WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AngioDynamics, Inc. v. Sensational Serve
Case No. D2007-0307
1. The Parties
Complainant is AngioDynamics, Inc. of Queensbury, New York, United States of America, represented by Gavin Law Offices, PLC, United States of America.
Respondent is Sensational Serve (also operating as, or as affiliated with, Urban Nutrition, LLC) of New York, New York, United States of America, represented by the law firm Kelley Drye & Warren, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <venacura.com> is registered with GKG.NET, INC (formerly GK Group LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2007. On March 5, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On March 5, 2007, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2007. The Response was filed with the Center on March 27, 2007.
The Center appointed Richard G. Lyon as the sole panelist in this matter on April 12, 2007. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant owns a trademark, registered on the principal register of the United States Patent and Trademark Office (USPTO), for VENACURE, in international class 10 for venous disease treatment medical instruments, including laser, optical fiber, and surgical kit, for use in the treatment of venous disease. Complainant applied for this trademark in March 2004, and it was registered in March 2006. Complainant claims a first use in commerce of March 2005. Complainant currently operates a website at “www.venacure.com” at which it markets its VENACURE laser treatment products over the Internet.
Respondent is the marketing arm of Urban Nutrition, a company that sells dietary supplements for nutritional and therapeutic use. Respondent markets a product named VENACURA that it describes as a nutritional supplement whose purpose is to reduce the appearance and pain associated with varicose and spider veins. Respondent applied for a trademark for the word VENACURA in international class 5 in July 2006. This application was published for opposition on February 20, 2007. Complainant has requested an extension of time in which to consider opposing issuance of this mark.
Respondent registered the disputed domain name on May 26, 2006 and began active marketing of its product at about the same time. Respondent has maintained an active website marketing its Venacura product since some time in 2006.
5. Parties’ Contentions
Complainant contends as follows:
Disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.
The disputed domain name differs from Complainant’s registered trademark by a single letter, the final letter of the former being an “a” and the latter an “e.” This close similarity amounts to typosquatting, and confusion with Complainant’s mark is obvious because of both spelling and phonetic similarity.
Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant has never authorized Respondent to use its mark. Respondent registered the disputed domain name well after Complainant acquired rights in its mark. Because Respondent is a United States entity, it is presumed to have constructive notice of marks registered with the USPTO; particularly is this so when Respondent is a competitor of Complainant. Because Respondent registered the disputed domain name after Complainant acquired rights in its mark, its use is not “legitimate” under paragraph 4(a)(ii) of the Policy.
Respondent registered and has used the disputed domain name in bad faith.
Describing Respondent’s Venacura product as “alternative vascular therapy,” Complainant asserts that the parties’ respective lines of businesses are “sufficiently close” to make them competitive. Because of this and because “Complainant’s trademark [is] sufficiently well known,” a likelihood of confusion is obvious, and thus Respondent registered and has used the disputed domain name to take advantage of Complainant’s mark. Stated differently, the Panel may infer bad faith in both registration and use from the close similarity of the disputed domain name to the mark at issue and Respondent’s status as Complainant’s competitor.
Respondent contends as follows:
The disputed domain name is not confusingly similar to Complainant’s mark.
Respondent does not contest Complainant’s trademark or its validity but denies confusing similarity on a number of grounds. First, the marks differ visually because of the capital letters in Complainant’s mark (VenaCura). Second, they differ in “how they sound”: Complainant’s mark has two syllables, Respondent’s disputed domain name and mark has three.1 Third, the marks differ in meaning. Respondent’s mark and the disputed domain name are a Latin translation of “vein care” and thus a “highly suggestive” term. Complainant’s mark connotes caring for one’s veins. Respondent appears also to question the breadth of Complainant’s trademark rights, citing a large number of other products related to vein care that incorporate the “vena” prefix; because of this and because of the difference in the following syllable, the disputed domain name differs from Complainant’s mark. Respondent based the disputed domain name on the name of one of its products and therefore asserts that the typosquatting precedents cited by Complainant do not apply in this proceeding.
Respondent has rights or legitimate interests in the disputed domain name.
Respondent’s trademark application, which predates notice of this proceeding by many months, provides conclusive proof of demonstrable preparations to use the disputed domain name prior to notice of these proceedings and provides “an absolute defense” under paragraph 4(c)(i) of the Policy. Respondent simply used its own trademark to market its own products; this is not an example of a party’s competing with a differently-named product intentionally to take advantage of Complainant’s mark to divert customers to Respondent’s website. Respondent denies that it is a competitor of Complainant, describing itself as a seller of “dietary supplements” while Complainant provides medical instruments and other treatments for venous diseases. The USPTO’s publishing of Respondent’s trademark application for VENACURA in the face of Complainant’s trademark is presumptive evidence that the USPTO found no likelihood of confusion.
Respondent has not acted in bad faith.
Many of the arguments advanced to assert a right or legitimate interest in the disputed domain name also illustrate that Respondent did not register and has not used the disputed domain name in bad faith. In particular, while both products refer generally to veins or products used in connection with veins, they do not compete directly. Respondent cites many differences between the products, among them the nature of the product; potential users (for example, Complainant’s site has a separate access for physicians); different marketing approaches; and different means of use (one is a pill, the other is surgical procedure). As a result, the parties are not targeting the same audiences. Knowledge of Complainant’s mark (actual or inferred) does not necessarily establish bad faith, and the differences in the products’ target audiences refuse any such implication in this proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar To a Mark in which Complainant has Rights
Unlike United States trademark law, in which many factors are examined to determine whether one mark is confusingly similar to another, a panel’s analysis under paragraph 4(a)(i) of the Policy is a straightforward exercise in comparing similarity in sound, appearance, and ideas suggested by the mark with those suggested by the disputed domain name, among other factors. Sharman License Holdings, Limited v. Gregg Smitherman, WIPO Case No. D2004-0375. Because Internet protocols only allow text in a single case and typeface, differences in colors, logos, capitalization, and the like are irrelevant under paragraph 4(a)(i). “The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of other marketing and use factors.” Giga-Byte Technology Co. Ltd. v. Alan Coughlin, doing business as Gigabyte, WIPO Case No. D2005-1229.
Under this standard, the disputed domain name is confusingly similar to Complainant’s mark. While a difference of a single letter does not always require a finding of similarity, eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis, WIPO Case No. D2004-0552, in this proceeding, similarity is obvious. The two words at issue have eight letters each, and only the last letter (which imparts no meaning in and of itself) differs. They are nearly identical in sight and sound. Complainant has established this element of the Policy.
B. Rights or Legitimate Interests; Bad Faith
Respondent used its product in commerce, established a website under the product’s name, and applied for a United States trademark under that name well before commencement of this proceeding. Respondent therefore comes within the safe harbor of paragraph 4(c)(i) of the Policy unless its entire use of the VENACURA name can be attributed to an intentional effort to appropriate the goodwill of Complainant’s pre-existing product.
Respondent’s evidence in the present proceeding refutes any such finding under the Policy.2 Respondent has shown that there are many cosmetic and medical products relating to veins that use the “vena” prefix; the parties’ products and websites appear to differ markedly; and, while there may be some overlap in target audience, the differences far outweigh the similarities. Compare The Knot, Inc. v. Julia Bitton, WIPO Case No. D2006-0377. With this evidence, Respondent has shown that “before any notice to it of the dispute, its 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.” Policy, paragraph 4(c)(i).
The typosquatting cases cited by Complainant are not applicable to the facts in the present case. Typosquatting commonly involves a minor modification to a trademark, usually creating a nonsensical word or phrase differing from the complainant’s mark only by inverted letters or replacement of one letter with an adjacent letter on a standard keyboard. Such conduct betrays an obvious intention to profit in some fashion from the complainant’s mark.3 Typosquatting cases rarely involve a respondent’s sale of real products under a real trademark at an active website.
Although unnecessary to consider in detail in light of the previous finding, Complainant has not carried its burden of proof to establish that Respondent registered the disputed domain name in bad faith. Bad faith under the Policy requires some form of taking advantage of Complainant’s mark, and there is inadequate evidence from which the Panel may infer that Respondent did so.4
Either an opposition in the USPTO or an action under the Lanham Act in a United States court is a more appropriate place to settle any claim founded on Complainant’s belief that the consuming public will be confused by Respondent’s sale of a similarly named product. Complainant has not made the required showing for a transfer under the Policy.
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Dated: April 26, 2007
1 Respondent submits a cassette of an audio advertisement allegedly illustrating these differences.
2 As noted, differences in procedure and the substantive standard to be applied might lead to a different result under United States trademark law.
3 As in The Knot, Inc. v. Julia Bitton, supra, here “the record reveals none of the species of activity ordinarily associated with cybersquatting: warehousing (no use of the domain name for a lengthy period); holding the domain name out for sale; use entirely for click-through revenues; or other conduct in which ownership or use of the domain name, rather than ordinary business activity, is the linchpin.”
4 Complainant rotely alleges that its mark is “well known”, without much supporting evidence. As it had been in use for just over a year when Respondent registered the disputed domain name, that assertion is highly doubtful even if measured strictly within the medical community or the broader community consisting of all products related in any way to veins. Respondent's submissions that many vein-related products use the “vena” prefix adds to the Panel's doubts on this subject.