Sybrondentalspecialties.com

The timeline behind sybrondentalspecialties.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Sybron Dental Specialties, Inc. v. Belize Domain WHOIS Service Lt Claim Number: FA0805001195262 PARTIES Complainant is Sybron Dental Specialties, Inc. (“Complainant”), represented by Kathryn E. Smith, of Wood, Herron & Evans LLP, Ohio, USA. Respondent is Belize Domain WHOIS Service Lt (“Respondent”), Belize. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <sybrondentalspecialties.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com. 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. Bruce E. Meyerson as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 27, 2008. On May 28, 2008, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <sybrondentalspecialties.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 June 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 23, 2008 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@sybrondentalspecialties.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On June 30, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <sybrondentalspecialties.com> domain name is identical to Complainant’s SYBRON DENTAL SPECIALTIES mark. 2. Respondent does not have any rights or legitimate interests in the <sybrondentalspecialties.com> domain name. 3. Respondent registered and used the <sybrondentalspecialties.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Sybron Dental Specialties, Inc., produces and markets medical and dental products throughout the United States. Since 1997, Complainant has marketed its products under the SYBRON DENTAL SPECIALTIES mark. Complainant has owned and operated the <sybrondental.com> domain name since 1997, in connection with its Internet-based operations. Complainant uses its marketing for its various subsidiary companies that manufacture such products. Complainant maintains more than 1,780 employees in the United States and 500 worldwide. Respondent registered the <sybrondentalspecialties.com> domain name on December 12, 2005. Respondent is currently using the disputed domain name to resolve to a website that features third-party advertisements for Complainant’s competitors. 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); 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.”). 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 not asserted any registration or application for trademark status with the United States Patent and Trademark Office (“USPTO”) or other such governmental entity. However, Complainant need not assert registration of the SYBRON DENTAL SPECIALTIES mark in order to achieve rights in the mark and corresponding UDRP standing pursuant to Policy ¶ 4(a)(i). Complainant may assert common law rights in furtherance of that end under Policy ¶ 4(a)(i). See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”). Complainant has asserted use of the SYBRON DENTAL SPECIALTIES mark and <sybrondental.com> domain name for over ten years and has alleged that through its national and international business it has established common law trademark rights in the SYBRON DENTAL SPECIALTIES mark. Based on the uncontradicted evidence, the Panel finds that Complainant has common law rights in the mark under Policy ¶ 4(a)(i) See National Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”). Respondent’s <sybrondentalspecialties.com> domain name merely copies Complainant’s exact mark, and adds the generic top-level domain (“gTLD”) “.com.” Because gTLD additions are irrelevant under Policy ¶ 4(a)(i), the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has asserted that Respondent lacks rights and legitimate interests in the <sybrondentalspecialties.com> domain name pursuant to Policy ¶ 4(a)(i). The Panel finds that Complainant has successfully alleged a prima facie case supporting its assertions, and therefore Respondent receives the burden of proving its rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Respondent cannot point to any evidence within the record, including the WHOIS domain name registration information, to suggest that it is commonly known by the <sybrondentalspecialties.com> domain name. In fact, the WHOIS information lists Respondent as “Belize Domain WHOIS Service Lt,” which bears no resemblance to the disputed domain name. Moreover, there is no asserted license by which Respondent may use Complainant’s mark in any fashion. Based on the above, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected). Respondent’s <sybrondentalspecialties.com> domain name resolves to a website that features third-party advertisements and links that compete with Complainant’s operations. Respondent presumably benefits monetarily from these advertisement placements through the receipt of referral fees. The Panel therefore finds that Respondent has failed to create a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent’s <sybrondentalspecialties.com> domain name diverts Internet users to a website that offers third-party advertisements competitive with Complainant. Internet users seeking Complainant could likely come across the disputed domain name and be routed to Respondent’s own website. Thus, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent). Internet users that seek Complainant’s products could likely find the disputed domain name and corresponding website, which displays competitive links as to Complainant as well as Complainant’s mark. Presumably, Respondent then benefits through the receipt of referral fees for these advertisements. Respondent has therefore engaged in bad faith registration and use under Policy ¶ 4(b)(iv) as Respondent has created a likelihood of confusion as to Complainant’s affiliation and endorsement of the disputed domain name and corresponding website. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”). 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 <sybrondentalspecialties.com> domain name be TRANSFERRED from Respondent to Complainant. Bruce E. Meyerson, Panelist Dated: July 11, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.