Vein Clinics of America,
Inc. v. Demand Domains, Inc.
Claim Number: FA0710001094605
PARTIES
Complainant is Vein Clinics of America, Inc. (“Complainant”), represented by Jennifer
M. Mikulina, of McDermott Will & Emery LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <veinclinicsofamerica.com>, <vcaillinois.com>,
and <vcamaryland.com>,
registered with Enom, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 17, 2007; the
National Arbitration Forum received a hard copy of the Complaint on October 18, 2007.
On October 17, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <veinclinicsofamerica.com>, <vcaillinois.com>,
<vcamaryland.com>
domain names are registered with Enom, Inc.
and that the Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
Inc. 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 25, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 14, 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@veinclinicsofamerica.com, postmaster@vcaillinois.com, and postmaster@vcamaryland.com by e-mail.
A timely Response was received and determined to be complete on November 14, 2007.
On November 21, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Paul M. DeCicco as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends as follows:
Complainant owns a federally registered
servicemark for VEIN CLINICS OF AMERICA and Design (Reg. Nos. 3,072,943 and
3,127,877), and common law trademark rights in VEIN CLINICS OF AMERICA and VCA
(collectively, "Complainant's Marks").
Complainant has used the VEIN CLINICS OF AMERICA
and VCA service marks and trade names in connection with its treatment centers
since 1981 and has used the domain name <veinclinics.com> since March 25,
1997.
Complainant's Marks are famous for use in
connection with the promotion of Complainant's medical services.
As a result of this widespread, continuous, and
prominent use, Complainant's Marks have acquired significant goodwill, wide
public recognition, and national fame as a means by which the public identifies
Complainant's treatment centers and the origin of Complainant's medical
services.
The at-issue domain names incorporate and are
confusingly similar to Complainant's Marks and Complainant's own domain name,
which Complainant uses in connection with the legitimate promotion of services
offered under Complainant's Marks.
The at-issue domain names create a likelihood of
confusion with Complainant's Marks to the source, sponsorship, affiliation, or
endorsement of Respondent's web sites. Respondent's domain names are likely to
mislead and divert web users trying to locate legitimate information about
Complainant's business, its locations in
Respondent has no rights or legitimate interest
in the at-issue domain names.
Complainant has not consented to Respondent's use of the at-issue domain
names. Complainant's attorney contacted Respondent to request that Respondent
cease and desist from any and all use of the at-issue domain names, and to
transfer the at-issue domain names to Complainant. Complainant's counsel sent a
letter by email and regular mail to Respondent in September 2007 and received
no response.
Respondent is not using the at-issue domain names
in connection with a bona fide
offering of goods or services. Respondent is not commonly known by the at-issue
domain names, either as a business, individual, or other organization.
Respondent is not making a legitimate
non-commercial or fair use of the Domain Names. Respondent does not currently
have active web sites at any of the at-issue domain names. Respondent does not
have any rights or legitimate interests in the at-issue domain names.
The at-issue domain names were registered in bad
faith. By virtue of the September 2007 letter, Respondent is on notice of
Complainant's ownership of and rights in Complainant's Marks.
Moreover, the at-issue domain names are comprised
of the name and abbreviation of an existing nationally renowned vein treatment
center, indicating Respondent must have been aware or Complainant's company
when it registered the at-issue domain names. Although Respondent is aware of
the ownership of Complainant's Marks, and the fame of Complainant's Marks,
Respondent has taken no steps to cancel its registration or transfer the
at-issue domain names to Complainant.
Respondent's registration of the at-issue domain names without
authorization, and Respondent's lack of any response to Complainant's request
to transfer the at-issue domain names, demonstrates that Respondent has acted
in bad faith and has registered the at-issue domain names for purposes of
cybersquatting.
Respondent's registration of the at-issue domain
names dilutes Complainant's Marks by making it more difficult for web users to
locate Complainant's legitimate web site. By eroding the source-identification
function of Complainant's Marks in this way, Respondent's registration of the
Domain Name dilutes the distinctiveness of Complainant's Marks.
The fact that Respondent does not maintain active
web sites through the at-issue domain names does not preclude the finding that
Respondent registered the at-issue domain names in bad faith.
Complainant requests that <veinclinicsofamerica.com>,
<vcaillinois.com>, and <vcamaryland.com> be
transferred to Complainant.
B. Respondent
Respondent contends as follows:
Respondent is the registrant of the domain names <veinclinicsofamerica.com>,
<vcaillinois.com>, and <vcamaryland.com>.
When Respondent assumed ownership in the domain
names <veinclinicsofamerica.com>, <vcaillinois.com>,
and <vcamaryland.com>, it had no knowledge of Complainant’s
claimed trademark rights in the <veinclinicsofamerica.com>, <vcaillinois.com>,
and <vcamaryland.com> domains.
Respondent has a policy against holding domain
names in derogation of legitimate rights holders. In accordance with Respondent’s policy
against holding domain names in derogation of legitimate rights holders, on
October 26, 2007, corporate counsel for Respondent left a voicemail for counsel
for Complainant, explaining that it was unaware of Complainant’s purported
rights at the time of registration and offered immediate transfer of the
domains to Complainant.
On November 2, 2007, corporate counsel for
Respondent received a voicemail from counsel for Complainant rejecting the
Respondent’s offer to transfer the domain to Complainant.
On November 5, 2007, corporate counsel for
Respondent left a voicemail for counsel for Complainant, inquiring if
Complainant might reconsider its position and agree to Respondent’s transfer of
the domains to Complainant.
On November 5, 2007, corporate counsel for Respondent sent counsel for
the Complainant an email urging Complainant to reconsider its denial of
Respondent’s offer for immediate transfer of domains to Complainant.
On or about November 7, 2007, corporate counsel
for Respondent and counsel for Complaint had a conversation on the telephone
regarding Respondent’s offer for immediate transfer of these domains to
Complainant. Respondent was notified of Complainant’s refusal to accept
Respondent’s offer.
Throughout this dispute, Respondent has acted with the utmost good faith,
responding promptly upon receipt of this action and offering immediate transfer
of the domain names.
In light of the foregoing, Respondent
respectfully requests that the Panel dismiss the complaint inasmuch as
Respondent has acted only in good faith. Upon dismissal, Respondent agrees to
immediate transfer of <veinclinicsofamerica.com>, <vcaillinois.com>,
and <vcamaryland.com> to Complainant.
In the alternative, Respondent respectfully
requests that the Panel refrain from making any formal finding that Respondent
acted in “bad faith.” Rather, Respondent respectfully requests that the Panel
simply endorse Respondent’s offer to transfer <veinclinicsofamerica.com>,
<vcaillinois.com>, and <vcamaryland.com> to
Complainant.
FINDINGS
The parties agree that the domain names
should be transferred.
Respondent is acting in good faith by
consenting to the transfer.
It is unnecessary to analyze the merits of
the parties’ factual contentions pursuant to paragraph 4(a) of the Policy since
the parties have stipulated that relief should be granted and the Panel should
transfer the domain-names to the Complainant.
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.
However in the instant case these factors are
rendered moot by the parties’ consensus that the Panel should transfer the
domain names to the Complainant. Therefore
the Panel foregoes the traditional UDRP analysis and orders the at-issue domain
names to be transferred to the Complainant, without more. See Boehringer Ingelheim Int’l GmbH v.
Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003)
(transferring the domain name registration where the respondent stipulated to
the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc.,
FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both
asked for the domain name to be transferred to the Complainant . . . Since
the requests of the parties in this case are identical, the Panel has no scope
to do anything other than to recognize the common request, and it has no
mandate to make findings of fact or of compliance (or not) with the Policy.”); see
also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24,
2005) (“[U]nder such circumstances, where Respondent has agreed to comply with
Complainant’s request, the Panel felt it to be expedient and judicial to forego
the traditional UDRP analysis and order the transfer of the domain names.”).
DECISION
Having established that the parties are in agreement that the at-issue
domain names should be transferred to the Complainant, the Panel concludes that
relief shall be GRANTED.
Accordingly, it is Ordered that the <veinclinicsofamerica.com>, <
vcaillinois.com>, and <vcamaryland.com> domain name
be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 3, 2007
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