Vein Clinics of America, Inc. v. Demand Domains, Inc.
Claim Number: FA0710001094605
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.
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.
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 email@example.com, firstname.lastname@example.org, and email@example.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.
Complainant requests that the domain names be transferred from Respondent to 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.
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.
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.
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.”).
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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