Doctors On Liens Inc. v.
Pinet, Inc. a/k/a PlanetUC
Claim Number: FA0803001157262
PARTIES
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.
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 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 postmaster@doctoronlien.com, postmaster@doctorsonlien.com, and
postmaster@doctoronliens.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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
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.
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).
DECISION
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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