The Methodist Hospital v. NetCommerce Associates c/o Mitchel Maykel
Claim Number: FA0803001155824
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.
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.
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 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 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.
Complainant requests that the domain names be transferred from Respondent to 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.
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
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.
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).
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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