somnoplasty.com

WIPO Arbitration and Mediation Center

Complainant is Somnus Medical Technologies, Inc., a Delaware corporation with its principal place of business at 285 Wolfe Road, Sunnyvale, California 94086, U.S.A. ("Somnus").

Respondent is Dr. Mansoor Madani, an individual with an address at 15 N. Presidential Blvd. Suite 301, Bala Cynwd, Pennsylvania 19004, U.S.A. ("Dr. Madani").

The domain name in issue is "somnoplasty.com". The registrar is Network Solutions, Inc. (NSI).

The WIPO Arbitration and Mediation Center (the Center) received Somnus’s complaint via email on March 31, 2000, and hard copy on April 4, 2000. The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Somnus made the required payment to the Center. The formal date of the commencement of this administrative proceeding is April 10, 2000.

The complaint identifies Dr. Madani as Respondent, states that Dr. Madani operates a website at www.snorenet.com, and states that Somnus’s attorneys have corresponded with Dr. Madani’s attorney, Douglas M. [sic] Dolfman, Esq., located in Philadelphia, Pennsylvania.

On April 10, 2000, NSI confirmed to the Center that the registrant of the domain name in issue is Dr. Madani and a NSI WHOIS printout also indicates the billing contact is Dr. Madani, and states: "Record created on 06-Feb-1998."

The complaint certifies that a copy of the complaint had been transmitted on March 31, 2000, by facsimile and by overnight courier to Dr. Madani’s attorney, Douglas L. Dolfman.

On about April 10, 2000, the Center transmitted via email to Dr. Madani Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint. On April 11, 2000, the Center transmitted the Notification and Complaint to Dr. Madani via courier and via facsimile. The Notification advised inter alia (a) the response was due by April 30, 2000, (b) in the event of default by Respondent the panel would be appointed to review the facts of the dispute and to decide the case and could draw inferences from the default as the panel considers appropriate, and (c) whom to contact at the Center.

Dr. Madani failed to respond. On May 5, 2000, the Center transmitted to Dr. Madani via courier, facsimile and email a Notification of Respondent Default, advising Dr. Madani he had failed to respond and the consequences of his default include (a) pursuant to paragraph 14 of the complaint, the Center will appoint a three-member panel, (b) the panel will be informed of Dr. Madani’s default and will decide in its sole discretion whether to consider a late response, and (c) the Center will continue to send to Dr. Madani all case-related communications.

On May 25, 2000, the Center advised the parties via fax and email that the Center had appointed as the panelists in this proceeding (a) Thomas Creel, (b) Edward Poplawski and (c) David Plant (Presiding Panelist), and enclosed a copy of the panelists’ Statements of Acceptance and Declaration of Impartiality and Independence.

June 8, 2000 was the original due date for the panel’s decision. On June 6, 2000, in accordance with the Center’s email of that date to the parties, the original due date was extended to June 30, 2000.

Dr. Madani has not communicated with the Center since the April 10, 2000 Notification of Complaint and Commencement of Administrative Proceeding.

a. The Trademarks

The complaint (paragraph 12) is based on the service mark and trademark "SOMNOPLASTY", as registered in the U.S. Patent and Trademark Office pursuant

to two registrations, copies of which appear at Annexes D and E to the complaint, viz.:

SOMNOPLASTY Reg. No. 2,271,303 August 24, 1999

SOMNOPLASTY Reg. No. 2,316,068 February 8, 2000.

The service mark is for medical services relating to the treatment of sleep disorders. The trademark is for medical devices, namely electrode handpieces for use with radio frequency electrosurgical generators. First use in commerce of the service mark is February 1997; of the trademark, October 1997.

At paragraph 12, pages 5 - 6, Somnus avers that it owns the registrations and they are valid, subsisting, and in full force and effect.

At page 6, Somnus avers (a) it has offered for sale and sold its SOMNOPLASTY services and goods to authorized physicians and surgeons through printed literature and the Internet, (b) Somnus was unable to register "somnoplasty.com" as a domain name due to Dr. Madani’s unauthorized registration with NSI, and (c) consumers are forced to search for "the site" rather than go to what would be the obvious location, "www.somnoplasty.com". A printout of a portion of Somnus’s "www.somnus.com" website is at Annex F.

At page 6, Somnus avers the domain name in issue is identical or confusingly similar to Somnus’s SOMNOPLASTY trademark and service mark.

At page 6, Somnus avers Dr. Madani has no rights or legitimate interests in the domain name, stating Dr. Madani (a) does not own a trademark registration covering the mark, (b) has no common law use of the mark prior to Somnus’s adoption and use of SOMNOPLASTY mark in 1997, and (c) registered the domain name in bad faith.

Under Section A, at pages 6 - 7, Somnus avers:

Somnus’s SOMNOPLASTY mark is used with "a revolutionary patented surgical procedure and related surgical devices" to treat sleep disorders.

Dr. Madani registered the domain name with actual knowledge that the SOMNOPLASTY mark was owned by Somnus.

Dr. Madani purchased SOMNOPLASTY goods from Somnus and performed the SOMNOPLASTY procedure on his patients.

Dr. Madani uses his www.snorenet.com website to promote his experience in performing the SOMNOPLASTY procedure 1.

Under Section B, at page 7, Somnus avers that Dr. Madani maintains the registration in bad faith, stating:

Dr. Madani renewed and continues to maintain the domain name registration "despite having been contacted by Somnus on several occasions."

Copies of Somnus’s attorneys’ letters to Dr. Madani or his attorney, Douglas L. Dolfman, Esq., appear at Annexes H (August 25, 1999), I (November 30, 1999), and J (January 18, 2000).

The August 25, 1999 letter (Annex H) states inter alia:

"Since receiving complaints fom [sic] our client we understand you have deactivated your domain site utilizing the service mark SOMNOPLASTY. ... we ask on behalf of our client that you execute the name change agreement previously supplied to you ... ."

The November 30, 1999 letter (Annex I) refers to other correspondence and states inter alia:

"While Dr. Madani has deactivated the domain name ‘somnoplasty.com,’ Dr. Madani has demanded (see attached letter dated October 11, 1999 [at Annex I and Annex K]) that Somnus pay him $100,000 for the execution of a name change agreement for the domain name. ... we expect that Dr. Madani will respect Somnus’ position in this regard, and act in an honorable and professional way by executing the name change agreement, without extorting payment from Somnus."

In Section C, at pages 8 - 11, Somnus avers that Dr. Madani used the domain name in bad faith. In sum, these averments are:

In Section C.1. -- In his letter of October 11, 1999 to Somnus’s counsel, Dr. Madani "demanded" a payment of $100,000 for the transfer of the domain name registration (Annex K; also Annex I) 2. Somnus cites authority allegedly holding this activity unlawful. Dr. Madani’s demand amounts to extortion and is "in excess of [his] documented out-of-pocket cost directly related to the domain name," citing Paragraph 4.b.i. of the Policy.

In Section C.2. -- Dr. Madani’s use of the domain name in connection with an active website created a likelihood of confusion. Dr. Madani’s active website at www.somnoplasty.com created a likelihood of confusion with respect to source, sponsorship, affiliation or endorsement of the website. Consumers seeking information about SOMNOPLASTY goods and services provided by Somnus were likely to assume the Internet location would be at www.somnoplasty.com. Even if Dr. Madani were to argue that the website promoted his clinic, "initial interest" confusion was likely. The consumer may have decided to try Dr. Madani’s services or may have believed that Dr. Madani and Somnus were somehow related.

In Section C.3. -- Somnus avers Dr. Madani maintains the domain name in connection with an inactive website "primarily to disrupt the business of a competitor." Somnus asserts (a) Dr. Madani "cannot dispute" that consumers seeking information about SOMNOPLASTY are likely to seek information at "somnoplasty.com", (b) Dr. Madani is disrupting Somnus’s business activities by "blocking the logical means of accessing information about SOMNOPLASTY on the Internet," (c) consumer interest in the SOMNOPLASTY procedure and related goods is active, (d) consumer confusion and disruption of Somnus’s business are likely, (e) consumers may wrongly assume SOMNOPLASTY goods and services are no long offered, (e) consumers may mistakenly believe Somnus does not have an Internet presence, (f) Dr. Madani can reactivate the site, (g) NSI’s WHOIS shows that Dr. Madani owns the domain name, leading to the mistaken conclusion that Somnus is affiliated with Dr. Madani’s website, and (h) Dr. Madani’s refusal to transfer the domain name absent a $100,000 payment is a misappropriation of Somnus’s goodwill.

In Section D, at pages 11 - 12, Somnus avers that Dr. Madani is not acting in good faith, stating Dr. Madani (a) is not currently using the domain name in connection with a bona fide offering of goods or services, (b) has not been commonly known as "somnoplasty.com", (c) is not making a legitimate or fair use of the domain name as defined in Paragraph 4.c.iii. of the Policy, and (d) has breached his representations to NSI as to the domain name not infringing the rights of a third party. Somnus sums up as follows:

"Respondent’s activities cannot be characterized as good faith. It’s [sic] activities establish that Dr. Madani’s true intentions were to divert consumers to his clinic’s website and, subsequently, to extort money from Somnus in exchange for the domain name registration."

At paragraph 13, Somnus requests that the "somnoplasty.com" domain name be transferred to Somnus.

b. The Response

Dr. Madani has not filed a response, or any other communication with the Center.

5. Discussion and Findings

(i) The domain name in issue is identical or confusingly similar to the SOMNOPLASTY marks, and

(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.

Dr. Madani’s failure to respond in this proceeding does not relieve Somnus of its burden of proof as to each of these three factors.

Paragraph 4.b. of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4.a.(iii) above shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4.c. of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4.a.(ii) above.

Somnus urges both identity and confusing similarity. Somnus must prove that the domain name in issue is either identical to or confusingly similar to its marks. Somnus has done both.

On its face, the domain name in issue is for purposes of this dispute identical to Somnus’s SOMNOPLASTY marks.

In addition, as set out in the averments paraphrased and quoted in Section 4. above, Internet users interested in finding information about Somnus’s SOMNOPLASTY procedure and goods on the Internet are likely to go to the inactive "somonopasty.com" website and be confused as to whether or not Somnus continues to offer such services and goods or has an Internet presence. There appears to be no question that Dr. Madani offers the same kinds of procedures as Somnus under its SOMNOPLASTY marks 3. Here, considerations of safety with respect to the medical procedures involved heighten the concerns as to confusion.

Thus, Somnus has proved both identity and confusing similarity.

On this record, it is clear that Dr. Madani currently has no rights or legitimate interests in the domain name in issue.

(1) On October 11, 1999, Dr. Madani advised Somnus’s counsel that "on August 24, 1999, we discontinued the use of the domain name somnoplasty.com." Even if he were to argue that he had rights or legitimate interests at one time, in light of his discontinuing use of the domain name, Dr. Madani no longer has any rights or legitimate interests in the domain name.

(4) In the same letter, Dr. Madani wrote:

"In order to execute the name change agreement, we request payment of $100,000 to cover the expenses we incurred for promoting Somnoplasty and Somnus Medical Technologies."

Dr. Madani’s October 11, 1999 letter and his conduct as averred by Somnus are inconsistent with Dr. Madani’s having rights in the domain name or a legitimate interest in using the domain name as an active website to provide goods and services in commerce. On the other hand, his letter and his conduct are consistent with Dr. Madani’s intending to maintain the registration of the domain name in his name solely for the purpose of extracting an exorbitant payment from Somnus far in excess of Dr. Madani’s out-of-pocket costs in obtaining and maintaining his NSI registration.

Registration and use of the domain names in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence. On this record, Dr. Madani’s apparent knowledge of Somnus’s service marks before seeking registration of the domain name, his discontinuing use of the website, his maintaining the NSI registration, and his requesting $100,000 from Somnus in order to effect transfer of the registration to Somnus all point to Dr. Madani’s bad faith in maintaining the registration and in using the registration.

Dr. Madani has (i) maintained the domain name primarily for the purpose of selling it to Somnus for an amount of money in excess of his out-of-pocket costs directly related to the domain name, (ii) prevented Somnus from reflecting its marks in a corresponding domain name, as evidenced by Dr. Madani’s refusal to transfer the domain name to Somnus unless he receives an exorbitant sum (Annexes I and K) and his counsel’s apparent unwillingness since January 2000 to communicate with Somnus’s counsel (Annex J), (iii) apparently intended to disrupt Somnus’s business, and (iv) apparently intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Somnus marks. Each of these inferences is properly drawn from the facts pleaded by Somnus.

Somnus’s averments suggest strongly that if Dr. Madani had responded he would have failed to prove any of the three circumstances set out in Paragraph 4.c. of the Policy, viz.:

(i) before any notice to Dr. Madani of the dispute, his use of or preparations to use the domain name were in connection with a bona fide offering of goods or services;

(ii) Dr. Madani or a related entity has been commonly known by the domain name; and

(iii) Dr. Madani is making 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."

It appears that the first of these three factors is the only factor upon which there may be doubt. However, notwithstanding that Dr. Madani might have argued that his use or preparations to use prior to notice from Somnus were in connection with a bona fide offering of services, his statements and conduct after such notice belie any continued good faith activities. Discontinuing use of the website and requesting $100,000 for transfer of the registration of the domain name are evidence of a lack of good faith.

In light of the foregoing, the Panel decides that (a) Dr. Madani has received proper notices and copies of the complaint plus proper notices of activities in this proceeding and the consequences of default, (b) the domain name registered by Dr. Madani is both identical to and confusingly similar to Somnus’s SOMNOPLASTY marks, (c) Dr. Madani has no rights or legitimate interests in respect of the domain name, and (d) the domain name in issue has been registered and is being used in bad faith by Dr. Madani.

Accordingly, the Panel requires that the registration of the "somnoplasty.com" domain name in issue be transferred to Somnus.

David W. Plant
Presiding Panelist

Thomas Creel Edward Poplawski
Panelists

Dated: July 3, 2000

1. A copy of a printout from the www. snorenet.com website appears at Annex B.

2. Dr. Madani’s October 11, 1999 letter states in part:

"... after the trademark registration of Somnus and Somnoplasty was approved on August 24, 1999, we discontinued the use of the domain name somnoplasty.com.

* * *

"In order to execute the name change agreement, we request payment of $100,000 to cover the expenses we incurred for promoting Somnoplasty and Somnus Medical Technologies."

3. At his www.snorenet.com website (Annex B), Dr. Madani states:

"He now offers yet another revolutionary approach to correct chronic nasal congestion and snoring using SomnoplastyÔ/_ ... ."