies, Inc. v. DRP Services

Claim Number:  FA0312000221171

PARTIES

Complainant is Innomed Technologies, Inc., Boca Raton, FL (“Complainant”) represented by David L. Sigalow of Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A., 255 S. Orange Avenue, Suite 1401, Orlando, Florida 32801.  Respondent is DRP Services, P.O. Box 71117, Jerusalem, Israel 91710 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nasalaire.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 22, 2003; the Forum received a hard copy of the Complaint on December 29, 2003.

On December 29, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <nasalaire.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.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 January 7, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 27, 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@nasalaire.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.

On February 4, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <nasalaire.com> domain name is identical to Complainant’s NASAL-AIRE mark.

2. Respondent does not have any rights or legitimate interests in the <nasalaire.com> domain name.

3. Respondent registered and used the <nasalaire.com> domain name in bad faith.

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

FINDINGS

Complainant filed a registration application for its NASAL-AIRE mark with the United States Patent and Trademark Office (“USPTO”) on January 16, 2001 (Ser. No. 76/194461).  The application was granted registration on October 22, 2002 (Reg. No. 2640687).  The NASAL-AIRE trademark is used in connection with medical devices designed to cure a sleeping disorder, commonly known as ‘sleep apnea.’  Complainant has used the mark in this manner since January 1993. 

Complainant employs a variety of means to sell its NASAL-AIRE products, including a website located at <innomedtechnologies.com>.  Complainant spends approximately $240,000 per year to promote its NASAL-AIRE products and, as a result, Complainant has achieved a high degree of customer recognition for its mark.

Respondent registered the disputed domain name on October 16, 2002.  Respondent uses the name to host a web page that advertises products purportedly designed to treat sleep apnea.  This web page consists of a series of hyperlinks directing Internet users to these various 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

Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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 FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office).

The differences between the disputed domain name, <nasalaire.com>, and Complainant’s NASAL-AIRE mark are the omission of the hyphen and the addition of the top-level domain, both of which are irrelevant for purposes of the Policy.  See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark."); see also 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Therefore, Complainant has established that the disputed domain name is identical to its registered mark pursuant to Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Having failed to respond to the Complaint, the Panel may infer that Respondent lacks rights to and legitimate interests in the disputed domain name. 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); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

In conjunction with the above, there is no evidence in the record that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  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).

Furthermore, Respondent uses the disputed domain name, which incorporates Complainant’s registered mark, to offer advertisements for and links to products that compete with Complainant’s goods.  Such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).   See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that disputed domain names confusingly similar to another’s mark and that are used to sell competing goods is illegitimate and not a bona fide offering of goods). 

Therefore, Complainant has established that Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The fact that Respondent registered a domain name that contains a registered mark relating to the cure of a sleeping disorder and Respondent subsequently provided advertisements for and links to sites associated with sleeping disorder cures, naturally suggests the conclusion that Respondent’s motivation for registration was to siphon potential customers of Complainant to competing websites, presumably for profit.  Such registration and use is strong evidence of bad faith pursuant to Policy ¶¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Likewise, the rationale stated in the preceding paragraph also indicates that Respondent intentionally used the disputed domain name to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark pursuant to Policy ¶ 4(b)(iv), evidencing bad faith registration and use. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

Therefore, Complainant has established bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

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 <nasalaire.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  February 18, 2004

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