WIPO-UDRP Entscheid D2009-0296

FallnummerD2009-0296
KlägerFuturedontics Inc.
BeklagterEminent Domain Licensing Enterprises / 1-800 Domain Names, LLC
EntscheiderHorning, Richard A.
Betroffene Domain(s) 1-800-dentist.com
StatusGeschlossen
EntscheidungTransfer
Entscheidungsdatum31.05.2009
WIPO Domain Name Decision: D2009-0296

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Futuredontics Inc. v. 1-800 Domain Names, LLC

Case No. D2009-0296

1. The Parties

The Complainant is Futuredontics Inc., Los Angeles, California, United States of America, represented by Rutan & Tucker, LLP, United States.

The Respondent is 1-800 Domain Names, LLC, Newton Square, Pennsylvania, United States. No appearance has been entered on behalf of Respondent.

2. The Domain Name and Registrar

The disputed domain name <1-800-dentist.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2009. The Center acknowledged receipt of the Compliant on March 9, 2009.

On March 6, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2009, the Registrar transmitted by email to the Center its verification response Confirming the contact information for 1-800-Domain Names, LLC, and also confirming that Eminent Domain Licensing Enterprises who was also listed as a Respondent in the original Complaint was not the registrant. The Center sent an email communication to the Complainant on March 10, 2009, confirming the registrant and contact information disclosed by the Registrar for 1-800 Domain Names, LLC, and inviting the Complainant to submit an amendment to the Complaint to clarify 1-800-Domain Names, LLC as Respondent. The Complainant filed an amendment to the Complaint on March 12, 2009, naming 1-800 Domains LLC as an additional respondent. On that basis the Panel finds that 1-800 Domain Names, LLC is the proper party Respondent and that Eminent Domain Licensing Enterprises is not a party to the present proceedings.

The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 13, 2009. The email notification to the addresses specified in the Complaint and registrar-verified registration records for Respondent were returned “addressee unknown”. The courier notification to the terrestrial address specified in the Complaint and registrar-verified registration records of Respondent was returned as undeliverable. The Center successfully transmitted a copy of the Complaint and Annexes by facsimile to the number specified in the Complaint and registrar-verified registration records for Respondent, Rules paragraph 2 (a). The Center also undertook to provide notice of the Complaint to the contact email address on the website at the disputed domain name.

In accordance with the Rules, Paragraph 5(a), the due date for Response was April 2, 2009. Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on April 3, 2009.

On April 22, 2009, the WIPO Center invited Richard Allan Horning to serve as the Sole Panelist in Case No. D2009-0296, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. Richard Allan Horning's Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7, was received on April 30, 2009. On April 30, 2009 , the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Richard Allan Horning was formally appointed as the Sole Panelist. The Projected Decision Date was May 14, 2009.

The Panelist finds that the Panel was properly constituted and appointed in accordance with the Policy, Rules and WIPO Supplemental Rules.

The Panelist shall issue his Decision based on the Complaint, the Amendment to Complaint, the Policy, the Rules, the WIPO Supplemental Rules, and without the benefit of any Response from Respondent.

4. Factual Background

Complainant is the owner of record of various United States trademarks, which it has used in connection with the operation of a dentist referral and information business since September, 1985. The Complainant has provided evidence of the registration of the following marks, which have been adopted and used in this regard:

Registered Marks:

A.

1-800-DENTIST

Registration Number:

Goods & Services:

Date Registered:

1,663,616

advertising agency services rendered to dentists. (International Class 35).

11/5/1991

B.

1800DENTIST

Registration Number:

Goods & Services:

Date Registered:

2,115,372

providing information in the filed of dentistry via an electronic communications network. (International Class 42).

11/25/1997

Each of the above registered marks was registered by Applied Anagramics, Inc., and transferred by assignment to Complainant (Complaint, Annex 5).

Respondent registered the domain name <1-800-Dentist.com> on July 8, 2002 (Complaint, Annex 1).

5. Parties' Contentions

A. Complainant

Complainant contends that Respondent has registered a domain name which is nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: “A Panel shall 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 directs that Complainant must prove each of the following:

1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

2) that Respondent has no rights or legitimate interests in respect of the domain name; and,

3) that the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar.

The Panelist finds that the disputed domain name is either identical (Hewlett-Packard Company v. Cupcake City, NAF Claim No. 93562; America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., NAF Claim No. 93679) or confusingly similar (Marriott International, Inc. v. John Marriot, NAF Claim No. FA 94737; Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100; Seiko Epson Corporation & Epson America, Inc v. Distribution Purchasing & Logistics Corp, NAF Claim 94219) to Complainant's marks.

B. Rights or Legitimate Interests.

Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name. (See, Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Respondent is not commonly known by the disputed domain name, and has not acquired trademark or service mark rights in the domain name. The Panelist finds that Respondent has no rights or legitimate interest in the domain name.

C. Registered and Used in Bad Faith

The question thus arises whether the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth “in particular but without limitation” circumstances which “shall be evidence of registration and use of a domain name in bad faith.” Those circumstances are:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Complainant has alleged and the Panelist finds that Respondent's use of the disputed domain name constitutes bad faith registration and use under the Policy under the circumstances of this particular dispute.

There is also proof in the record that Respondent may have provided false or misleading information in connection with the registration of the domain name <1-800-dentist.com>, which is a further indicia of bad faith.

There is also proof in the record that Respondent has falsely linked the website to which the domain name <1-800-dentist.com> resolves to alternating websites, both of which falsely imply some connection between that website and the services of Complainant. This is bad faith. The record suggests that on certain days Respondent causes the website to direct consumers to Complainant's website, while on other days Respondent will divert consumers to different websites not related to Complainant. It appears that even when Respondent directs consumers to Complainant's website, Respondent provides advertising for businesses not associated with Complainant. Respondent's registration of the domain name, and the use of that domain name in this fashion, prevents Complainant from fully controlling the commercial use of its trademarks and more particularly the domain name which is identical or substantially similar to Complainant's registered trademarks. This is bad faith.

7. Decision

For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent's domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraphs 4(i) of the Policy and Rule 15 of the Rules, the Panelist requires that the registration of the domain name <1-800-dentist.com > be transferred to the Complainant.

Richard Allan Horning
Sole Panelist

Dated: May 31, 2009