Alive Hospice, Inc. v.
Claim Number: FA0806001211670
Complainant is Alive Hospice, Inc. (“Complainant”), represented by Robert L. Brewer, of Bass Berry & Sims
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alivehospice.com>, registered with Compana LLC.
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.
Joel M. Grossman, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 26, 2008.
On July 2, 2008, Compana LLC confirmed by e-mail to the National Arbitration Forum that the <alivehospice.com> domain name is registered with Compana LLC and that the Respondent is the current registrant of the name. Compana LLC has verified that Respondent is bound by the Compana LLC 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 July 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 22, 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 by e-mail.
A timely Response was received and determined to be complete on July 22, 2008.
An Additional Submission was received from Complainant on July 29, 2008 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7. An Additional Submission was received from Respondent on August 4, 2008, along with Objections to the Filing of Complainant’s Additional Submission. The Respondent’s Additional Submission was found to be timely and complete pursuant to the Forum’s Supplemental Rule 7.
On August 1, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts that the domain name is identical to its ALIVEHOSPICE registered trademark, as the name wholly incorporates the mark, and the inclusion of the TLD “.com” does nothing to undercut the similarity. In terms of its own rights in the mark, Complainant asserts rights in the term ALIVEHOSPICE in two ways. First it asserts common law trademark rights in the term, having used the term in commerce since 1975. Complainant now owns a federally registered trademark in the term, Registration Number 3,037,708. Complainant has also owned the domain name <alivehospice.org> since 2002. Thus, Complainant asserts that the name is confusingly similar or identical to a mark in which it has rights.
Complainant next asserts that Respondent has no rights or legitimate interests in the name. Complainant points out that Respondent is not commonly known by the name, and Respondent is not using the name for a bona fide offering of goods and services.
Finally, Complainant asserts that Respondent registered and is using the name in bad faith. Complainant asserts that Respondent registered the name with both actual and constructive knowledge of Complainant’s mark. Also, Respondent is using the name to divert business from Complainant to other hospices by redirecting Internet users seeking information about Complainant to a website that contains advertising and links to Complainant’s competitors. Thus, the name was registered and is being used in bad faith.
Respondent contends that, while Complainant has asserted that the name is identical or confusingly similar to its mark, it has offered no evidence of such. Respondent further contends that while Complainant applied for trademark registration of its mark on June 27, 2004, prior to Respondent’s registration of the name, Complainant did not obtain the registration until January 3, 2006, almost a year after the name was registered on February 15, 2005. Thus, Complainant has not met its burden on the first element of the Policy.
Respondent next contends that it does possess rights and legitimate interests in the name. Respondent is using the name to earn click-through fees by directing users to various websites. Respondent contends that the earning of such click-through fees is a bona fide offering of goods and services. Respondent further contends that Complainant’s mark is a common term, or a combination of two common words, which do not give Complainant the right to monopolize the name.
Finally, Respondent contends that the name was not registered and is not being used in bad faith. Respondent points out that the federal trademark in the mark was not issued until after Respondent had registered the name. Further, Respondent asserts that Complainant has not provided any evidence of Respondent’s alleged knowledge of the mark prior to registration. In the absence of a registered trademark, and in the absence of proof that Respondent had knowledge of the mark at the time of its registration of the name, Complainant has failed to demonstrate bad faith registration. Finally, Respondent asserts that it is the owner of many electronically-generated domain names incorporating common terms and that no party can claim exclusive rights in such terms. Thus, registering such generic terms, including Complainant’s mark, is not in bad faith.
C. Additional Submissions
Complainant acknowledges that it did not obtain federal trademark registration until after the name was registered. However, Complainant asserts that it has a common law trademark in the name dating back to 1975. Additionally, Complainant notes that it had registered the domain name <alivehospice.org> prior to Respondent’s registration of its name, and that because Complainant had applied for the federal trademark prior to registration of the name, Respondent could and should have searched the applications file at the USPTO and, had it done so, would have come across Complainant’s application. Complainant further states that its mark is hardly a common or generic term. The words “alive” and “hospice” do not normally go together, and in fact it is a unique combination of words strengthening the mark. Complainant also points out that it is virtually impossible that Respondent was unaware of the mark at the time of registration given the common law use since 1975, the website <alivehospice.org> and the unique nature of the mark. Complainant also points out that Respondent is a serial cybersquatter, with many of its registered domain names canceled or transferred by other panels, thus adding to the finding of bad faith registration.
In its Additional Submission Respondent first objects to the filing of Complainant’s Additional Submission on the grounds that the Forum’s Supplemental Rule 7, which allows a party to submit an Additional Submission without a request from the Panel, is an improper modification of Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy, which allows for an Additional Submission only upon the request of the panel. The Panel determines that the Forum’s Supplemental Rule 7 is valid and overrules this objection.
On the merits, Respondent’s Additional Submission restates that Respondent had no awareness of the mark when it registered the domain name, and therefore cannot have acted in bad faith when registering the name. Also, Respondent comments on Complainant’s assertion that it is a serial cybersquatter. Respondent points out that while it has been a respondent in a number of UDRP disputes where the Panel transferred the name to the complainant, in a substantial number of those cases Respondent consented to the transfer. Respondent also notes that it has prevailed in seven decisions.
The Panel finds that (a) the domain name is identical or confusingly similar to a mark in which Complainant has rights; (b) Respondent has no rights or legitimate interests in the domain name; and (c) the domain name was registered and is being used 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.
The domain name wholly incorporates
Complainant’s ALIVEHOSPICE mark, and the TLD “.com” is not considered in making
this determination. See Jerry Damson,
It is not disputed that Respondent is not commonly known by the name. It is also not disputed that Complainant has not licensed Respondent to use the name. The only basis Respondent puts forward regarding rights or legitimate interests is that by using the name to earn pay-per-click revenues, Respondent is engaged in a bona fide offering of goods or services. The Panel need not determine here whether the pursuit of pay-per-click revenues is ever a bona fide offering of goods and services, which would support a conclusion that the respondent has rights or legitimate interests in a domain name. Decisions in this area are mixed. See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002). See also, EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007). But see, Vance Int’t, Inc., v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007). These decisions show that there is no uniformity on the issue of whether the pursuit of pay-per-click fees is a bona fide offering of goods or services. However, in this instance the domain name resolves to a website that acts as a portal to other sites, some of which are sites controlled by Complainant’s competitors. It is one thing to earn pay-per-click fees, and quite another to redirect Internet users seeking information about Complainant to sites controlled by Complainant’s competitors. Using an identical or confusingly similar domain name to redirect Internet users to a competitor’s website is not a bona fide offering of goods and services.
While Respondent maintains that it was
unaware of Complainant’s mark at the time it registered the name, this appears
to the Panel to be unlikely. The domain name is not a common term such as
“final score,” the term at issue in the Eastbay
case cited above. The term ALIVEHOSPICE is internally contradictory and
unusual and cannot be deemed to be generic. Moreover, the mark has been used in
commerce by Complainant since 1975, and a website with the mark, <alivehospice.org>,
has been used since 2002. At the time that Respondent registered the name,
Complainant’s trademark application was on file at the USPTO. These facts put
Respondent at least on constructive notice, if not on actual notice of the mark
at the time it registered the name. Respondent’s continuing use of the name to
redirect Internet users to Complainant’s competitors by use of a confusingly
similar name is clearly in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <alivehospice.com> domain name be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: August 14, 2008
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