Somnus Medical Technologies v. Dr. Mansoor Madani

Somnus Medical Technologies, Inc.
v.
Dr. Mansoor Madani

National Arbitration and Mediation Center
Administrative Panel Decision

Case No.: D2000-0244
Commenced: 10 April, 2000
Judgment: 3 July, 2000

Presiding Panelist: David W. Plant
Panelists: Thomas Creel, Edward Poplawski

Domain name - Domain Name Dispute Resolution Policy - Service mark - Trademark - No rights or legitimate interests in domain name - Identical - Confusingly similar - Extortion - In excess of out-of-pocket costs - Likelihood of confusion - “Initial Interest” confusion - Consumer confusion - Misappropriation of goodwill - bona fide offering of goods and services - bad faith use - bad faith registration.

Complainant is the owner of the U.S. service mark and trademark “SOMNOPLASTY” and uses the name in connection to the sale of medical services and devices relating to the treatment of sleep disorders. Respondent, a customer of Somnus, registered the domain name “SOMNOPLASTY.COM” and uses it to promote his services in performing the SOMNOPLASTY procedure. Although Respondent has de-activated use of the website, he has maintained the registration of the domain name.

Held, Name Transferred to Complainant.

It is clear that the domain name is identical to Somnus’s SOMNOPLASTY marks. The use of the service mark is sufficient to cause “initial interest” confusion - a process in which the website user looking for information on a subject, becomes confused about the source of the information. This confusion has also raised the panel’s concerns about the safety aspect of the medical procedures and the likelihood of confusion in consumers’ minds.

Having discontinued the use of the website, Respondent has no rights or legitimate interests in the said domain name. This is further demonstrated by his unwillingness to transfer the inactive domain name unless his demands for a payment that is in excess of his out-of-pocket costs, are met.

The conduct of Respondent also establishes bad faith use and registration of the domain name. Respondent was aware of Somnus’s service marks prior to the domain name registration. Clearly, his intention was to attract users to his website for commercial gain, thus disrupting Somnus’s business. Discontinuing use of the website and requesting payment for the transfer of the domain name registration point to a lack of good faith.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Rules for Uniform Domain Name Dispute Resolution Policy
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

Plant, Creel & Edwards, Panelists:-

THE PARTIES:

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").

DOMAIN NAME AND REGISTRAR:

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

PROCEDURAL HISTORY:

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. 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.

FACTUAL BACKGROUND- THE PARTIES’ CONTENTIONS:

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 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 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
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.

DISCUSSION AND FINDINGS:

Paragraph 4.a. of the Policy directs that Somnus must prove, with respect to the
domain name in issue, each of the following:

(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.

a. Identity or Confusing Similarity:
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.

b. Rights or Legitimate Interests:
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.

c. Bad Faith:
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.

d. Paragraph 4.c. Factors
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.

DECISION:

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.

Domain Name Transferred