Doctors On Liens Inc. v. Pinet, Inc. a/k/a PlanetUC
Claim Number: FA0803001157262
Complainant is Doctors On Liens Inc. (“Complainant”), represented by Donald J. Brunsten, of Brunsten+Associates, California, USA. Respondent is Pinet, Inc. a/k/a PlanetUC (“Respondent”), represented by Jay Lamothe, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <doctoronlien.com>, <doctorsonlien.com>, and <doctoronliens.com>, registered with Wild West Domains, 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 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 5, 2008.
On March 6, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <doctoronlien.com>, <doctorsonlien.com>, and <doctoronliens.com> domain names are registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 10, 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 10, 2008.
Complainant filed an Additional Submission on April 15, 2008, which complied with Supplemental Rule 7.
On April 18, 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 contends that Respondent’s disputed domain names, <doctoronlien.com>, <doctorsonlien.com>, and <doctoronliens.com> constitute typosquatting in that they are calculated to take advantage of typing mistakes made by individuals seeking information about Complainant’s services. Those individuals are rerouted to Respondent’s site <customerapprove.com>. Complainant contends that its organization and Respondent target the same audience in the same areas for services that are essentially identical. Complainant claims rights in the DOCTORS ON LIENS mark by registration with the United States Patent and Trademark Office (“USPTO”) on January 5, 2005, filed October 8, 2003. Complainant also asserts common law rights through investment and promotion of its business under that name since 1995. Complainant registered the <doctorsonliens.com> domain name in 1998.
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the DOCTORS ON LIENS mark and is using the disputed names to divert Internet users to its website. Complainant further contends that Respondent’s use of the disputed names for that purpose for commercial gain shows registration and use in bad faith.
Respondent asserts that the terms used in the DOCTORS ON LIENS mark are generic and that Complainant has not established common law rights in the mark through secondary meaning as an exclusive identifier of Complainant’s services. Respondent contends it has rights to use and retain the disputed domain names under the “doctrine of fair use.” Respondent denies that its registration and use was in bad faith. It asserts that its use of the terms has been to identify medical practitioners and their services and that it has never attempted to sell them to Respondent. Moreover, Respondent accuses Complainant of attempting “reverse domain name highjacking.”
C. Additional Submissions
In its Additional Submission, Complainant describes the history of its efforts to dissuade Respondent from using the disputed domain names in competition with Complainant. Complainant denies that its mark is merely descriptive, relies on its USPTO registration, and contends that Respondent’s assertions establish typosquatting. Complainant also contends Respondent had made no legitimate use of the disputed domain names before receiving notice of the dispute in 2003. Complainant contends that Respondent’s denial of bad faith is incredible because of Respondent’s intentional creation of nearly identical domain names with obvious knowledge of Complainant’s prior use of the DOCTORS ON LIENS mark.
Complainant publishes online printed directories designed to generate patient referrals for doctors and other medical providers who deal with personal injuries and can arrange for payment by taking liens on the patients’ personal injury claims. Complainant has used the term DOCTORS ON LIENS in providing its services since 1995. In 1998, Complainant registered the domain name <doctorsonliens.com> and established a website. On October 8, 2003, Complainant applied for trademark protection of its DOCTORS ON LIENS mark with the USPTO. Registration was obtained on January 5, 2005.
Respondent is a competitor of Complainant. Respondent publishes a directory of healthcare providers and seeks to market the listed individuals to attorneys in a geographical area that includes the area in which Complainant also markets its services. Even though Respondent seeks to distinguish its services from those of Complainant, no doubt exists that the companies compete with each other and there are significant similarities between the offered services.
Respondent registered the <doctoronlien.com> and <doctoronliens.com> domain names in 2002 and the <doctorsonlien.com> domain name in 2004. Respondent’s disputed domain names differ from Complainant’s 1998 registered domain name by only one or two letters. Respondent obviously knew of Complainant’s business model and registered domain name at the time Respondent registered the disputed domain names. Furthermore, Respondent registered the disputed domain names in an effort to take advantage of the possibility that individuals seeking Complainant’s services would make a mistake in typing in Complainant’s domain name and be diverted to Respondent’s website. The individuals so diverted would be rerouted to Respondent’s website called <customerapprove.com> and be offered Respondent’s services. No evidence exists that Respondent has ever been known by the DOCTORS ON LIENS mark and, to the contrary, the record shows that Respondent registered the disputed domain names in an effort to take advantage of individuals who make typing mistakes in seeking to access Complainant’s website.
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.
Even though common words make up the DOCTORS ON LIENS mark, the mark itself is not generic. It has been used by Complainant in its business since 1995 and has been identified with Complainant. Complainant’s continuous use of the mark has established secondary meaning sufficient to confer common law rights in Complainant in the DOCTORS ON LIENS mark. Moreover, Complainant’s rights in the <doctorsonliens.com> domain name were established by its registration of the domain name in 1998. Furthermore, Complainant established rights in the mark through its registration of the mark, which was effective January 5, 2005.
No doubt exists that Respondent’s <doctorsonlien.com>, <doctoronlien.com> and <doctoronliens.com> domain names are confusingly similar to Complainant’s DOCTORS ON LIENS mark. The panel thus finds that the disputed domain names are confusingly similar to the DOCTORS ON LIENS mark within the meaning of Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000).
Because Complainant made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, the burden shifted to Respondent to show that it does have rights or legitimate interests in the disputed domain names. The record shows Respondent is not commonly known by the disputed domain names based on Respondent’s WHOIS information. There is simply no evidence in the record that Respondent is commonly known by the disputed domain names. Moreover, the record shows that Respondent is currently using the disputed domain names to take advantage of typing mistakes by Internet users to divert them to its website for commercial gain. Respondent is not making a legitimate or fair use of the disputed domain names within the meaning of Policy ¶ 4(a)(ii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003). Complainant has shown that Respondent engaged in typosquatting in registering the disputed domain names. Respondent clearly lacks rights or legitimate interests in the disputed domain names. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003).
Respondent’s use of the disputed domain names to redirect Internet users to its own website for commercial gain constitutes registration and use in bad faith because Respondent is attempting to benefit from the goodwill associated with Complainant’s DOCTORS ON LIENS mark. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002). The record establishes that Respondent knew of Complainant’s mark at the time Respondent registered the disputed domain names. The registration of the multiple domain names constitutes evidence of a pattern of conduct. See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005). Complainant has shown that Respondent registered and used the disputed domain names in bad faith within the meaning of Policy ¶ 4(a)(iii).
No support exists for Respondent’s assertion that Complainant engaged in reverse domain name highjacking. See Rusconi Editore S.P.A. v. Bestinfo, D2001-0656 (WIPO July 5, 2001).
The Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <doctoronlien.com>, <doctorsonlien.com>, and <doctoronliens.com> domain names be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: May 2, 2008
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