WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.
Case No. D2010-1141
1. The Parties
Complainant is Vicar Operating, Inc. of Los Angeles, California, United States of America, represented by Hitchcock Evert LLP of Dallas, Texas, United States of America.
Respondent is Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America and Eklin Bot Systems, Inc. of Milpitas, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <eklinbot.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2010, naming the privacy protection service Domains by Proxy, Inc. as the Respondent. On July 12, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On July 13, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 14, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an Amended Complaint on July 16, 2010, adding Eklin Bot Systems, Inc. as a Respondent. For purposes of this proceeding, therefore, the Panel will consider Respondent Eklin Bot Systems, Inc. to be the appropriate substantive Respondent while maintaining the designation of Domains by Proxy, Inc. as an additional Respondent. Accordingly, references hereinafter to “Respondent” are to be construed as references to Respondent Eklin Bot Systems, Inc.
The Center verified that the Complaint together with the Amended 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 July 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 9, 2010.1
The Center appointed David H. Bernstein as the sole panelist in this matter on August 11, 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.
4. Factual Background
Complainant, a Delaware corporation, owns and operates freestanding veterinary hospitals and veterinary-exclusive clinical laboratories in the United States and supplies diagnostic imaging equipment to the veterinary industry. Complainant owns two United States trademarks in connection with the sale of diagnostic imaging equipment, technology products and data storage services for the veterinary industry: EKLIN (trademark) (Reg. No. 2975821; filed November 21, 2003; registered July 26, 2005) and EKLIN (service mark) (Reg. No. 3528170; filed January 29, 2007; registered November 4, 2008). Registration No. 2975821 (the trademark) claims a date of first use as of late 2001 and Registration No. 3528170 (the service mark) claims a date of first use as of 2005.
Respondent registered the Domain Name <eklinbot.com> on or about March 19, 2009, more than seven years after Complainant’s claimed date of first use. Respondent is using the Domain Name as a web site to sell products that overlap with those sold by Complainant under the mark EKLIN, such as eFILM work stations and PACS servers.
5. Parties’ Contentions
Complainant claims to have continuously used its registered trademark EKLIN since late 2001 in connection with diagnostic imaging equipment and other technology products supplied to the veterinary industry. Complainant contends that its mark EKLIN has achieved considerable recognition in the veterinary industry and that annual sales of EKLIN brand goods and services have exceeded $30 million in recent years.
Complainant alleges that the Domain Name is confusingly similar to its mark. Complainant asserts that the Domain Name incorporates Complainant’s trademark EKLIN in its entirety and has merely added the descriptive suffix “bot” (a shortened form of “robot,” which commonly is used on the Internet to signify a piece of software that can execute commands, reply to messages, or perform routine tasks), which does nothing to distinguish the Domain Name from the mark EKLIN.
Complainant also contends that Respondent lacks trademark or intellectual property rights or any other legitimate interest in the Domain Name. Complainant states that there is no evidence to suggest that Respondent ever used the Domain Name or a name closely corresponding to Complainant’s mark EKLIN prior to Complainant’s first use of the mark in late 2001. Complainant also states that Respondent is using the Domain Name as a web site offering the same types of goods that are sold under the mark EKLIN. Complainant alleges that Respondent selected the Domain Name in an attempt to capitalize improperly on the reputation and goodwill of EKLIN by deceiving customers trying to purchase or obtain information about EKLIN products.
Finally, Complainant alleges that Respondent registered and used the Domain Name in bad faith as part of a scheme to attract Internet users to the Domain Name for commercial gain by creating a likelihood of confusion with the federally registered, heavily promoted and well-recognized trademark EKLIN.
Respondent has not submitted a reply to the Complaint or Amended Complaint. Because of Respondent’s default, the Panel may accept as true the factual allegations stated within the Complaint and Amended Complaint, and may draw appropriate inferences therefrom. St. Tropez Acquisition Co. Ltd. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see Rule 5(e) (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”).
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, to obtain transfer of the Domain Name, Complainant must prove by a preponderance of the evidence that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights,
(ii) Respondent has no rights or legitimate interests with respect to the Domain Name, and
(iii) the Domain Name has been registered and is being used in bad faith.
For the reasons discussed below, the Panel concludes that Complainant has satisfied its burden of proving all three of these factors by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
The first factor contains two elements: first, does Complainant have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark. The Panel concludes that Complainant has satisfied its burden on both parts of this factor.
Complainant has proven ownership of trademark rights in the EKLIN mark, and claims first use as of late 2001. Complainant’s EKLIN trademark is registered with the United States Patent and Trademark Office, which constitutes prima facie evidence of the validity of the mark. National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147.
The Domain Name <eklinbot.com> includes Complainant’s trademark, EKLIN, in its entirety. That alone is sufficient to establish that the Domain Name is identical or confusingly similar to Complainant’s registered trademark. F. Hoffmann-La Roche AG v. MEDISOURCE LTD, WIPO Case No. D2009-0990; Office Holdings Ltd. v. Hocu To d.o.o. and Office Shoes d.o.o., WIPO Case No. D2009-1277; Ticketmaster Corp. v. Bill Hicks, WIPO Case No. D2004-0400. The mere addition of the dictionary word “bot” does not change the overall impression of the mark and does not render the Domain Name sufficiently different to avoid a finding that the Domain Name is confusingly similar to Complainant’s trademark. Jagex Ltd. v. can wang, Wu Chen, WIPO Case No. D2010-0680 (<rsbot.org>); Orbital Sciences Corp. v. Finseth International, WIPO Case No. D2007-1482.
B. Rights or Legitimate Interests
It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a disputed domain name. National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147. Because it is difficult for a complainant to produce evidence in support of a negative assertion, the threshold for a complainant to prove a lack of legitimate interest is low. A complainant need only make a prima facie showing on this element, at which point the burden shifts to the respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.2 The ultimate burden of proof, however, remains with the complainant. Id.
Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interest in the Domain Name. In particular, Complainant has demonstrated that Respondent did not use the Domain Name in connection with either a bona fide offering of goods and services or use in a legitimate non-commercial or fair manner. For an offering of goods or services to be bona fide within the meaning of the Policy, previous panels have recognized that a respondent must not be using the domain name in a way that intentionally trades on a competitor’s mark, even if it is a weak mark. National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147; Advance Magazine Publishers Inc. v. Lisa Whaley, WIPO Case No. D2001-0248; Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416.
Complainant has provided copies of pages of the website to which the Domain Name resolves, which show that Respondent sells the same types of goods and services that are sold under the mark EKLIN, including PACS servers and eFILM workstations, in a way that intentionally trades on Complainant’s mark. For example, the website expressly invokes the mark EKLIN in the names of the products it offers, selling the “Eklin Dig EklinBot @ PACS Server” and the “Eklin Dig EklinBot @ eFILM Workstation,” both of which are identified as being manufactured by “Eklin Bot.” This use by Respondent appears (by a preponderance of the evidence before the Panel) to be an infringement of Complainant’s trademark rights, thereby precluding a finding that Respondent is acting in good faith, which also precludes a finding that Respondent was making a “bona fide offering of goods or services.”
Furthermore, Respondent does not appear to be commonly known by its Domain Name.
In light of this evidence, the Panel finds that Complainant has made a prima facie showing that Respondent is not engaged in the bona fide sale of goods or services, nor does it otherwise have rights or a legitimate interest in the Domain Name. The burden of production thus shifts to Respondent to come forward with some evidence showing that it does, in fact, have rights in or a legitimate interest to this Domain Name. Because Respondent has defaulted, Respondent has failed to meet that burden and Complainant has thus prevailed in establishing, for purposes of the Policy, the Respondent lacks rights to or a legitimate interest in the Domain Name.
C. Registered and Used in Bad Faith
Complainant alleges that Respondent’s selection of the Domain Name “was part of a scheme to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with [Complainant’s] mark EKLIN.” If true, this circumstance is evidence of Respondent’s registration and use of the Domain Name in bad faith. See Policy, paragraph 4(b)(iv).
For the same reasons as discussed above, the Panel is persuaded that Respondent did have such a bad faith motive in registering and using the Domain Name. The evidence discussed above supports the inference that Respondent registered the Domain Name to take advantage of the goodwill of the EKLIN trademark and to confuse consumers into believing that the Domain Name and the products sold on the website hosted at the Domain Name, which are the same types of products sold under the EKLIN mark, have some connection or affiliation with Complainant.
For this reason, the Panel holds that Complainant has proven, at least by a preponderance of the evidence, that Respondent registered and is using the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <eklinbot.com> be transferred to Complainant.
David H. Bernstein
Dated: August 19, 2010
1 Because Respondent defaulted, the Panel believes it appropriate to carefully review the record to ensure that Respondent was at least given a fair opportunity to submit a response. See St. Tropez Acquisition Co. Ltd. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779. The Panel finds that the Center properly discharged its obligation to provide fair notice to Respondent under paragraph 2(a) of the Rules . The Center attempted to notify Respondent of the Complaint by email using all contact information disclosed in the registrar verifications, in the publicly available WhoIs records and on any websites to which the Domain Name resolved. The Center also sent the hard copy Written Notice by courier to Respondent Domains by Proxy, Inc. as its Scottsdale, Arizona address and to Respondent Eklin Bot Systems, Inc. at its Milpitas, California address, and UPS confirmed that both packages were delivered on July 21, 2010. It thus appears that actual notice was achieved, but if for some reason Respondent has not received notice, it is its own responsibility for failing to have provided updated contact information and/or failing regularly to check its mail and email.
2 Although the WIPO Overview of WIPO Panel Views on Selected UDRP Questions is not binding precedent, it embodies a consensus of positions set forth in the opinions of several WIPO UDRP panelists during the first five years of the administration of the UDRP. Office Holdings Ltd. v. Hocu To d.o.o. and Office Shoes d.o.o., WIPO Case No. D2009-1277. As such, it is prudent for panelists to follow such a consensus in order to promote consistency among UDRP decisions. Grundfos A/S v. Ian Puddick / Leakbusters LTD, WIPO Case No. D2009-0150.