Complainant is SmartHealth, Inc. of Phoenix, Arizona, United States of America, represented by Reinhart Boerner Van Deuren s.c., United States of America.
Respondent is Softlex, Nuri Riazati of Scottsdale, Arizona, United States of America.
The disputed domain names <smartpractice.biz>, <smartpractice.info>, <smartpractice.net> and <smartpractice.org> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2010. On May 17, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On May 18, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 May 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 8, 2010.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on June 14, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant owns the following incontestable United States trademark registrations for the trademark SMARTPRACTICE:
- SMARTPRACTICE - United States Registration No. 2,454,568, registered May 29, 2001 for gloves for medical use, namely disposable latex gloves, surgical gloves, and pvc vinyl gloves, in Class 10;
- SMARTPRACTICE (stylized) - United States Registration No. 1,531,419, March 21, 1989 registered for catalog services relating to products of particular interest to those engaged in the dental and medical professions, in Class 42;
- SMART PRACTICE - United States Registration No. 1,540,553 registered May 23, 1989 for dental care products, namely toothbrushes and tube squeezers, in Class 21; and
- SMARTPRACTICE - United States Registration No. 2,837,641, registered May 4, 2004 for publications and printed matter, namely, postcards, greeting cards, thank you and reminder cards, business forms, patient education posters, pamphlets, newsletters and books in the dental, medical chiropractic, veterinary and optometrical fields, in Class 16.
Complainant has continuously used each of the aforementioned marks in connection with the respective goods/services since at least 1988. Complainant has invested a substantial amount of money and effort in advertising and promoting its goods and services under the SMARTPRACTICE and/or SMART PRACTICE trademarks (hereafter the trademarks). As a result, the trademarks are highly distinctive of Complainant's goods/services and Complainant has achieved a significant degree of consumer goodwill, recognition, and reputation in the trademarks.
Complainant registered the domain name <smartpractice.com> on May 15, 1995 and has continuously used it as the identification label for its website since said date.
Respondent registered the disputed domain names on September 4, 2005 and September 5, 2005, respectively.
Complainant alleges that Respondent is using and registered the disputed domain names with the intention of using them in connection with a business called BizCard. BizCard allegedly is a business that sells printed marketing materials, including postcards, greeting cards, thank you and reminder cards, and business forms, which are competitive products to goods sold by Complainant. However, the record does not illustrate a defined nexus between Respondent and the BizCard business.
Complainant's counsel has made multiple attempts to contact Respondent via email, first class mail and by telephone through the contact information listed on the WhoIs database and the BizCard website to demand that Respondent transfer the disputed domain names to Complainant. However, to date, Respondent has not responded to any of Complainant's correspondence or complied with the demands set forth in Complainant's cease and desist letters.
Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular Complainant claims that:
Complainant claims that the disputed domain names are identical and confusingly similar to the trademarks in which the Complainant has long-standing rights that pre-date Respondent's registration of the disputed domain names.
The Complainant contends that Respondent has no legitimate right to the disputed domain names. Specifically, Complainant states that Respondent has never conducted business under the trademarks and does not own any rights to the SMARTPRACTICE mark.
Complainant asserts that Respondent was never licensed or otherwise granted permission, either express or implied, from Complainant to use any of the trademarks. Moreover, Complainant contends that Respondent competes directly with Complainant's business in that both businesses sell paper marketing materials “such as postcards, greeting cards, thank you and reminder cards, business forms, etc.” and registered the disputed domain names to intentionally attract visitors using the trademarks. Accordingly, Respondent has no legitimate right to the disputed domain names.
In support of this requirement, Complainant provides that it has continuously used the trademarks since 1988 and the domain name <smartpractice.com> since 1995. Consequently, Respondent either knew, or should've known, of Complainant's trademark rights and associated goodwill therein. Respondent, therefore, had legal, if not actual, notice of Complainant's trademark and domain name prior to registering the disputed domain names.
The disputed domain names were registered for the purpose of competing against Complainant or otherwise prevent Complainant from registering the disputed domain names; all for Respondent's own commercial gain. Accordingly, Respondent registered the disputed domain names in bad faith and is using them in bad faith.
Respondent did not respond to Complainant's contentions.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. (Policy, paragraph 4(a)).
Respondent's default does not automatically result in a decision in favor of Complainant. Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. While a panel may draw negative inferences from Respondent's default, paragraph 4 of the Policy requires Complainant to support its assertions with actual evidence in order to succeed in a proceeding under the Policy. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (<vanguar.com>, Transfer); Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 (<berlitzsucks.com>, Transfer); and Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383 (<brookehogan.com>, Denial).
Given the United States Federal trademark Registration Nos. 2,454,568, 1,531,419 and 2,837,641 for the mark SMARTPRACTICE; United States Federal trademark Registration No. 1,540,553 for SMART PRACTICE; and Complainant's continued use of the mark for over 22 years, the Panel finds that Complainant has trademark rights in the marks SMARTPRACTICE and SMART PRACTICE.
The Panel also finds that that the disputed domain names <smartpractice.biz>, <smartpractice.info>, <smartpractice.net>, and <smartpractice.org> are confusingly similar to the registered trademarks in which Complainant has rights. The disputed domain names differ from Complainant's registered trademarks only in that they contain the gTLD domain name suffixes “.biz”, “.info”, “.net” and “.org”. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name ‘.com' is … without legal significance since use of a gTLD is required of domain name registrants”).
The first requirement of paragraph 4(a)(i) of the Policy is, therefore, satisfied.
Respondent did not refute Complainant's allegations that Respondent is not licensed by Complainant and has not obtained permission, either express or implied, from Complainant to use and/or register any domain name(s) incorporating Complainant's trademarks, nor is there any evidence on the record that Respondent has ever conducted business under the trademarks. These allegations by Complainant are sufficient to make out a prima facie case and shift the burden of response to Respondent.
Respondent has not attempted to prove that it used or prepared to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services before notice of the dispute. Nor has Respondent demonstrated that it is making a “legitimate noncommercial or fair use of the [disputed] domain name[s], without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The second requirement of paragraph 4(a)(ii) of the Policy is, therefore, satisfied.
Complainant proved that it has used the trademarks since 1988 and the <smartpractice.com> domain name since 1995, both more than 10 years before Respondent registered the disputed domain names. The Panel finds that it is more probable than not that Respondent was aware of Complainant's rights and registered the disputed domain names in bad faith.
Complainant alleges that Respondent is using the disputed domain names to compete against Complainant or otherwise prevent Complainant from registering the disputed domain names. Complainant alleges the disputed domain names are being used in connection “with a business called BizCard, which sells print marketing materials, including postcards, greeting cards, thank you cards,” etc. However, the attached evidence does not support the allegations. Complainant attached a screenshot of the BizCard website found at “www.bizcard.com”. But, there is no evidence that any of the disputed domain names ever re-directed to “www.bizcard.com”. The evidence shows that the current disputed domain names each resolve to parked pages that do not offer or advertise any goods or services related to those offered by Complainant.
Nonetheless, “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; McDonald's Corporation v. Easy Property, WIPO Case No. D2006-1142; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877.
Several factors demonstrate bad faith passive holding. In particular, Respondent's registration of several domain names all of which contain Complainant's trademark represents a pattern that indicates bad faith. Respondent's failure to respond to any communications also indicates bad faith. Telstra, supra.
For all the foregoing reasons, the Panel orders that the disputed domain names <smartpractice.biz>, <smartpractice.info>, <smartpractice.net> and <smartpractice.org> be transferred to Complainant.
Lawrence K. Nodine
Dated: June 28, 2010