DECISION

Innomed Technologies, Inc. v. Kaltsouni Mehdi, Inc.

Claim Number: FA0406000287094

PARTIES

Complainant is Innomed Technologies, Inc. (“Complainant”), represented by David L. Sigalow, of Allen, Dryer, Deoppelt, Milbrath & Gilchrist, P.A., 255 South Orange Avenue, Suite 1401, Orlando, FL 32801.  Respondent is Kaltsouni Mehdi, Inc.  (“Respondent”), represented by Lawrence M. Karlin, of Weinberg Richmond LLP, 333 W. Wacker Drive, Ste. 1800, Chicago, IL 60606.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <nasalair.com>, registered with Network Solutions, LLC.

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.

David E. Sorkin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 16, 2004; the Forum received a hard copy of the Complaint on June 21, 2004.

On June 17, 2004, Network Solutions, LLC confirmed by e-mail to the Forum that the domain name <nasalair.com> is registered with Network Solutions, LLC and that Respondent is the current registrant of the name.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 June 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 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@nasalair.com by e-mail.

A untimely Response was received and determined by the Forum to be incomplete on July 15, 2004.  The Panel has nonetheless considered the untimely Response.

On July 28, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the owner of the trademark NASAL-AIRE for nasal ventilation interface medical devices.  The mark is registered with the U.S. Patent and Trademark Office (Principal Register, number 2,640,687), and has been in active use since at least 1993, and use in commerce since at least 2002.  Complainant’s NASAL-AIRE products are widely promoted through the Internet, advertisements in print media, and trade shows.

In January 2004, Respondent registered the disputed domain name, <nasalair.com>.  On the web, the domain name resolves to a page provided by the registrar, Network Solutions, LLC which promotes various products, including airline and travel services.

Complainant alleges that the disputed domain name is virtually identical to Complainant’s mark, resulting in confusion.  Complainant further alleges that Respondent lacks rights or legitimate interests in the domain name, based upon Respondent’s failure to use the name, Complainant’s longstanding use of and investment in its mark, and the effects upon Complainant of Respondent’s registration of the domain name.  Finally, Complainant alleges that the domain name was registered and used in bad faith, because Respondent either knew or should have known of Complainant’s trademark rights or else carelessly failed to perform a trademark search, and because Respondent failed to respond to Complainant’s cease-and-desist letter seeking to acquire the domain name from Respondent.

B. Respondent

Respondent states that it registered the disputed domain name intending to use it to market a product under development to increase nasal airflow.  In “mid-2003,” Respondent applied for trademark registration for the NASAL-AIRE mark, and sought to register the domain name <nasalair.com> with Network Solutions, LLC.  Respondent “was advised by Network Solutions, LLC that the <nasalair.com> domain name was currently available and did not conflict or infringe upon the registered domain name of any other user.”  Respondent claims that it was unaware of any similar trademarks or domain names when it registered the disputed domain name.

In May 2004, Complainant objected to Respondent’s attempt to register NASAL-AIRE as a trademark, and Respondent abandoned its trademark application.  Respondent states that Complainant did not object at that time to Respondent’s registration of the disputed domain name.

FINDINGS

The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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

The disputed domain name differs from Complainant’s trademark only in the omission of a hyphen between the two words, the omission of the silent “E” that appears at the end of the mark, and the addition of the top-level-domain suffix “.com.”  Although the domain name plainly is not identical to the trademark, it is confusingly similar, as the differences between the two are inconsequential.  See, e.g., Ritz-Carlton Hotel Co. Club Car Executive Transportation, Case No. D2000-0611 (WIPO Sept. 18, 2000) (finding <ritzcarlton.net> and <ritzcarlton.org> confusingly similar to RITZ‑CARLTON); see also Estée Lauder Inc. v. estelauder.com, Case No. D2000-0869 (WIPO Sept. 25, 2000) (finding <estelauder.com> and <estelauder.net> confusingly similar to ESTEE LAUDER); see also Lawchek, Ltd. v. Detail, Case No. FA96195 (Nat’l Arb. Forum Feb. 21, 2001) (finding <lawcheck.com> confusingly similar to LAWCHEK).

The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.

Rights or Legitimate Interests

Paragraph 4(c)(i) of the Policy provides that a Respondent may demonstrate rights or legitimate interests in a domain name by showing “use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services” prior to notice of the dispute.  Here, Respondent has vaguely referred to a medical product that was “under development” when it registered the domain name.  While “perfunctory” preparations to make bona fide use of a domain name can show the requisite rights or legitimate interests, such preparations must still be demonstrable, and the vague product development references furnished by Respondent are far from sufficient.  See Shirmax Retail Ltd. v. CES Marketing Group, Case No. AF-0104 (eResolution Mar. 20, 2000).  Furthermore, Respondent’s abandonment of its efforts to seek registration of NASAL-AIRE as a trademark leads the Panel to conclude that Respondent has voluntarily relinquished any rights or legitimate interests in the name that it may have once held.

The Panel concludes that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Registration and Use in Bad Faith

The third element required by the Policy, registration and use in bad faith, presents the closest question.  Under Paragraph 4(b)(i) of the Policy, bad faith registration and use may be found based upon indications that the domain name was acquired for the purpose of selling it at a profit to the trademark owner or a competitor thereof.  Mere constructive knowledge of Complainant or its mark at the time of registration is not sufficient to support such a finding; Respondent must have had actual knowledge when it registered the domain name.  See Barclays Global Investors, N.A. v. SocialFunds.com, LLC, Case No. NA196046 (Nat’l Arb. Forum Nov. 5, 2003).

In the view of the Panel, it strains credulity to believe that Respondent, having begun development of a product that apparently would compete directly against Complainant’s product, and presumably having performed appropriate trademark searches in the course of filing its own trademark application (which, according to Respondent, took place at the same time that it registered the disputed domain name), would not have been aware of Complainant and its trademark.  Nor does the Panel deem credible Respondent’s claim that Network Solutions advised it that the disputed domain name “did not conflict or infringe upon the registered domain name of any other user”—to the contrary, Network Solutions and other domain name registrars require the registrant to warrant that the domain name being registered does not infringe upon any third party’s rights, and specifically provide that it is the registrant’s responsibility to determine whether the domain name infringes anyone else’s rights.  See Policy paragraph 2.

The evidence before the Panel supports the conclusion that Respondent selected and acquired the disputed domain name intending to sell it at a profit to Complainant or its competitors, and that Respondent has held the domain name in order to further that purpose.

The Panel finds that the disputed domain name was registered and is being used in bad faith.

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

David E. Sorkin, Panelist
Dated:  August 9, 2004

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