Dr. Trang Nguyen v. Michelle Hedgecock
Claim Number: FA2004001894230
Complainant is Dr. Trang Nguyen (“Complainant”), represented by Scott L. Harper of Harper Bates & Champion, LLP, US. Respondent is Michelle Hedgecock (“Respondent”), represented by Cheryl L. Hodgson of Holmes Weinberg, PC, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <luxedentalaustin.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2020; the Forum received payment on April 29, 2020.
On May 1, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <luxedentalaustin.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@luxedentalaustin.com. Also on May 5, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 8, 2020.
On June 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Preliminary Issue: Deficient Response
Respondent submitted a response on June 5, 2020. This Response was received with a file size over the 10MB limit and with a total file size over the 50MB limit, therefore the Forum does not consider this Response to be in compliance with ICANN Rule 5 and the Annex to the Supplemental Rules. The Panel has the discretion to consider or deny the Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”). The Panel elects to consider as much of the Response as complies with the Policy and the Rules, and will not consider anything submitted beyond the prescribed file sizes.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <luxedentalaustin.com> domain name is confusingly similar to Complainant’s LUXE DENTAL mark.
2. Respondent does not have any rights or legitimate interests in the <luxedentalaustin.com> domain name.
3. Respondent registered and uses the <luxedentalaustin.com> domain name in bad faith.
B. Respondent
1. Complainant does not have trademark rights in the LUXE DENTAL mark.
2. Respondent has rights in the <luxedentalaustin.com> domain name because it used the domain name for a bona fide offering of dental services for nearly 19 months prior to notice of the Complaint.
3. Respondent did not know of Complainant’s rights in the LUXE DENTAL mark prior to notice of the Complaint, and thus did not register the <luxedentalaustin.com> domain name in bad faith.
Complainant owns and operates a dental practice in Dallas, Texas under the mark LUXE DENTAL. Complainant holds a registration for the LUXE DENTAL design mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,837,320, registered Aug. 20, 2019), filed on March 19, 2018, showing a First Use Date of April 24, 2011. Complainant operates business using the <luxedentaldallas.com> domain name, which was registered on December 7, 2010.
Respondent registered the <luxedentalaustin.com> domain name on November 6, 2018, and uses it to offer dental services in Austin, Texas.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has established rights in the LUXE DENTAL design mark for the purposes of Policy ¶ 4(a)(i) based on registration of the mark with the USPTO (Registration No. 5,837,320, registered Aug. 20, 2019). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). The Panel notes that Complainant does not hold a registration for the word mark LUXE DENTAL.
The Panel also notes that Respondent has initiated a Petition to Cancel Complainant’s Registration No. 5,837,320, and that the USPTO Trademark and Trial and Appeal Board is indeed the correct forum to seek that determination. For the purposes of Policy ¶ 4(a)(i), the Panel accepts Complainant’s present Registration of the LUXE DENTAL design mark as valid.
Complainant asserts common law rights in the LUXE DENTAL mark dating back to April of 2011. The Panel notes that the First Use Date shown on Registration No. 5,837,320 for the LUXE DENTAL design mark is April 24, 2011. Complainant asserts that it has devoted considerable efforts to advertise and promote services under the LUXE DENTAL mark dating back to April 2011. Complainant provides a screenshot of its website at the <luxedentaldallas.com> domain name for Complainant’s business, and the WHOIS information for the domain name, showing creation on December 7, 2010. The Panel finds that Complainant has established continuous use of the LUXE DENTAL mark in connection with its Dallas, Texas dental practice, by maintaining a website since 2010, and by demonstrating to the USPTO that its use in commerce of the design mark including the words LUXE DENTAL began in 2011. Thus, the Panel finds that Complainant has common law rights in the LUXE DENTAL mark, dating back to at least April of 2011, for the purposes of Policy ¶ 4(a)(i). See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Respondent’s <luxedentalaustin.com> domain name incorporates the LUXE DENTAL mark, and adds the descriptive geographic term “austin” and the “.com” gTLD. The addition of a geographic indicator and a gTLD to a fully incorporated mark does not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s <luxedentalaustin.com> domain name is confusingly similar to Complainant’s LUXE DENTAL mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), as it has here, the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the the <luxedentalaustin.com> domain name because it fails to use it for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant asserts that Respondent uses the disputed domain name to offer dental services in competition with Complainant. Using a disputed domain name to offer goods or services in competition with a complainant may not be a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant provides a screenshot of the website at <luxedentalaustin.com> which offers dental services in competition with Complainant. Respondent does not deny that it offers dental services in Texas, just as Complainant does, albeit in a different city. Rather, Respondent claims that it has a right to offer dental services in Texas using the common descriptor “luxe,” and that it only advertises locally.
First, the Panel finds that the word “luxe” is not descriptive of dental services and, indeed, in Respondent’s own words, the term invokes an additional “spa-like” connotation not normally associated with dental services. Respondent states that it intended to offer other luxurious services, such as facials and massages, in connection with its dental practice. Respondent’s website does not, in fact, appear to offer facials or massages, making it less likely that Respondent chose the domain name for its descriptive value rather than its similarity to Complainant’s name. Second, although Respondent claims that it did not advertise outside its local area, it does maintain a website using the words LUXE DENTAL, which reaches well beyond its local area and could easily be confused with Complainant’s services in a nearby Texas city. The Panel also notes that Respondent chose to use the same wording and the same spelling in launching its website as Complainant uses, namely, the specific spelling of “luxe” followed by the single word “dental” and a geographic indicator. As Respondent points out, there are many other spellings of references to luxurious, and the Panel notes that there are infinite other ways to denote a luxurious dental practice that do not exactly copy complainant’s configuration. The Panel finds that it is very likely that consumers would assume that Respondent’s services are connected to Complainant’s services, which are offered under the LUXE DENTAL mark, protected through Complainant’s Registration for the design mark and through its continuous commercial use since at least 2011.
The Panel therefore finds that Respondent is using the disputed domain name to compete with Complainant by offering dental services in Texas, and thus is not using the disputed domain name for a bona fide offering of goods or services or under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). The Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name containing Complainant’s mark for use in a directly competing field. See Chevron Intellectual Property LLC v. CHLEO TEMPLE, FA 1731844 (Forum June 16, 2017) (acknowledging the likelihood of a respondent’s lack of legitimate interests in a disputed domain name when the name incorporates a mark belonging to another entity).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and uses the <luxedentalaustin.com> domain name in bad faith as Respondent knew or should have known of Complainant’s trademark registration when registering the disputed domain name because Complainant had been operating in the same industry under the mark for seven years prior to Respondent’s registration of the disputed domain name. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”).
The Panel notes Respondent’s argument that it did not know of Complainant’s rights in the LUXE DENTAL mark, and that a search would not have revealed the registration of Complainant’s LUXE DENTAL mark, because it issued after Respondent registered the disputed domain name. The Panel, however, notes that Complainant’s trademark application for the LUXE DENTAL mark is dated March 19, 2018, almost 8 months before Respondent registered the disputed domain name, which a search would have revealed. The Panel discounts Respondent’s argument that Complainant only advertised locally, as Complainant advertised online for at least 7 years prior to Respondent’s registration of the disputed domain name, in the same industry, in a nearby Texas city. The Panel finds it inconceivable that Respondent did not know of its nearby competitor in the same field using the same LUXE DENTAL mark for 7 years, and thus finds that Respondent had actual knowledge of Complainant’s rights in the LUXE DENTAL mark when it registered the disputed domain name, demonstrating bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <luxedentalaustin.com> domain name in bad faith, as Respondent disrupts Complainant’s business by using the disputed domain name to offer competing dental services in Texas. The use of a domain name to offer goods or services in direct competition with a complainant can disrupt a complainant’s business and show bad faith registration and use under Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (finding that the respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). The Panel finds that Respondent’s registration and use of the disputed domain name to compete with Complainant constitutes bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent registered and uses the <luxedentalaustin.com> domain name in bad faith to attract Internet users to Respondent’s webpage and falsely suggest affiliation with Complainant, for its own commercial gain. The use of a domain name to give a false impression of association or affiliation with a complainant can evince bad faith registration and use under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel again notes the particular configuration of <luxedentalaustin.com>, very similar to the Complainant’s configuration of its <luxedentaldallas.com> domain name, with both resolving websites offering a similar list of services. The Panel therefore finds that Respondent registered and uses the disputed domain name to attract customers who mistakenly believe there is an affiliation with Complainant, in bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <luxedentalaustin.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 11, 2020
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