1-800-Doctors, Inc. v. On-Hold
Claim Number: FA0711001112566
Complainant is 1-800-Doctors,
Inc. (“Complainant”), represented by
Stephen J. Meyers, of Woodcock
Washburn,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <1800-doctor.com>, <1-800doctor.com>, <1800-doctors.com>, <1-800doctors.net>, <1800-doctors.net>, <1-800doctors.org>, <1800-doctors.org>, <1-800-doctors.org>, <1-888doctor.com>, <1888-doctor.com>, <1-888doctor.com>, <1-888-doctor.com>, <1888-doctors.com> and <888doctor.com>, registered with Network Solutions, Inc..
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On November 26, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <1800-doctor.com>, <1-800doctor.com>, <1800-doctors.com>, <1-800doctors.net>, <1800-doctors.net>, <1-800doctors.org>, <1800-doctors.org>, <1-800-doctors.org>, <1-888doctor.com>, <1888-doctor.com>, <1-888doctor.com>, <1-888-doctor.com>, <1888-doctors.com> and <888doctor.com> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 December 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 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@1800-doctor.com, postmaster@1-800doctor.com, postmaster@1800-doctors.com, postmaster@1-800doctors.net, postmaster@1800-doctors.net, postmaster@1-800doctors.org, postmaster@1800-doctors.org, postmaster@1-800-doctors.org, postmaster@1-888doctor.com, postmaster@1888-doctor.com, postmaster@1-888doctor.com, postmaster@1-888-doctor.com, postmaster@1888-doctors.com and postmaster@888doctor.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <1800-doctor.com>, <1-800doctor.com>, <1800-doctors.com>, <1-800doctors.net>, <1800-doctors.net>, <1-800doctors.org>, <1800-doctors.org>, <1-800-doctors.org>, <1-888doctor.com>, <1888-doctor.com>, <1-888doctor.com>, <1-888-doctor.com>, <1888-doctors.com> and <888doctor.com> domain names are confusingly similar to Complainant’s 1-800-DOCTORS mark.
2. Respondent does not have any rights or legitimate interests in the <1800-doctor.com>, <1-800doctor.com>, <1800-doctors.com>, <1-800doctors.net>, <1800-doctors.net>, <1-800doctors.org>, <1800-doctors.org>, <1-800-doctors.org>, <1-888doctor.com>, <1888-doctor.com>, <1-888doctor.com>, <1-888-doctor.com>, <1888-doctors.com> and <888doctor.com> domain names.
3. Respondent registered and used the <1800-doctor.com>, <1-800doctor.com>, <1800-doctors.com>, <1-800doctors.net>, <1800-doctors.net>, <1-800doctors.org>, <1800-doctors.org>, <1-800-doctors.org>, <1-888doctor.com>, <1888-doctor.com>, <1-888doctor.com>, <1-888-doctor.com>, <1888-doctors.com> and <888doctor.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 1-800-Doctors, Inc., is a national provider of physician referral services. Since 1984, Complainant has marketed its services under the 1-800-DOCTOR mark (Reg. No. 1,821,815 issued February 15, 1994), which was filed with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the following domain names on their respective dates: <1800-doctor.com> (March 23, 1999), <1-800doctor.com> (March 23, 1999), <1800-doctors.com> (November 2, 2007), <1-800doctors.net> (December 7, 1998), <1800-doctors.net> (December 7, 1998), <1-800doctors.org> (December 7, 1998), <1800-doctors.org> (December 7, 1998), <1-800-doctors.org> (December 7, 1998), <1-888doctor.com> (April 2, 1999), <1888-doctor.com> (March 23, 1999), <1-888doctor.com> (April 2, 1999), <1-888-doctor.com> (March 23, 1999), <1888-doctors.com> (March 23, 1999) and <888doctor.com> (March 23, 1999). Respondent has not yet run any operating websites using the disputed domain names.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has established rights in the 1-800-DOCTORS mark
pursuant to Policy ¶ 4(a)(i) through registration of
the mark with the USPTO. See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
The Panel finds that Respondent’s <1800-doctor.com>, <1-800doctor.com>, <1800-doctors.com>, <1-800doctors.net>, <1800-doctors.net>, <1-800doctors.org>, <1800-doctors.org> and <1-800-doctors.org> domain names
are confusingly similar to Complainant’s 1-800-DOCTORS mark despite minor
additions or alterations of letters, hyphens, and the generic top-level domains
“.com”, “.org”, or “.net.” See Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding
that a domain name which differs by only one letter from a trademark has a
greater tendency to be confusingly similar to the trademark where the trademark
is highly distinctive); see also Innomed Techs., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum
The Panel finds that
Respondent’s <1-888doctor.com>,
<1888-doctor.com>, <1-888doctor.com>, <1-888-doctor.com>, <1888-doctors.com> and <888doctor.com> domain
names are also confusingly similar to Complainant’s 1-800-DOCTORS mark. The minor additions or deletions of hyphens
and generic top-level domains are not relevant to a Policy ¶ 4(a)(i) analysis.
Moreover, the minor variations of numerals such as “888” versus “800”
within the disputed domain names do not overcome the low threshold required by
Complainant to show a confusing similarity between Respondent’s disputed domain
names and Complainant’s mark. See
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant offers a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that it has rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to respond to the Complaint allows the
Panel to conclude that Respondent lacks rights and legitimate interests in the
disputed domain names. See American Express Co. v. Fang
Suhendro, FA 129120 (Nat. Arb. Forum
Respondent has not offered any
evidence to demonstrate that it has made plans to use the disputed domain names
in connection with a bona fide offering of goods or services, despite
Respondent’s ownership of the disputed domain names for almost 9 years. Thus, the Panel finds that Respondent lacks
rights or legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO
Nov. 11, 2000) (“Merely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of
the Policy.”); see also LFP, Inc. v. B & J Props., FA 109697 (Nat.
Arb. Forum
Respondent offers no evidence to
suggest it is commonly known by the disputed domain
names, nor does the WHOIS domain name registration information suggest
otherwise. Moreover, Respondent alleges
no license to use Complainant’s mark.
The Panel thus finds that Respondent lacks rights and legitimate
interests pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel may analyze factors outside of Policy ¶ 4(b) to
find bad faith registration of domain names by Respondent. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”); see also Channel Tunnel Group Ltd. v. Powell,
D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not
fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy,
is not conclusive that the [<euro-tunnel.com>] domain name in issue was
registered in and is being used in bad faith.”).
The Panel finds that Respondent’s non-active use of the
disputed domain names over nine years of ownership constitutes bad faith
registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)
(concluding that the respondent’s passive holding of the domain name satisfies
the requirement of ¶ 4(a)(iii) of the Policy); see
also Mondich v. Brown, D2000-0004
(WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its
website in a two year period raises the inference of registration in bad
faith).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <1800-doctor.com>, <1-800doctor.com>, <1800-doctors.com>, <1-800doctors.net>, <1800-doctors.net>, <1-800doctors.org>, <1800-doctors.org>, <1-800-doctors.org>, <1-888doctor.com>, <1888-doctor.com>, <1-888doctor.com>, <1-888-doctor.com>, <1888-doctors.com> and <888doctor.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: January 18, 2008
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