The Methodist Hospital v.
NetCommerce Associates c/o Mitchel Maykel
Claim Number: FA0803001155824
PARTIES
Complainant is The Methodist Hospital (“Complainant”), represented by Gretchen McCord Hoffmann, of Wong, Cabello, Lutsch, Rutherford & Brucculeri, L.L.P., Texas, USA. Respondent is NetCommerce Associates c/o Mitchel Maykel (“Respondent”), Massachussetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <leadingmedicine.com>, <leadingmedicine.org>,
and <leadingmedicine.net>,
registered with Register.com, 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.
Mark McCormick as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 3, 2008; the
National Arbitration Forum received a hard copy of the Complaint on March 3, 2008.
On March 4, 2008, Register.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <leadingmedicine.com>, <leadingmedicine.org>,
and <leadingmedicine.net>
domain names are registered with Register.com,
Inc. and that the Respondent is the current registrant of the
names. Register.com,
Inc. has verified that Respondent is bound by the Register.com, 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 March 14, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 3, 2008 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@leadingmedicine.com, postmaster@leadingmedicine.org, and
postmaster@leadingmedicine.net by e-mail.
A timely Response was received and determined to be complete on April 3, 2008.
Additional communications were received from Respondent. Those communications do not comply with
Supplemental Rule 7 and have been disregarded.
On April 11, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Mark McCormick as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges it has the right to the LEADING MEDICINE mark
through a trademark registration with the United States Patent and Trademark
Office (“USPTO”) applied for May 30, 2002 and issued May 29, 2007. Complainant alleges that it, its predecessors
and related entities, have common law rights in the mark by use since early
2001. Complainant asserts that the
disputed domain names are identical to or confusingly similar to its mark, that
Respondent has no rights or legitimate interests in the disputed domain names,
and that Respondent registered the domain names in bad faith.
B. Respondent
Respondent responds to the Complaint essentially by relying on his
purchase and registration of the domain names.
He documents a purchase of the .com and .net names on August 2, 2002 and
asserts he had no knowledge of anyone else using the “leading medicine” name
when he did so. He accuses Complainant
of harassing him and of failing to bargain with him in good faith to purchase
the disputed domain names from him. He
contends he is no longer associated with Netcommerce Associates but is working
with a physician brother to market leading alternative medical services and
web-based leading medical practices, information and protocols of care. He denies that the planned offering of
wellness services will directly compete with Complainant.
C. Additional Submissions
None.
FINDINGS
Complainant began using the LEADING MEDICINE
mark in early 2001 in offering hospital and health care services. Complainant applied to the USPTO for a
trademark on May 30, 2002, which was issued on May 29, 2007. Respondent purchased and registered the
domain names <leadingmedicine.com> and <leadingmedicine.net> on April 2,
2002. He registered the third domain
name, <leadingmedicine.org> on
February 7, 2008, while in the midst of bargaining with Complainant for sale of
the first two domain names. Complainant
attached copies of website pages showing websites for the three disputed names,
showing search topics for a variety of medical and other offerings, as well as
“related links.” The website content
appears to be identical under the three names.
The present controversy
started in December 2007 when Complainant e-mailed Respondent expressing
interest in purchasing the <leadingmedicine.com>
domain name. Respondent replied saying
he would consider reasonable offers and asking for a proposal. Complainant by e-mail offered $200 “for each”
of the two then existing domain names.
Respondent on February 6, 2008 made a counteroffer to sell both names
for a total of $255,000, saying his counteroffer was nonnegotiable. On the next day, Respondent registered the
third domain name, <leadingmedicine.org>
and e-mailed Complainant enclosing a PowerPoint slide and asking that a named
individual review it. He e-mailed
Complainant again on February 21, 2008 asking for a response and describing his
proposal as “very generous.” Neither
party has identified any subsequent communciations between them. The original Complaint was filed on March 3,
2003, and an amended Complaint was filed on March 13, 2008.
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.
Complainant obtained a trademark of its
LEADING MEDICINE mark on May 29, 2007.
The trademark established Complainant’s rights in the mark as of May 30,
2002. See Thompson v. Zimmer,
FA 190625 (Nat. Arb. Forum Oct. 27, 2003).
Complainant also appears to have common law rights in the mark dating
back to its first use in 2001. See Bibbero Sys., Inc. v. Tseu & Assoc.,
FA 94416 (Nat. Arb. Forum May 9, 2000).
The disputed domain names are identical to Complainant’s mark because
they merely remove the space between the words and add the generic top-level
domains. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop.
Assocs., FA 937650 (Nat.
Arb. Forum Apr. 30, 2007). Respondent
does not address this issue. No doubt
exists that Complainant has met its burden under Policy ¶ 4(a)(i).
Complainant alleges “on information and belief” that Respondent is not commonly known by the LEADING MEDICINE name. Complainant asserts that Respondent is using the disputed names to feature sponsored and unsponsored links to other websites, some of which compete with Complainant. Complainant also relies on Respondent’s efforts to sell the domain names for $255,000 as evidence that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant presented no evidence to support its allegations made “on information and belief” or its allegation that the disputed domain names are being used to feature links to competitors of Complainant. The record is undisputed that Respondent manifested a willingness and interest in selling the domain names to Complainant for $255,000. This factor alone is insufficient to show that Respondent is not preparing to use or using the domain names in connection with a bona fide offering of goods and services, as he alleges. See Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001)
Complainant’s main problem, however, is that the words “leading medicine” are plainly generic terms. No basis exists in the record for finding that the term “leading medicine” has been or is exclusively associated with Complainant’s business. The term is obviously capable of generic usage. See Coming Attractions, Ltd. v. Comingattractions.com, FA 94341 (Nat. Arb. Forum May 11, 2000).
Complainant has not
met its burden of proof to show that Respondent lacks rights and/or legitimate
interests in the disputed domain names within the meaning of Policy ¶ 4(a)(ii).
Because Complainant lacks rights and/or legitimate interests in the disputed domain names, Complainant has failed to show Respondent registered and used the domain names in bad faith. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005). Moreover, Respondent’s willingness to bargain for a market price for the domain names does not by itself show bad faith. See Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002). No evidence has been presented that Respondent even knew of Complainant in 2002 when he registered the .com and .net domain names. Nor is there any evidence in the record that Respondent registered the names in an effort to interfere with, disrupt or compete with Complainant’s business. These circumstances also demonstrate an absence of proof of bad faith. See Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001).
Finally, because the term “leading medicine” is generic, Respondent cannot be found to have registered and used the generic term in bad faith. See Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003).
Complainant did not
meet its burden to show bad faith registration and use under Policy ¶ 4(a)(iii).
DECISION
Because Complainant has failed to establish all three elements required
under the Policy, the Panel concludes that relief shall be and is DENIED.
Mark McCormick, Panelist
Dated: April 25, 2008
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