Lloyd S. Meisels, P.A., d/b/a
Claim Number: FA0710001091880
PARTIES
Complainant is Lloyd S. Meisels, P.A., d/b/a
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coralspringsanimalhospital.com>,
registered with Compana, LLC.
PANEL
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.
Timothy D. O’Leary as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On October 16, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <coralspringsanimalhospital.com>
domain name is registered with Compana, LLC
and that the Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On October 17, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of November 6, 2007 by which Respondent
could file a Response to the Complaint, was transmitted to Respondent via
e-mail, post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to
postmaster@coralspringsanimalhospital.com
by e-mail.
A timely Response was received and determined to be complete on
On
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
I. COMPLAINANT’S CONTENTIONS
A. Identical or
Confusingly Similar
Complainant is a nationally recognized and highly regarded provider of
veterinary medical and related animal care services. Complainant owns common law service mark
rights to its
In addition to Complainant’s common law rights, Complainant advises
that it has applied for federal registration of the
Since 1977, Complainant points out that it has used the CORAL SPRINGS
ANIMAL HOSPITAL mark to advertise its general veterinary practice which today
consists of boarding services and a multi-specialty referral and
emergency/critical care animal hospital.
Since its inception, the
Complainant further states that it treats more than 35,000 companion animals
at its facility per year.
Complainant has cared for nearly 750,000 animals since opening its doors
for business. Consequently, it has
received hundred of testimonials from pet owners from across the
In addition to acting as lecturers, Complainant states that its veterinary
specialists have written numerous articles on issues relating to the veterinary
practice which have been published by the American Veterinary Medical
Association (“AVMA”) Journal of Veterinary Research, Florida Veterinary Medical
Association (“FVMA”) Advocate, the Broward County Veterinary Medical
Association (“BCVMA”), South Florida Veterinary Medical Association (“SFVMA”)
and Palm Beach Veterinary Medical Association (“PBVMA”) journals. Articles are published by these professional
associations only after satisfying an exacting level of intellectual criteria,
and are distributed to veterinary science professionals nationally.
The trademark on which this Complaint is based is
Complainant asserts that Respondent’s domain name <coralspringsanimalhospital.com>
incorporates Complainant’s CORAL SPRINGS ANIMAL HOSPITAL trademark and trade
name in its entirety, adds the generic top level domain (“gTLD”) “.com” and
removes the spaces between the words.
The addition of the gTLD to an otherwise identical mark fails to
distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). Respondent’s
domain name is identical to Complainant’s
B. Rights or
Legitimate Interest
Complainant contends that Respondent has no proprietary rights or
legitimate interest in Complainant’s mark or the domain name <coralspringsanimalhospital.com> because
there is no indication that Respondent has used or is making preparation to use
the domain name or a name corresponding to the domain name in connection with a
bona fide offering of goods or
services. A review of Respondent’s
website demonstrates that Respondent is not currently using the domain name in
connection with a bona fide offering
of goods or services. Instead,
Respondent’ website is a host site which contains hyperlinks to various
third-party websites offering pet-related services.
Complainant argues that Respondent has no proprietary rights or
legitimate interest in Complainant’s mark or the <coralspringsanimalhospital.com> domain
name because Respondent is not commonly known by that name. The WHOIS information for the disputes domain
name identifies the registrant as “Texas International Property Associates,”
demonstrating that Respondent is not commonly known by the name “
Complainant maintains that Respondent has no proprietary rights or
legitimate interest in Complainant’s mark or the <coralspringsanimalhospital.com> domain
name because it is not making any legitimate non-commercial or fair use of the
name without intent for commercial gain.
Respondent’s website is a host site which contains hyperlinks to various
third-party websites offering pet-related services presumably to generally
advertising revenues.
Complainant contends that on the left hand side of the website there
are links to various “Related Searches” including one for “
Complainant further advises that some of the individual categories on
Respondent’s website, including the categories identified with Complainant’s
mark, identify such competing businesses as “
C.
Registration and Use in Bad Faith.
In accordance with Rules 3(b)(ix)(3), the
domain name should be considered to have been registered and used in bad faith
by Respondent, Complainant argues, because by using the disputes domain name <coralspringsanimalhospital.com>,
which is identical to Complainant’s trademark, Respondent is diverting users
from seeking information about Complainant to Respondent ‘s websites where, as
a result of pop-yo advertisements and/or “click-through-fees,” Respondent
obtains commercial benefits. Respondent
has intentionally attempted to attract, for commercial gain, Internet uses to
Respondent’s website by creating a likelihood of confusion with the Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s
website or location. Such use is
evidence of bad faith and registration.
Complainant states that Respondent appears to have previously engaged
in a pattern of such bad faith conduct.
A search of domain name dispute decisions before the National
Arbitration Forum alone revealed that to have been involved in at least 33
proceedings; 31 of which required Respondent to transfer the domain name. The fact that Respondent has developed a
pattern of registering domain names incorporating trademark owners’ marks in
order to trade on the trademark owners’ goodwill is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(ii).
II. RESPONDENT’S CONTENTIONS
A. Identical or
Confusingly Similar
Respondent contends that Complainant has no registered trademark and
has failed to show any rights to a common law right. The Complainant makes much of its use of its “mark”
in the various domains it owns. A quick
survey of those domains listed in Annex C to the Complaint shows that all but
one were registered on May 8, 2007, quite likely in preparation for this naked
grab at Respondent’s legitimate use of the disputed domain name.
Respondent argues that Complainant has failed to show rights to any
mark which existed at the time the disputed domain names were registered or
that now exist. It is clear that
Complainant only possesses one pending trademark application and it is well
settled that pending trademark applications confer no rights whatsoever in
terms of this element of the Policy.
Complainant disingenuously notes that “the USPTO has approved the mark
for publication.” There is no legal
significance to this and its inclusion can only be to mislead. Once the application is published for
opposition, any party, including Respondent, may file an objection to the
application.
Respondent asserts that absent a federally registered mark then, a
Complainant a must provide evidence that it has common law trademark rights in
order to prevail under this element of the Policy –as prior panels have
recognized “common law” trademark rights as appropriate for protection under
the Policy only if the complainant can establish that it has done business
using the name in question in a sufficient manner to cause a secondary meaning
identifiable to complainant’s goods or services.
Respondent argues that under
Respondent further argues that curiously and strikingly absent in the
numerous annexes is any evidence of marketing to the buyer class, in this case
the general public. As discussed above,
Complainant’s staff has given lectures to other veterinarians, published
articles in publications read by other veterinarians, and advertised in
newsletters read by other veterinarians.
There is no evidence in the Complaint of any kin, other than the
self-serving and conclusory declaration of Lloyd S. Meisels, that the
Complainant ha targeted the buying public.
While Respondent has not doubt that Complainant has attempted, either
through advertising or other means, to draw customers in to is business, it has
not provided any such evidence and thus its claim to any type of secondary
meaning having attached to its trade name must fail.
B. Rights or
Legitimate Interest
Respondent contends that it has used the disputed domain to provide a
web portal which provides users with a search function as well as ads provided
through the Google Adsense program.
Complainants were, like all others in the
In any event, Respondent contends the links in question are provided pursuant
to Google’s terms and are triggered by search requests entered by computer
users. Furthermore, Respondent has no
control over what terms advertisers bid on at Google and what terms appear on
its website. In any event, even if
Complainant’s claims were true -- which they are not --, panels have recognized
that the domain name holder is not responsible for the potentially offending
content where they have contracts with third parties, such as Google or Yahoo,
that control that content.
Respondent maintains that it may fairly use descriptive or generic
terms or acronyms of such as a commercial domain name, regardless of whether
they are federally-registered. The fact
that advertising revenues may be generated by Respondent’s activity
demonstrates a legitimate interest.
Respondent maintains that it has legitimate interests in the domain name
and Complainant has failed to meet its burden under Paragraph 4(a)(ii) of the ICANN Policy.
C. Registration
and Use in Bad Faith.
Respondent asserts that the Complaint contains no evidence but rather
allegations of counsel that bad faith must exist because bad faith must
exist. There has been no showing here
that consumers have been or are likely to be confused or likely to associate
Respondent’s services with Complainant other than mere unsubstantiated
allegations.
Respondent argues there has been no showing of any inherent
distinctiveness nor has Complainant presented evidence of fame either in or
outside of its small town in Florida nor has the Complainant produced any
evidence that a company in Texas had any reason to know of a small veterinary
clinic in southern Florida prior to the registration of the disputed domain
names. Were Respondent located in
Respondent further argues that Complainant must proffer evidence that
demonstrates that Respondent has specifically intended to confuse consumers
seeking out Complainant. There is no
such proof here. In this case, the
Respondent in
Complainant argues that Respondent had been involved in a number of UDRP
decisions in this year. Respondent is
the registrant of thousands of domain names, which consist of electronically
registered generic words, such as <coolwritings.com>,
<topairguns.com>, <indianloves.com>, <dailychampion.com>,
<mastermasonstore.com>, and <kuicymiami.com>, etc. Respondent argues that registering such terms
to which no other party can claim exclusive use is a legitimate business and
done in good faith. Merely comparing the
number of complaints without considering the broader context is misleading. Respondent did not register the disputed
domain names to sell to Complainant or any other party nor has there been any
such allegation by Complainant.
III. COMPLAINANT’S ADDITIONAL
SUBMISSION
A. Identical or
Confusingly Similar
Complainant begins
by stating that it provided the sworn Declaration of its founder, Dr. Lloyd S.
Meisels, as well as a slew of documentary evidence supporting its position. On the other hand, Respondent has failed to
provide a single shred of evidence contradicting Complainant’s allegations and
evidence or supporting Respondent’s own contentions. Instead, Respondent cites to a barrage of UDRP
decisions, absent any analysis of their applicability to this proceeding, in an
effort to divert the Panel’s attention from the undisputed facts.
Complainant contends that at common
law, ownership of a trademark is obtained by actual use of the mark to identify
goods or services of one seller from those offered by others. Contrary to Respondent’s position,
Complainant has established its rights to the mark
Complainant agrees that several of these domain names were registered in 2007. However, contrary to Respondent’s unsupported statement, Complainant registered certain domain names in 2007 prior to Complainant’s first cease and desist letter to Respondent on July 3, 2007 so that Respondent, in retaliation to the letter, would be unable to register any additional domain names incorporating Complainant’s CORAL SPRINGS ANIMAL HOSPITAL mark.
Complainant further states that Respondent’s
<coralspringsanimalhospital.com> was
registered in June 21, 2005. The
evidence attached to Complainant’s Complaint, including the Declaration of
Lloyd S. Meisels, demonstrates that Complainant has been conducting business
using the
Complainant
maintains that it was truthful in its allegation that the “USPTO has approved
the mark for publication.” At this
point, the application will be published for opposition on
Complainant argues
that by its Complaint and the evidence attached thereto, it goes beyond making “mere
assertions” and has overwhelming supported its allegations of ownership in the
Complainant asserts that Respondent
appears to confuse two concepts in its argument: “fame” and “secondary meaning.” Complainant is not required to show fame in
order to establish trademark rights. Fame
is related to a cause of action in the
Complainant states that Respondent’s arguments that there is no evidence that “anyone actually read” certain articles, or that any customers attended the lectures of Complainant’s veterinary physicians, or that Complainant’s brochures were seen or read by anyone are unique but clearly desperate attempts to misguide this Panel’s attention. Respondent appears to argue that because Complainant has not introduced specific evidence of the audience for certain magazine articles, lectures, brochures or Complainant’s website, which all promote Complainant’s CORAL SPRINGS ANIMAL HOSPITAL mark, then somehow, Complainant has not proved common law rights to the mark. Certainly, Respondent is not suggesting that Complainant must prove actual readership of the article?
Respondent claims that there “is no evidence in the Complaint of any kind...that Complainant has targeted the buying public.” However, Complainant points out Respondent conveniently overlooks such evidence as Dr. Meisel’s sworn declaration, articles published about Complainant, brochures, and Complainant’s website; all of which support Complainant’s contention that it advertises and promotes the CORAL SPRINGS ANIMAL HOSPITAL mark to the consuming public of veterinary hospital services.
B. Rights or
Legitimate Interest
Complainant
contends that Respondent’s use of the disputed domain name to redirect Internet
users to websites unrelated to Complainant’s mark, websites where the
respondent presumably receives a referral fee for each misdirected Internet
user, is not a bona fide offering of goods or services as contemplated by the
Policy. Respondent is also not commonly
known by “
Complainant points
out that since Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the disputed domain name, “it is incumbent
on the Respondent to come forward with concrete evidence rebutting this
assertion because this information is ‘uniquely within the knowledge and
control of Respondent.’” However,
Respondent introduces no evidence and has made no allegations that its use of
the dispute domain name constitutes a bona
fide offering of goods or services as contemplated by the Policy. Instead, Respondent claims that it can “fairly
use descriptive or generic terms or acronyms of such as a commercial domain
name regardless of whether they are federally registered.” Respondent goes on to provide a litany of
cases supporting the position that registration of generic and or descriptive
terms can be registered on a first-come, first-serve basis. However, Respondent has introduced no evidence
that
C. Registration
and Use in Bad Faith.
In its Complaint initiating this action, Complainant introduced evidence that Respondent registered and used the disputed domain name in bad faith by wholly incorporating Complainant’s entire mark into the disputed domain name to attract, for commercial gain, Internet users to Respondent’s website and creating a likelihood of confusion with Complainant’s mark. In addition, Complainant introduced evidence that Respondent is no stranger to such allegations or similar proceedings and identified 33 decisions involving Respondent; 31 of which resulted in the transfer of the disputed domain name(s). Respondent offers no evidence whatsoever to contradict Complainant’s allegations.
Complainant
points out Respondent has introduced absolutely no evidence that any
party, other than Complainant, uses the mark or name
Complainant notes that it has
introduced substantive evidence demonstrating that Complainant has used the
Complainant states that its mark is
not generic or descriptive to identify veterinary services and Respondent has
introduced no evidence of third party use. Respondent’s website is a host site
which contains hyperlinks to third-party websites offering pet-related services
and which uses the mark
Respondent cites to a number of other cases to support its position that absent specific intent to confuse Complainant’s customers, there is no bad faith use and registration. Respondent asserts the incorrect standard. According to Paragraph 4(b)(iv) of the Policy, bad faith registration and use can be shown by “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” It is not whether Respondent intended to create a likelihood of confusion, as Respondent would have this Panel believe, that is at issue but whether Respondent intended to attract Internet users to its website by creating a likelihood of confusion. As discussed in detail herein, the evidence of record establishes that Respondent intended to attract users to its website by incorporating Complainant’s mark into its domain name to attract Internet users. Respondent’s own past conduct, which Complainant appropriately introduced into the record, further establishes this fact.
Under Paragraph 4(b)(ii) of the Policy, it is evidence of bad faith if the respondent has registered a domain name in order to prevent the trademark owner from reflecting its mark in a corresponding domain name and provided that the respondent engaged in a pattern of such conduct. Here, Respondent appears to argue that because it has registered thousands of domain names, notably consisting of generic words unlike here, which have not been the subject of domain name proceedings then its conduct should be deemed in good faith. This logic is unsound and baseless. Complainant contends that the fact that Respondent has not been involved in a domain name proceeding in connection with every domain name it owns does not somehow disprove bad faith.
FINDINGS
I find that the disputed domain name is identical or confusingly similar to Complainant’s mark; that Respondent lacks rights or legitimate interest in respect of the disputed domain name; and that the disputed domain name was registered and being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Identical or
Confusingly Similar: Policy ¶ 4(a)(i).
Finding for Complainant
I find the issues on this element in favor of Complainant.
Complainant asserts rights in the
Complainant states that it has
continuously conducted business under the
I find that the <coralspringsanimalhospital.com> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s mark in its entirety, merely adding a generic top-level domain to the end of the mark. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the “addition of .com is not a distinguishing difference”); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant’s registered trademark GAY GAMES).
Rights and Legitimate Interests:
Policy ¶ 4(a)(ii).
Finding for
Complainant
I find the issues on this element in favor of Complainant.
I am reminded that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Respondent’s WHOIS information
identifies Respondent as “Texas International Property Associates.” Additionally, there is no evidence in the
record to indicate that Complainant has authorized Respondent to use its mark
in any way. Accordingly, I find that
Respondent is not commonly known by the <coralspringsanimalhospital.com>
domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the
respondent was not commonly known by the mark and never applied for a license
or permission from the complainant to use the trademarked name).
Complainant has alleged, and
Respondent admits, that the <coralspringsanimalhospital.com>
domain name is being used to operate a website that displays
hyperlinks to various third-party websites, some of which are in direct
competition with Complainant. Such use
is presumably for Respondent’s own commercial benefit through the accrual of
click-through fees. While Respondent
contends that it does not have any control over what appears on its website
that resolves from the disputed domain name, Complainant asserts in its
Additional Submission that Respondent introduces no evidence to support this
contention. I find that such use is
neither a bona fide offering of goods
or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003) (“Respondent’s
demonstrated intent to divert Internet users seeking Complainant’s website to a
website of Respondent and for Respondent’s benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is
not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp.
v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services).
Registration and
Use in Bad Faith: Policy ¶ 4(a)(iii).
Finding for
Complainant
I find the issues on this element in favor of
Complainant.
Complainant provides evidence
demonstrating that Respondent has been the respondent in more than thirty
previous UDRP disputes. In the vast
majority of those disputes, the domain name held by Respondent was transferred
from Respondent to the respective complainants in those cases. See Am. Airlines, Inc. v.
The website that resolves from the <coralspringsanimalhospital.com>
domain name displays a variety of hyperlinks to third-party websites, some of
which are in direct competition with Complainant’s goods and services. I find that such use of the disputed domain
name constitutes a disruption of Complainant’s business and is evidence of bad
faith registration and use under Policy ¶ 4(b)(iii). See
EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the
respondent registered and used the domain name <eebay.com> in bad faith
where the respondent has used the domain name to promote competing auction
sites); see also Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
I find that Respondent is commercially benefiting from its use of the <coralspringsanimalhospital.com> domain name through the earning of click-through fees. I also determine that the disputed domain name is capable of creating a likelihood of confusion as to Complainant’s source, sponsorship, affiliation or endorsement of the disputed domain name and corresponding website. I find bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coralspringsanimalhospital.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Timothy D. O’Leary (Ret.), Panelist
Dated: November 28, 2007
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