El Paso County Hospital District v.
Southwest-Technology, Inc.
Claim Number: FA0206000114675
Complainant is El Paso County Hospital District, El Paso, TX (“Complainant”)
represented by Albert A. Carrion, Jr.,
Esquire of Hilgers & Watkins, PC. Respondent is Southwest-Technology, Inc., El Paso, TX (“Respondent”) represented
by Thomas Brad Smith.[1]
The domain names at issue are <ep1st.com> and <epfirst.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.
M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on June 24, 2002; the
Forum received a hard copy of the Complaint on June 24, 2002.
On July 8, 2002, Network Solutions, Inc.
confirmed by e-mail to the Forum that the domain names <ep1st.com> and <epfirst.com>
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 July 12, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 1, 2002 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@ep1st.com
and postmaster@epfirst.com by e-mail.
A timely Response was received and
determined to be complete on July 22, 2002.
On August 5, 3002,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant requests that the domain
names be transferred from Respondent to Complainant.
A. COMPLAINANT
Complainant claims that it is “the sole
corporate member of El Paso First Health Network, Inc. (the “Network”) and El
Paso First Health Plan, Inc.” and that it “operates R.E. Thomason General
Hospital.”
Complainant contends that it has,
‘through El Paso First Health Network, Inc.” been using the domain name <ep1st.com>
since early 1999’ and that the El Paso First Health Network, Inc.’s management
company, Best Healthcare Management Company registered that domain name on
behalf of El Paso First Health Network, Inc.
Complainant contends that R.E. Thomason
General Hospital owns a Federal Trademark Registration for the service mark
“ep1st”, U.S.P.T.O. Registration No. 2,418,608 issued on January 9, 2001 in
connection with managed healthcare and medical services.
Complainant contends that Thomas Brad
Smith is the President/CEO of Respondent and is a former employee of El Paso
First Health Network, Inc. who resigned as such on or about August 1,
2001. Complainant contends that while
so employed, Mr. Smith was asked to register the domain name <epfirst.com>
for and on behalf of his employer.
Complainant contends that Mr. Smith
initially registered the domain names on behalf of the Network but named
himself as the Administrative and Technical Contact. Complainant contends that at the time of Mr. Smith’s resignation,
Complainant believed that the two domain names were registered to the
Network. Complainant believes that
after his resignation, Mr. Smith signed domain name transfer forms and had the
names changed to Southwest-Technology, Inc.
Complainant contends that it received a
letter dated June 3, 2002 from Respondent in which Mr. Smith offered to
transfer the domain names to Complainant for $15,000.
Complainant contends that the transfer
and registry of the domain names was unauthorized and done in bad faith, that
Respondent has no rights or legitimate interests in these domain names and that
Respondent’s use thereof would violate Complainant’s trademark rights.
Complainant contends that Respondent was
well aware of Complainant’s interest in the domain names in question before he
registered same and that his registration and use is in bad faith.
B. RESPONDENT
Respondent contends that it does not now,
nor has it ever claimed ownership of the domain names: <ep1st.com> or <epfirst.com>.
Respondent contends that it has incurred
fees and expenses in connection with the registration and management of those
domain names on behalf of Complainant.
Respondent acknowledges that Complainant, through the Network, has been
using the <ep1st.com> mark since late August 1999.
Respondent contends that it reregistered
the domain name <ep1st.com> after it expired “in the best interest
of and to the benefit of the El Paso County Hospital District. . .”
Respondent
acknowledges that it offered to sell to Complainant each domain name for $5,000
per domain in an effort to recoup its expenses and time expended in attempting
to maintain the viability of these domain names and their attached websites.
Respondent contends that “ . . . there is
no domain name dispute; . . . that [Respondent] has . . . never attempted to
use the domain names for any purpose other than the good will and betterment of
El Paso First Health Network, El Paso First Healthplans, Inc. and the El Paso County
Hospital District at large.”
Respondent requests that the Panel order
Complainant to “settle their accounts with Respondent” and “. . . at which time
the Respondent will expectantly transfer the domain names to Complainant.”
1)
Complainant
has met its burden to prove by a preponderance of the relevant, credible and
admissible evidence that the domain names in question are identical or
confusingly similar to a service mark in which
Complainant has rights.
2)
Complainant
has met its burden to prove by a preponderance of the relevant, credible and
admissible evidence that Respondent has no rights or legitimate interests in
respect of the domain names.
3)
Complainant
has met its burden to prove by a preponderance of the relevant, credible and
admissible evidence that the domain names have been registered and are being
used in bad faith.
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 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;
(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.
IDENTICAL AND/OR CONFUSINGLY SIMILAR
Complainant claims “rights” in the
service mark “ep1st” by virtue of the fact that it is “. . . the sole corporate
member of El Paso First Health Network, Inc. and First Health Plan, Inc. and
that it “operates R.E. Thomason General Hospital, a non-profit corporation.”
The Complainant, however, is not the Registrant of the Federal Trademark
Registration for the service mark “ep1st” (U.S.P.T.O. Registration No.
2,418,608 issued January 9, 2001). Thomason Hospital, a Texas not-for-profit
corporation is the registered owner thereof.
Presumably this is the same entity as the R.E. Thomason General
Hospital.
Complainant’s description of its “rights”
in the Registered Mark is ambiguous at best, perhaps deliberately so. However, since Respondent readily
acknowledges that Complainant has “rights” in and to the service mark which is
identical to at least one of the domain names in question, this Panel is
compelled to find that Complainant has met its burden of proof on this first
required element. Although Complainant
does not submit that it has any interest in any Registered mark for <epfirst.com>,
this Panel has no trouble finding that <epfirst.com> is
confusingly similar to the mark “ep1st.”
Indeed, Respondent does not dispute this point either.
Under these circumstances, Complainant has met its burden to prove by a
preponderance of the credible, admissible and relevant evidence that the domain
names registered by Respondent are identical or confusingly similar to a
service mark in which Complainant has rights.
RIGHTS OR LEGITIMATE INTERESTS
Respondent’s only claimed “rights or
legitimate interests” in the domain names at issue are based upon Respondent’s
contention that it is owed monies for expenses and time expended on behalf of
Complainant in connection with these domain names. Respondent requests that this Panel compel Complainant to pay
Respondent for those expenses and fees.
An ICANN Panel is, of course, not empowered to order such relief and
this Panel will not do so. There is
nothing in the UDRP or any decision based thereon with which this Panel is
familiar which would permit “rights or legitimate interests” in a domain name
to be based upon a claim for fees and costs even when they arise from the
registration/management of a domain name.
Under these circumstances, Complainant
has likewise met its burden to prove by a preponderance of the relevant,
credible and admissible evidence that Respondent has no rights or legitimate
interests in respect of the domain names in question.
REGISTRATION AND USE IN BAD FAITH
Since Respondent has no ownership rights
or legitimate interests in the domain names in question and is merely holding
same in order to attempt to get paid for expenses and fees allegedly owed by
Complainant, Respondent has admitted it has registered and used the domain
names in bad faith. [2]One
cannot, consistent with trademark law and the UDRP, register and/or use domain
names which are identical or confusingly similar to a service mark of another
in order to collect a debt. If indeed
Respondent has a valid cause of action against Complainant for expenses or fees
due and owing, this Panel has no doubt that there is an adequate judicial forum
in the great State of Texas in which Respondent may seek and secure appropriate
relief.
Complainant’s
request for relief is granted.
The domain names <ep1st.com> and <epfirst.com>
shall be transferred from Respondent to Claimant.
M. KELLY TILLERY, ESQUIRE, Panelist
Philadelphia,
Pennsylvania
Dated: August 7, 2002
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[1] The Record reflects that Mr. Smith is the President/CEO of Respondent. It does not indicate that he is an attorney.
[2] Respondent’s offer to transfer the domain names for $5,000 each also constitutes substantial evidence of registration and use in bad faith. Policy ¶ 4(b)(i). Respondent’s admissions show that it registered or acquired the domain names primarily for the purpose of selling them to Complainant who is the owner of the service mark for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. Although Respondent has produced no documentation of any out-of-pocket costs, it is difficult to believe that they could possibly be as high as $5,000 per domain name.