DECISION

Pedia Pals, LLC v. International Medical Group BV

Claim Number:  FA0307000175286

PARTIES

Complainant is Pedia Pals, LLC, Plymouth, MN (“Complainant”) represented by John W. Provo, of Maslon Edelman Borman & Brand.  Respondent is International Medical Group BV, Gassel, Netherlands (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is <pediapals-online.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 29, 2003; the Forum received a hard copy of the Complaint on July 30, 2003.

On August 4, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <pediapals-online.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. 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 August 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 25, 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@pediapals-online.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 September 11, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 <pediapals-online.com> domain name is confusingly similar to Complainant’s PEDIA PALS mark.

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

3. Respondent registered and used the <pediapals-online.com> domain name in bad faith.

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

FINDINGS

Complainant, Pedia Pals, LLC, is a leading manufacturer of pediatric medical equipment and supplies throughout the world.  Complainant also conducts business from its commercial website at the <pediapals.com> domain name, which has been in existence since October 12, 2002.  Complainant owns the mark PEDIA PALS, which is a protected service mark registered in the United States Patent and Trademark Office, Registration No. 1,946,401, registered on January 9, 1996.

The Respondent is a former distributor of Complainant’s products whose appointment was terminated by Complainant for cause as of May 20, 2003.  Notwithstanding Complainant’s written demand that Respondent cease and desist any further use of the contested domain name, and the express prohibition against such use contained in the parties’ International Master Distributor Agreement (the “Distribution Agreement”), Respondent continues to operate a website located at this domain address, which website: (i) prominently features multiple uses of the Complainant’s registered PEDIA PALS mark; (ii) offers Complainant’s products for sale; and (iii) advertises itself as “…the Homepage of all PEDIAPALS-EUROPE.”

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 that is has rights in the PEDIA PALS mark through registration with the United States Patent and Trademark Office.  Furthermore, Respondent’s <pediapals-online.com> domain name incorporates Complainant’s entire distinctive mark.  The fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish confusing similarity for purposes of the Policy, despite the addition of other words to such marks.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response.  Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); 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”).

Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.  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 in respect of 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 Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).

Complainant claims that Respondent uses the domain name to “secure commercial gain” and, therefore, the domain name is not being used in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or in association with a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  As Respondent has used Complainant’s mark without its authority to secure commercial gain, the Panel finds that Respondent has used Complainant’s domain name in a manner contrary to Policy ¶¶ 4(c)(i) and (iii).  See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of Complainant’s mark to sell Complainant’s perfume, as well as other brands of perfume, is not bona fide use).

Respondent has not come forward with any proof and there is no evidence on record to establish that Respondent is commonly known by PEDIA PALS ONLINE or <pediapals-online>.  Therefore, Respondent has failed to establish that it has rights or legitimate interests in 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 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").

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant urges that Respondent uses the disputed domain name as a means to divert Complainant’s customers to Respondent’s website, which offers Complainant’s goods for sale, and uses Complainant’s logo, along with other product-identifying features.  Complainant contends that Respondent’s use creates consumer confusion as to Complainant’s affiliation or sponsorship of the website.  The Panel finds that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).  See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant); see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com> because customers visiting the site were confused as to the relationship between the Respondent and Complainant).

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 <pediapals-online.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated:  September 26, 2003

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