Western New York Immediate Medical Care, LLC v. MOhammEd Mzml / KenMore
Claim Number: FA2110001969208
Complainant is Western New York Immediate Medical Care, LLC (“Complainant”), represented by Linda A. Friedman of Bradley Arant Boult Cummings LLP, Alabama, USA. Respondent is MOhammEd Mzml / KenMore (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kenmoreimmediatecare.com> (“Domain Name”), registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 15, 2021; the Forum received payment on October 15, 2021.
On October 18, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kenmoreimmediatecare.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 October 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 2021 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@kenmoreimmediatecare.com. Also on October 20, 2021, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates a number of medical clinics operating in the Western New York area, including Buffalo. Complainant has rights in the IMMEDIATE CARE mark through its registration of a mark consisting of the words IMMEDIATE CARE and a handless clock device with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 3,508,039, registered Sep. 30, 2008). Respondent’s <kenmoreimmeidatecare.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the word portion of the IMMEDIATE CARE mark in its entirety and adds the geographic term “Kenmore” and the “.com” generic top-level domain (‘gTLD”).
Respondent lacks rights and legitimate interests in the <kenmoreimmediatecare.com> domain name. Respondent is not commonly known by the Domain Name nor has Complainant authorized or licensed Respondent to use its IMMEDIATE CARE mark. Respondent does not use the Domain Name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to divert Internet users seeking Complainant’s services to the Domain Name’s resolving website, where Respondent offers services in direct competition with Complainant, in the same geographical location (the greater Buffalo area).
Respondent registered and uses the <kenmoreimmediatecare.com> domain name in bad faith. Respondent attracts Internet users for commercial gain to the Domain Name’s resolving website. Respondent had actual knowledge of Complainant’s rights in the IMMEDIATE CARE mark given the significant reputation and use of the IMMEDIATE CARE mark in the Western New York area by the Complainant over a number of years.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the IMMEDIATE CARE mark. The Domain Name is confusingly similar to Complainant’s IMMEDIATE CARE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the IMMEDIATE CARE mark through its registration of the mark with the USPTO (e.g. Reg. 3,508,039, registered Sep. 30, 2008). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the <kenmoreimmediatecare.com> domain name is confusingly similar to the IMMEDIATE CARE mark as it adds the geographic term “kenmore” and the “.com” gTLD to the almost wholly incorporated IMMEDIATE CARE mark (the Domain Name does not incorporate the device portion of the IMMEDIATE CARE mark as that is not possible under the domain name system). Per Policy ¶ 4(a)(i), minor changes to a mark such as addition of a geographic term and a gTLD are insufficient to distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”); see also 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 Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the IMMEDIATE CARE mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “MOhammEd Mzml / KenMore” as registrant of record. The Panel notes that there is no evidence from the Respondent that it is commonly known as KenMore and in any event such a situation would be unlikely given that Kenmore is a geographic term for a settlement in the greater Buffalo area. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Respondent uses the Domain Name for a website where it offers medical clinic services in direct competition with Complainant’s medical services, in the same geographic area (greater Buffalo). The use of a confusingly similar domain name to resolve to a webpage that offers goods or services that compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). See also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). See also Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, March 18, 2020, Respondent had actual knowledge of Complainant’s IMMEDIATE CARE mark since the Complainant has used the IMMEDIATE CARE mark since 2004 for medical clinic services in the Western New York area (which are the services that Respondent purports to offer from the website at the Domain Name). Furthermore Complainant provides uncontradicted evidence that Respondent had earlier registered domain names corresponding to the descriptive terms “Kenmore Urgent Care” but deliberately chose to register and use a domain name that corresponded with Complainant’s IMMEDIATE CARE mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s IMMEDIATE CARE Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website offering medical services in the greater Buffalo area in direct competition with Complainant. The Panel notes the uncontradicted evidence in the Complaint that suggests that Respondent originally planned to supply medical services under the name “Kenmore Urgent Care” and then deliberately pivoted to using a Domain Name that would provide a false impression that Respondent was affiliated with Complainant. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
The Panel finds 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 <kenmoreimmediatecare.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: November 15, 2021
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