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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Acumed LLC v. Calistoga Healing Arts Center

Case No. D2006-1180

1. The Parties

The Complainant is Acumed LLC of the United States of America, represented by Welsh & Katz, Ltd., also of the United States of America.

The Respondent is Calistoga Healing Arts Center of the United States of America.

2. The Domain Name and Registrar

The disputed domain name, <acumed.com>, is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on September 12, 2006. On September 14, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On September 14, 2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details, indicating that it had “locked” the domain name, and confirming details of the registration agreement. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 19, 2006. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2006.

The Center appointed Debra Stanek as the Sole Panelist in this matter on November 1, 2006. 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 paragraph 7 of the Rules.

4. Factual Background

Complainant owns a United States federal trademark registration, issued in 1995, for the mark ACUMED for orthopedic devices. In addition, Complainant claims use of the trade name “Acumed” since 1990. Complainant has registered the <acumed.net> domain name, which it uses to provide detailed information about its products. According to Complainant, through its use of the ACUMED mark and trade name, it has achieved significant recognition and good will among consumers.

The disputed domain name was registered in March 1996. At the time of filing the Complaint, the “www.acumed.com” website displayed the following message:

“The web page you are looking for either has a different address or is currently under construction.

You may have mis-typed the address for this website. For some sites, the address is of the format “www.example.com/~username/”. Others are advertised as “www.example.com/sitename/”. Please try one of these variations, or search for the site at Google.com.”

Entering “acumed.com” into the Google search engine results in a listing for “AcuMed.Com” at “www.sonic.net/acumed/.” That page is entitled “Acupuncture, Oriental Medicine, & Jujitsu Information,” and contains links to websites that contain information on these and other subjects, including advertising and selling related goods and services.

Currently, the “www.acumed.com” website directly displays a similar page under the title “Acupuncture and Oriental Medicine Information.”

5. Parties’ Contentions

A. Complainant

Complainant makes the following contentions:

The disputed domain name is identical to Complainant’s federally registered ACUMED mark and its Acumed trade name.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has not authorized Respondent to use the <acumed.com> domain name. Complainant asserts, on information and belief, that Respondent has no rights in any ACUMED mark and believes that Respondent is not commonly known by the <acumed.com> domain name.

The Respondent registered and is using the disputed domain name in bad faith because:

(a) Respondent had notice of Complainant’s trademark rights by virtue of Complainant’s federal trademark registration, Complainant’s use of the registered trademark symbol “®,” when referring to the ACUMED mark on Complainant’s “acumed.net” website, and Complainant’s letter to Respondent.

(b) Respondent is using the domain name to attract visitors who are seeking Complainant to Respondent’s website and advertising and promoting other products, including medical products and services that are not regulated, unlike Complainant’s orthopedic devices, which are subject to extensive government regulation and approval. In particular, Complainant points to a “disclaimer” contained on the “www.acumed.com” website that is so “cavalier” it tarnishes Complainant’s image and reputation. This disclaimer reads:

“Use any products on the skin with the understanding that some people have more sensitive skin than others. If a rash develops, don't use any more. Keep this stuff out of your mouth, eyes, etc. Keep away from the young and the tender. Don't feed it to your cat, dog, or any other life form. Use your intelligence. If you don’t have any, find someone who does. Seek proper medical advice when warranted. ‘Nuf said.”

(c) Respondent’s page redirecting visitors creates a mistaken impression that Complainant was no longer in business or was not able to operate a website, tarnishing its image.

(d) Respondent never responded to Complainant’s letter “notify[ing] Respondent of its rights.”

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to prevail, Complainant must prove:

(i) The <acumed.com> domain name is identical or confusingly similar to Complainant’s ACUMED mark; and

(ii) Respondent has no rights or legitimate interests in respect of the <acumed.com> domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy. The Policy sets out examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name, see Paragraph 4(c) of the Policy, as well as circumstances that may evidence a Respondent’s bad faith registration and use, see Paragraph 4(b) of the Policy.

Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

Complainant must establish that the disputed domain name is either identical or confusingly similar to its mark.

Complainant’s federal trademark registration establishes its trademark rights in the mark ACUMED. The disputed domain name is identical to that mark. For purposes of considering identity or confusing similarity, the “.com” top-level is not relevant.

The Panel finds that Respondent’s domain name is identical to Complainant’s mark.

B. Rights or Legitimate Interests

The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the <acumed.com> domain name by making a prima facie showing that none of the three examples of rights or legitimate interests in a domain name set forth in paragraph 4(c) of the Policy are applicable. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).

The Panel concludes that Complainant has failed to make a prima facie showing that none of the following examples set forth in Paragraph 4(c) of the Policy apply here:

(i) before any notice to you of the dispute, your 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Specifically, Complainant has not made a prima facie showing that, before notice of the dispute, Respondent not was making or preparing to make a bona fide use of the domain name. See Paragraph 4(c)(i) of the Policy. Respondent registered the <acumed.com> domain name in 1996. Although Complainant’s federal trademark registration had issued six months earlier, it did not object to Respondent’s registration at that time.

While registration of a trademark on the Principal Register of the United States Patent and Trademark Office establishes constructive notice of the mark as a matter of federal trademark law, under the circumstances presented here, the Panel finds that such notice does not constitutes “notice of a dispute” within the meaning of Paragraph 4(c)(i) of the Policy. Further, the Panel concludes that Complainant’s June 27, 2006 letter did not put Respondent on notice of a dispute. While the letter identifies Complainant’s federal trademark registration, it does not object to Respondent’s use of the <acumed.com> domain name, ask that Respondent refrain from any activity, or identify any dispute or complaint pertaining to Complainant’s trademark rights. Indeed, the letter concludes with an inquiry:

“Our client has asked us to contact you to inquire as to the present status of “www.acumed.com” and to determine whether the Arts Center has abandoned the domain or intends on resuming its use at a future time. We would also like to determine whether the Arts Center would be amenable to discussing the possibility of transferring ownership of this domain to our client.

Upon receipt of this letter we ask that you contact us at your earliest continence to discuss these maters so that we can provide our client with a better understanding as to the Arts Center’s intentions with respect to ‘www.acumed.com’.”

Even if the Panel concluded that this letter did constitute notice of the dispute, the record shows that by the time of this letter, Respondent was using the <acumed.com> domain name in connection with offerings of products and services related to acupuncture and so-called “Oriental” medicine, among other things, which terms bear some connection to the disputed domain name, and which do not compete with the orthopedic devices Complainant makes and sells under the ACUMED mark. This is true even though the manner of that use resulted in visitors being greeted with a page instructing them to conduct a Google search to locate the website at a different address. Under these circumstances, the Panel concludes that there is no basis to conclude that those offerings are not bona fide.

The Panel finds that Complainant has not shown that Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

As noted above, a complainant must establish each of the three elements outlined in Paragraph 4(a) of the Policy in order to prevail. In light of the conclusion that Complainant has not established the second element, it is not necessary to address the issue of bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Debra J. Stanek
Sole Panelist

Dated: November 15, 2006