Continucare Corporation v. R.M.C. c/o Domain Administrator(role_account)
Claim Number: FA0803001172987
Complainant is Continucare Corporation (“Complainant”), represented by Leslie J. Lott, of Lott & Friedland,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <valuclinic.com>, registered with Enom, 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.
Beatrice Onica Jarka, David E. Sorkin and the Honorable Charles K. McCotter, Jr. (Ret.) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 31, 2008.
On April 2, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <valuclinic.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 April 9, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 29, 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 firstname.lastname@example.org by e-mail.
Respondent requested an extension of time to respond to the Complaint granted. Pursuant to Respondent’s request, the National Arbitration Forum granted Respondent an extension on April 25, 2008, setting a deadline of May 12, 2008 by which Respondent could file a Response to the Complaint.
A timely Response was received and determined to be complete on May 12, 2008.
An Additional Submission was received from Complainant on May 19, 2008 and determined to be timely and complete in compliance with the National Arbitration Forum’s Supplemental Rule 7.
On May 27, 2008, the National Arbitration Forum received an Additional Submission from Respondent by which it objects to Complainant’s Additional Submission and requests a motion to strike Complainant’s Additional Submission. The National Arbitration Forum does not consider Respondent’s Additional Submission to be in accordance with the National Arbitration Forum’s Supplemental Rule 7(e).
On May 21, 2008, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka, David E. Sorkin and Honorable Charles K. McCotter, Jr. (Ret.) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Respondent requests that a Reverse Domain Name Hijacking finding be made in respect to the Complaint.
Complainant contends that:
· It is a nationally recognized and highly regarded provider of health and medical care services;
· It owns common law service mark rights in the VALUCLINIC mark through continuous, extensive and exclusive use of the mark for over 9 months;
· It owns a number of domain name registrations which incorporate the VALUCLINIC mark, which had been strongly advertised starting in 2007;
· The disputed domain name is confusingly similar to the VALUCLINIC mark, which, once the pending registration of the trademark shall be issued, shall date back the rights of Complainant in the mark to November 17, 2006;
· Respondent has no proprietary rights or legitimate interests in the disputed domain name, as Respondent’s website is not commonly known by this name, and Respondent has not made preparations or used the disputed domain name in connection with a bona fide offering of goods;
· Respondent’s website is a host site which contains hyperlinks to various third-party websites offering health-related services presumably to generate advertising revenues;
· Respondent is using the disputed domain name in bad faith;
· On November 20, 2006, Complainant made an official offer to purchase the disputed domain name, though Respondent has not yet answered.
In its response, Respondent asserts that:
· The declaration of the CEO of Complainant, Mr. Pfenniger, dated March 11, 2008, should be stricken from the evidence submitted by Complainant as it contains unsupported self-serving, say-so assertions that are in fact false or highly misleading;
· Respondent denies the contentions of Complainant referring to its rights in the VALUCLINIC trademark;
· The VALUCLINIC mark incorporates two descriptive terms, including “Valu[e]” and “Clinic;” both being generic in nature in a combination that does not make the product non-generic;
· Respondent’s registration of the disputed domain name on October 19, 2006 predates Complainant’s application for the “VALUCLINIC” mark on November 17, 2006;
· <valuclinic.com> is in a totally different line of business, quite distinct from that of Complainant and its VALUCLINIC care clinics;
· Respondent could not possibly have registered the disputed domain name with Complainant’s mark in mind;
· On November 29, 2006, at the repeated instigation of Complainant’s agent, Michael Ward, Respondent provided Complainant a comprehensive summary of its plans and options and visions for <valuclinic.com>;
· Respondent has had no interest in selling the disputed domain name at all, whether to Complainant or anyone else, and had plans to develop it into an information portal;
· Respondent denies that it registered the disputed domain name, <valuclinic.com>, in bad faith, is using it in bad faith, or has previously engaged in similar conduct;
· At the time of registration of the disputed domain name, <valuclinic.com>, on October 19, 2006, Respondent was not aware of Complainant, had not heard of Complainant, and had had no dealing whatsoever with it, or with any of its officers, employees, representatives, agents, or legal counsel;
· There are no circumstances of bad faith use of the disputed domain name by Respondent;
· It requests that a Reverse Domain Name Hijacking finding be made in respect to the Complaint.
C. Additional Submissions
The Complainant in its Additional Submission submitted under the National Arbitration Forum’s Supplemental Rules alleges further that:
· Complainant has proven that it is entitled to the relief sought in its Complaint; namely the transfer of the <valuclinic.com> domain name to Complainant;
· The federal trademark registration has issued for Complainant’s VALUCLINIC mark, thus Complainant’s rights are established;
· Respondent’s use of the disputed domain name was neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use;
· Neither Respondent’s Response nor its websites provide any additional information as to the nature of its business, apart from “financial analysis and stock price forecasting of companies in the clinic chain business.”
· Respondent admitted that it registered the disputed domain name with an intent to commercially gain from the sale of the disputed domain name to the highest bidder and not from significant business interest of its own; this intent evidences bad faith registration of the disputed domain name.
On May 27, 2008, the National Arbitration Forum received an Additional Submission from Respondent by which it objects to Complainant’s Additional Submission and requests that it be stricken. The National Arbitration Forum does not consider Respondent’s Additional Submission to be in accordance with the National Arbitration Forum’s Supplemental Rule 7(e). The Panel agrees and finds no other compelling reason to consider the Additional Submission, and has not chosen to consider this Additional Submission in its decision.
Complainant alleges rights in the VALUCLINIC mark as early as November 17, 2006. The disputed domain name had been registered by Respondent on October 19, 2006 and predates Complainant’s trademark rights. Even if Respondent’s intent was, at the registration time, to commercially gain from the sale of the disputed domain name to the highest bidder; this, as such, cannot constitute bad faith registration of the disputed domain name as to Complainant’s VALUCLINIC mark. The Policy sanctions not only bad faith use but also bad faith registration, and Complainant has failed to prove that Respondent’s aim of the registration was to take advantage of the confusion between the disputed domain name and any potential right of Complainant.
As for the request for a Reverse Domain Name Hijacking finding, the Panel is not persuaded that the Complaint was brought 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 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.
It is the opinion of the Panel from the evidence submitted in these proceedings that the Complainant has proven both common law and registration rights in the VALUCLINIC trademark. Complainant’s Additional Submission provides evidence that the said trademark had been registered with Unites States Patent and Trademark Office (“USPTO”) under the registration number 3,409,882. As asserted by Complainant, its rights in the VALUCLINIC mark go back to November 17, 2006.
The Panel considers that for the UDRP purpose under Policy ¶ 4(a)(i), it is enough if Complainant proves that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. Complainant does not need to demonstrate rights in a mark through registration of the mark. The issue of whether the disputed domain name or trademark registration predates one or another is to be considered only under Policy ¶ 4(a)(iii).
In addition, despite Respondent’s contentions as to fact that the <valuclinic.com> domain name is comprised of common, descriptive terms and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
It is the finding of the Panel that that Respondent’s <valuclinic.com> domain name is identical to Complainant’s VALUCLINIC mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
The main issue under the Policy in this proceeding is whether the registration of the disputed domain name occurred in bad faith. It is the opinion of the Panel that the registration of disputed domain name had not occurred in bad faith for the reasoning below. Due to this finding, the Panel declines to analyze the element under Policy ¶ 4(a)(ii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Complainant asserts in both its Complaint and Additional Submission that the disputed domain name has been used in bad faith by Respondent. Complainant is also asserting elements of bad faith registration which may be found in the intention of Respondent at the time of registration to commercially gain from the sale of the disputed domain name to the highest bidder. For Policy ¶ 4(a)(iii) to apply, Complainant must demonstrate the conjunctive requirements that Respondent registered the domain name in bad faith and continues to use it in bad faith.
It is not denied under this proceeding that the disputed domain name predates the trademark rights of Complainant. As it is the consensus view of UDRP panels to this issue, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001); see also Digital Vision, Ltd. v. Advanced Chemill Systems, D2001-0827 (WIPO Sept. 23, 2001); see also PrintForBusiness B.V. v. LBS Horticulture, D2001-1182 (WIPO, Dec. 21, 2001).
In certain situations, when Respondent is clearly aware of Complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the disputed domain name and any of Complainant’s rights, certain UDRP panels consider bad faith can be found. See ExecuJet Holdings Ltd. v. Air Alpha America, Inc., D2002-0669 (WIPO Oct, 27, 2002) (finding that for the purposes of the Policy, a domain name registration can have been undertaken in bad faith even if the trade marks rights at which such bad faith was directed arose after the registration of the domain name. This might be the case where a registrant speculated on an impending merger between companies that would create a new name combining in whole or in part the names of the merger partners. Another example concerns the situation where a registrant based its registration of the domain name on its insider knowledge of the intentions of a (former) business partner or employer in relation to the latter's development of a new trademark. From the intent of the Policy, it is clearly irrelevant whether a registrant intended to abuse an existing trademark right or one which that registrant specifically knew would arise); see also Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), D2003-0320 (WIPO July 4, 2002) .
Nevertheless, in these last cases there are several elements which cannot be found in this proceeding, including Respondent’s knowledge of Complainant or the aim of Respondent to take advantage of any confusion between the disputed domain name and any of Complainant’s rights. Complainant could not prove that Respondent knew about its intentions to register the VALUCLINIC trademark at the time the registration took place.
Reverse Domain Name Hijacking
Respondent claims that Complainant is pursuing the instant UDRP proceeding in order to engage in reverse domain name hijacking, which requires a showing that Complainant brought the claim in bad faith despite knowing that Respondent had rights or legitimate interests in the <valuclinic.com> domain name, or that Respondent lacked bad faith in its registration and use of the <valuclinic.com> domain name. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that to prevail on a claim of reverse domain name hijacking, the respondent must show that the complainant brought the claim in bad faith despite the knowledge that the respondent has an unassailable right or legitimate interest in the disputed domain name, or that the respondent lacks the requisite bad faith registration and use of the disputed domain name).
The Panel considers that in these proceedings no reverse domain name hijacking may be found as Complainant had proven rights in the VALUCLINIC trademark; and that the disputed domain name registration barely predates Complainant’s trademark rights cannot be interpreted as UDRP abuse. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent); see also ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Beatrice Onica Jarka, Chair
E. Sorkin, Panelist and Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 4, 2008
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