American Medical Response, Inc. v. Advanced Marketing Resources
Claim Number: FA0208000117380
Complainant is American Medical Response, Inc., Aurora, CO (“Complainant”). Respondent is Advanced Marketing Resources, Huntington Beach, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amr.com>, registered with Alldomains.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 1, 2002; the Forum received a hard copy of the Complaint on August 2, 2002.
On August 2, 2002, Alldomains.com confirmed by e-mail to the Forum that the domain name <amr.com> is registered with Alldomains.com and that the Respondent is the current registrant of the name. Alldomains.com has verified that Respondent is bound by the Alldomains.com 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 August 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 29, 2002 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@<amr.com> by e-mail.
A timely Response was received and determined to be complete on August 29, 2002.
Complainant’s additional submissions were received on September 3, 2002.
On September 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is American Medical Response, Inc., a corporation located in Colorado, which engages in emergency medical assistance services and emergency medical ambulance transportation services. Complainant has used the AMR initials in association with its services since July 1, 1992. The Complaint is based on three service marks registered by Complainant. The AMR initials are the initials of the corporate names.
Respondent’s domain name is identical to Complainant’s service marks.
Respondent has no trademarks or service marks. An Internet search reveals no commercial or other activity for “Advanced Marketing Resources” other than the <amr.com> website.
Respondent is not making use or <amr.com> for legitimate commercial or non-commercial use. Respondent registered the domain name for the purpose of selling it to Complainant. Complainant contacted Respondent by e-mail to resolve the dispute. Complainant offered $10,000.00 to purchase the domain name. Respondent demanded $75,000.00 to sell the domain name. When Complainant first contacted Respondent on August 1, 2001, <amr.com> was being used in bad faith with no substantive content.
Respondent is Advanced Marketing Resources located in California. Respondent has been in the business of building websites, consulting on how to market and generate sales on the Internet and building valuable Internet marketing resources since 1995.
Respondent registered the domain name, <amr.com>, for the purpose of developing a site and marketing its services. Respondent’s trade name was “Advanced Marketing Research-<amr.com>”. Respondent changed the name to “Advanced Marketing Resources.” Respondent has established a common law trademark in “Advanced Marketing Resources.”
Respondent has no knowledge of Complainant’s business or any other business that uses the letters “AMR” as part of the trade name at the time of registration.
Complainant on numerous occasions attempted to purchase the <amr.com> domain name from Respondent.
Complainant’s trademarks are not identical to the domain name.
Many companies, including Respondent, have established common law trademarks, which use the letters AMR.
Before any notice of the dispute, Respondent used the domain name in connection with a bona fide offering of goods and services. Respondent has used <amr.com> for many years. Complainant’s evidence shows Respondent’s use as far back as 1999.
Respondent’s response to Complainant’s continued request to purchase the domain name was in good faith.
Respondent has naturally changed content on the <amr.com> site and has always had plans to expand its use. When Complainant first offered to purchase Respondent’s rights in the domain name, Respondent advised them that it was redeveloping the site and adding new services. This was completed around May 2002 as planned. This expanded the role of <amr.com> to sell ebooks on subjects that Respondent has been consulting on for years.
B. Additional Submissions
Complainant’s Additional Response points out that Respondent’s allegations to the effect that it has a common law trademark in <amr.com> and that Respondent offered goods and services prior to being contacted by Complainant are mere bald assertions without supporting proof. Complainant contends that Respondent conducts a domain name warehousing business in bad faith.
Respondent, in the Additional Response, points out that Respondent registered the domain name on May 23, 1997, over a year before Complainant had any registered trademarks. Respondent alleges that Complainant is engaged in Reverse Domain Hijacking.
1. Complainant is a corporation engaged in the business of providing emergency medical services and ambulance service.
2. Complainant does not reveal the scope of its operations, the geographical extent of its services, its revenues, and its expenditures in promoting any trademark or service mark, or any of the other information relating to its business.
3. Complainant owns a United States Patent and Trademark Office Registration dated Feb. 20, 2001 for the service mark, AMR. The mark consists of the letters “AMR” superimposed over an outline of the continental United States which in turn is superimposed over seven horizontal lines; superimposed over the letters “AM” is a six pointed cross with a caduceus in the center. The Application was filed July 15, 1996. First use in commerce is shown as Feb. 1, 1993.
4. Complainant owns a United States Patent and Trademark Office Registration dated Oct. 6, 1998, for the service mark AMERICAN MEDICAL RESPONSE. The Application was filed June 7, 1996. First use in commerce is shown as July 1, 1992.
5. Complainant owns a United States Patent and Trademark Office Registration dated Oct. 6, 1998, for the service mark AMR. The mark consists of the letters “AMR” with a six-pointed cross with a caduceus in the center superimposed over the letters “AM”. There is a lining in the drawing, which is a feature of the mark. The Application was filed June 10, 1996. First use in commerce is shown as Jan. 1, 1994.
6. Respondent registered the domain name, <amr.com>, on May 23, 1997.
7. Neither party presents evidence as to how <amr.com> was used from May 23, 1997 until 1999.
8. Respondent operated a site under the name Advanced Marketing Research from 1999 until 2002 when Respondent began operating as Advanced Marketing Resources. The site used the domain name, <amr.com> during these periods.
9. The domain name, <amr.com> is identical or confusingly similar to Complainant’s mark, AMR.
10. Complainant has rights to the mark, AMR.
11. Respondent has rights or legitimate interests in the domain name, <amr.com>.
12. Complainant fails to prove that Respondent registered the domain name, <amr.com>, 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.
Identical and/or Confusingly Similar
Complainant has established rights in the AMR mark by means of its service mark registrations. Respondent’s <amr.com> domain name is identical or confusingly similar to Complainant’s mark because it incorporates Complainant’s entire mark and merely adds the generic top-level domain name “.com” to the end. The addition of a generic top-level domain name such as “com,” does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i) identical analysis. See Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO July 7, 2000).
Respondent argues that Complainant’s service mark registrations for AMR are not identical to the disputed domain name because of the devices and lines and caduceus included on the registrations. However, device marks, lines and shapes are not to be considered for the purposes of the Policy when, notwithstanding the devices and marks, the distinctive part of the device is the letters, AMR. See DCI S.A. v. Link Commercial Corporation, D2000-1232 (WIPO Dec. 7, 2000) (holding that straight lines, wavy lines, circles and a triangle as part of the device are not to be considered as distinctive differences to the mark, when the letters “5 a sec” is the distinctive part of the device mark so that the domain name “5asec” was found to be confusingly similar); see also Modern Times Group (MTG) A B v. Stefan Hage, Kristroms Advokatbyra A B, DTV2000-0004 (WIPO Jan. 24, 2000) (holding that “figurative elements” will not change a finding of confusing similarity between a mark and a domain name).
The distinctive part of two of the marks owned by Complainant is the letters AMR. The figures and lines associated with the mark do not make the mark dissimilar from the domain name, <amr.com>, for the purposes set out in Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant shows that it has not authorized or licensed Respondent to use the AMR mark. No contention is made by either Complainant or Respondent that Respondent is the owner of any registered trade or service mark that is identical to the domain name. Complainant contends that it has exclusive right to use the mark, AMR. As a result of Complainant’s showing the burden shifts to Respondent to demonstrate rights and legitimate interests in the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent first contends that it has been commonly known as <amr.com>. See Policy ¶4(c)(ii). Respondent presents no evidence on this point as required, only mere personal assertions. That is not sufficient to carry the issue. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (requiring “concrete evidence” on part of the Respondent to show rights and legitimate interests. “Mere personal assertions” are not enough). Respondent contends that Complainant has proved the point for Respondent by inclusion of a web page from <web.archive.org> showing a web page titled “Advanced Marketing Research” for the year 1999 under the domain name, <amr.com>. Another web page is included in the Complaint for the year 2001 from the same source with similar content.
If anything, these pages show that Respondent was known as “Advanced Marketing Research.” It is now known as “Advanced Marketing Resources.” These web pages do not show that Respondent was ever known as AMR. Respondent contends that it has established common law trademark rights in “Advanced Marketing Resources” and <amr.com>. Respondent provides no evidence to support this allegation. Respondent only began using “Advanced Marketing Resources” a few months ago. Any common law rights, which might exist, are quite limited. The mere registration of a domain name, by itself, would not constitute use of that domain name as a trademark. See First Tuesday Limited v. The Startup Generator and Christopher Stammer, D2000-1732 (WIPO Feb. 12, 2000).
As to AMR, Respondent provides evidence that Complainant cannot claim the letters as their own exclusively since other entities use the letters and own trademark and service mark registrations containing the letters.
Respondent conducted a TESS search and discovered that the letters AMR comprise a word mark granted to AMR Corporation Delaware for business management consulting services in aviation and transportation industries bearing Serial Number 74411310 and Registration Number 1850845. Date of registration is shown as August 23, 1994. Respondent provides another word mark for AMR granted to Advance Memory Research, Inc. on April 12, 1983 for language instruction programs comprising prerecorded instructional tapes and printed instructional material pack. Respondent includes from TESS registrations for AMR Automotive Management Resources, AMR Research, and AMR Investments. In the Response, there is a list of companies using AMR as part of their names listing the names and websites at which each can be reached. Included in the list is AMR Inc, Tucson AZ; AMR, Brazil; AMR, California; AMR Interactive; AMR Consulting; AMR, Advanced Microsystem Research; AMR Autos; AMR Investments, Inc., Texas; and others. Respondent ends the list with the notation “Due to limited space in [R]esponse this is only a small sample of companies using the letters AMR as a trade name.” Respondent’s argument is that no entity can have exclusive rights to use the letters AMR.
Respondent contends further that before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services was done. See Policy ¶ 4(c)(i). Respondent bases this argument on simple assertions and the inclusion of the web page in the Complaint from the year 1999. The web page states “Advanced Marketing Research” “amr.com” “@amr.com we provide research and consulting to help companies market on the Internet” “for information email email@example.com” “Center.com” “amr.com is a trademark owned by iventure.” Complainant included the web page to support its argument that the web page was without meaningful content. Respondent contends that it shows use of the domain name for a bona fide offering of services. While it may be correct that Respondent was simply holding the domain name for a purpose not associated with a bona fide offering of services, that point cannot be properly examined under the facts and circumstances presented by the parties in this domain name dispute.
Respondent, under the facts and circumstances of this case must be given the benefit of the doubt. Respondent is found to have made a bona fide offering of services under the domain name, <amr.com>. Complainant insists that this decision should not be made because Respondent did not make use of the domain name “before notice of the dispute” as required by Policy ¶ 4(c)(i). Complainant bases this argument on the fact that Complainant filed its Application with the United States Patent and Trademark Office for AMR in 1996. Had Respondent done a proper examination it could have found the Application and been on notice of Complainant’s rights, Complainant argues. Other Panels have considered this contention. See Fitter Int’l Inc. v. Eenable Inc. and Balance Designs, Inc., D2001-0979 (WIPO Oct. 12, 2001) (where Complainant contended that the notice of the dispute occurred when Respondent had constructive notice of Complainant’s trademark rights, which Complainant contended was the date upon which its US Trademark application was filed. It was held as follows: “The Panel rejects the proposition that knowledge of a prior trademark application is ‘notice of any claim’ for the purpose of Paragraph 4(c)(i) of the Policy…There was, therefore, no notice of this dispute until after …Respondent had begun to make actual use of, or preparations to expand the use of, a trademark corresponding to the domain name in issue in connection with a bona fide offering of goods). This Panel adopts that reasoning and finds that before any notice of the dispute, Respondent used the domain name for a bona fide offering of services.
Registration and Use in Bad Faith
Complainant primarily bases its bad faith argument on the undisputed facts, supported by emails between the parties, which show an approach made by Complainant to purchase the domain name from Respondent. After some discussion, Complainant offered to purchase the domain name for $10,000.00. Respondent countered with a demand for $75,000.00. Complainant did not accept the counteroffer and filed this domain name dispute. These emails were exchanged in the year 2001. Complainant must prove under Policy ¶ 4(b)(i) circumstances indicating that Respondent registered the domain name primarily for the purpose of selling it to Complainant or a competitor. Respondent registered the domain name on May 27, 1997. The fact that Respondent considered selling the domain name in 2001 does not prove that it was registered in 1997 for the purpose of sale. Respondent contends that it had never heard of Complainant at the time of the domain name registration. Without some proof offered by Complainant of why Respondent knew or should have known of its existence, Respondent’s statement must be taken at face value. The only proof offered by Complainant on this issue is the service mark registration for AMR showing that the application was filed in 1996, about one year before the domain name was registered by Respondent. No service mark registration was granted to Complainant until 1998.
Complainant asserts that Respondent should have done an online trademark search for AMR prior to registering the domain name. Respondent’s failure to do so, Complainant contends, is bad faith. “The Panel does not believe that, taken alone, a Respondent’s failure to make use of available online trademark searching is sufficient to amount to registration in bad faith.” See Fitter Int’l Inc. v. Eenable Inc. and Balance Designs, Inc. D2001-0979 (WIPO Oct. 12, 2001). (“…[E]ven if such a search would put the would-be registrant on notice of the Complainant’s trademark, it does not necessarily follow that bad faith should be found where the domain name and an earlier registered trademark are identical or confusingly similar. A domain name registrant may, for example, have good cause for believing that the earlier trademark registration is invalid or was itself obtained in bad faith”).
Respondent cannot be found to have registered the domain name in bad faith on the sole ground that it did not execute a trade name search for the application for a service mark filed by Complainant. There being no further grounds advanced on Respondent’s registration and use in bad faith, Respondent is found not to have registered the domain name, <amr.com> in bad faith.
Respondent demands a finding under Rule 15 (e). The Panel finds no evidence or circumstances to show that the Complaint was brought in bad faith. Respondent’s demand for a finding of Reverse Domain Name Hijacking is denied.
IT IS THE DECISION OF THE PANEL THAT THE COMPLAINT BE DISMISSED AND THE DEMAND FOR TRANSFER OF THE DOMAIN NAME, <AMR.COM>, IS DENIED.
Tyrus R. Atkinson, Jr., Panelist
Dated: Sept 24, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page