Claim Number: FA0904001255417
PARTIES
Complainant is Park Avenue Capital LLC (“Complainant”), represented by Joel R. Feldman, of Greenberg, Traurig,
LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mdemail.net>,
registered with Godaddy.com, 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.
James Bridgeman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 1, 2009; the National Arbitration Forum received a hard
copy of the Complaint on April 2, 2009.
On April 1, 2009, Godaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <mdemail.net>
domain name is registered with Godaddy.com, Inc. and that the Respondent is the
current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, 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”).
An Amended Complaint was filed on April 7, 2009.
On April 14, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 4, 2009 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@mdemail.net by e-mail.
A timely Response was received and determined to be complete on May 1,
2009.
On May 5, 2009, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed James Bridgeman as Panelist.
Subsequently, Complainant’s Additional Submission that complied with
Supplemental Rule 7 was received on May 7, 2009 and Respondent’s timely
Additional Submission was received on May 10, 2009.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of the mark .MDEMAIL in the
Complainant offers secure and encrypted electronic communications services,
including e-mail and instant messaging, for medical and healthcare
professionals.
Complainant states that secure e-mail is necessary in the medical and
healthcare professions as a result of the Health Insurance Portability and
Accountability Act ("HIPAA"), which
was passed into law by the United States Congress in 1996. Complainant uses <mdemail.md> to both advertise and provide its
services. Specifically, Complainant's
users can log into their account and send and receive secure e-mails and
instant messages at <mdemail.md>.
As a result of Complainant's registration and use of the .MDEMAIL mark
for several years, Complainant enjoys strong
rights in this mark. Complainant's ownership of a federal trademark registration provides notice to the
public, including Respondent, of Complainant's exclusive rights in the .MDEMAIL mark, as does Complainant's use of the
trademark registration symbol, ®, throughout its web site. Members of
the public were able to object to
Complainant's obtaining these rights, but did not do so.
Complainant submits that Respondent's <mdemail.net> domain name is confusingly similar to Complainant's
registered .MDEMAIL trademark and
<mdemail.md> domain name. The ".mdemail" (sic) portion of
Respondent's domain name is identical to Complainant's .MDEMAIL mark — it is visually
identical, the pronunciation is identical, and the connotation and commercial impression are identical. The addition of
".net" does not alleviate the identicalness of the <mdemail.net> domain name and
Complainant's .MDEMAIL mark. See Gardline Surveys Ltd. v.Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) ("The addition of a
top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.").
Complainant further submits that in addition to
using a confusingly-similar domain name, Respondent's web site is virtually identical to
Complainant's web site. Respondent is offering an identical service — secure
e-mail and instant messaging. Respondent is targeting an identical class of consumers — healthcare
companies and providers. And Respondent's web site employs identical colors to
Complainant's web site. Respondent is engaging in blatant trademark infringement and is
using an infringing domain name to do so.
Because
many Internet users are accustomed to using search engines such as <google.com> to find products and services on
the Internet, it is also important to note that Respondent's infringing <mdemail.net> domain name appears as
the third result on a search for "mdemail" on <google.com>. As a result, it is highly
likely that Respondent's infringing use of <mdemail.net> will result in misled, diverted, and confused consumers.
Complainant submits that as a result of
Complainant's rights in the .MDEMAIL trademark for electronic mail services, Respondent
cannot establish legitimate rights or interests in the <mdernail.net> domain name for
identical services under Paragraph 4(c) of the Policy.
Complainant alleges that Respondent is not using the
<mdemail.net>
domain name for the bona fide offering of goods or services and asserts that Respondent
is using the infringing <mdemail.net> domain for the express
purpose of leading potential consumers for Complainant's services to a commercial web site
that is not affiliated with, nor otherwise sponsored or approved by Complainant,
and which offers services directly competitive with Complainant's services.
Accordingly, Respondent's use of <mdemail.net> is not open, honest, or sincere, and
therefore is not a bona fide offering of goods or services under Section
4(c)(i) of the Policy. See Computerked
Security Services, Inc. d/b/a SAFLOCK v. Bennie Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
("Respondent's use of a domain name confusingly similar to Complainant's mark to
sell goods in direct competition with Complainant's goods is neither a bona fide
offering of goods or service pursuant to policy
4(c)(i) nor a legitimate noncommercial or fair
use pursuant to policy 4(c)(iii)"); see inter alia Vapor Blast Mfg. Co.
v. RTech.
Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001)
Based on its rights under the Policy, on February 23,
2009, Complainant notified the domain-name
registrar, GoDaddy.com, that
Respondent's <mdemail.net> domain name violated Complainant's trademark rights. On
February 24, 2009 Respondent filed a "Counter Notification"
summarily stating only "[t]he use of my MDEmail.net
domain name is not a trademark infringement upon the trademark `.mdEmail.'
I request immediate re-enablement of my hosting service at address http://mdemail.net/."
Following Respondent's misrepresentation to GoDaddy.com,
Complainant's counsel sent a cease-and-desist letter to Respondent demanding
that it cease its infringing use of <mdemail.net> and transfer the domain
name to Complainant. Although Respondent received
an electronic copy of the cease-and-desist letter, the Federal Express delivery of the letter was refused
and Respondent has ignored follow-up phone calls from Complainant's counsel.
Complainant submits that there is no question
that Respondent received Complainant's cease-and-desist letter, as it was sent to the same e-mail address that
Respondent used to send the "Counter Notification" to GoDaddy.com.
Respondent is not commonly known by the name
"mdemail." According to both
the WHOIS information and the <mdemail.net> web site, Respondent is
known as “CryptoHeaven." Accordingly,
Respondent does not have any right to
use the name "mdemail" by virtue of its name. In addition,
Complainant has not licensed, consented
to, or authorized Respondent's use of the .MDEMAIL mark or the <mdemail.net>
domain name.
Respondent is not currently using the <mdemail.net> domain name for a
legitimate noncommercial or fair use. As stated above, the <mdemail.net>
domain name is used to sell and deliver
Respondent's services. Accordingly, Respondent's use of <mdemail.net> is clearly commercial. In addition, as noted above, under the Panel's decisions in Computerked Security Services,
Inc. dl b/ a SAFLOCK v. Bennie Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) and numerous other Panel decisions, Respondent's
use of a web site to sell services in direct competition with
Complainant's services is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Based on the foregoing, Complainant submits that Respondent has no
legitimate rights or interests in the <mdemail.net> domain name and is
therefore not entitled to retain ownership of the <mdemail.net> domain name in light of Complainant's well-established trademark
rights in the .MDEMAIL mark.
Complainant submits that Respondent has registered and
is using the domain name in bad faith. Complainant submits that Respondent is
using the <mdemail.net> to infringe
Complainant's registered .MDEMAIL trademark and to directly compete with Complainant
in the
Under Policy ¶ 4(b)(iii), if by using the <mdemail.net> domain name, Respondent intentionally attempts to attract, for
commercial gain, Internet users to its web site(s) by creating a likelihood of confusion
with Complainant's .MDEMAIL mark as to source, sponsorship, affiliation or endorsement of its web sites, this intent
is evidence of bad faith.
Based on Complainant's federal registration of the
.MDEMAIL mark and longstanding use of <mdemail.md>, at the time Respondent
registered the <mdemail.net> domain name, Respondent knew or
should have known of Complainant's rights in the .MDEMAIL trademark. Respondent registered the <mdemail.net>
domain name, which contains the entirety of Complainant's .MDEMAIL mark, in
order to attract Internet users to its web site.
Respondent's use of the .MDEMAIL mark in the <mdemail.net>
domain name suggests
to consumers interested in HIPAA-compliant e-mail and instant messaging
services that
Respondent's services are affiliated with Complainant. They are not.
Based on the foregoing, Complainant has
established a prima facie case that Respondent registered and is using the <mdemail.net> domain name in bad
faith. Because Complainant has established
rights in the .MDEMAIL mark and Respondent does not, the Policy dictates that
the <mdemail.net> domain name be transferred from Respondent to Complainant.
Respondent has added a disclaimer to its web site, presumably in response to Complainant's demands, which reads:
"MDEmail.net is not affiliated with Park Avenue Capital LLC dba
Complainant."
While this disclaimer clearly shows that
Respondent is aware of Complainant's objection, the disclaimer is ineffective for several reasons.
Firstly, the disclaimer ignores the purpose of a
trademark. A trademark is a consumer shortcut that identifies a source, often in lieu
of a trade name or corporate name.
Secondly, the
disclaimer does not remedy the fact that a computer user was drawn to Respondent's web site
as a direct result of Respondent's use of an infringing domain name. This "initial
interest confusion" is not immediately dispelled as it would be if a
computer user went to www.pepsi.com and found COCA-COLA for sale on
the web site. Rather, because Respondent is
using an identical mark for its services, a consumer will not immediately
know that they have reached Respondent's web site in error. As a result, consumers are less likely to correct their mistake
by hitting the "back" button on their web browser.
Thirdly, Respondent has
placed links to <mdemail.net> on numerous third-party web sites including <qarchive.org>, a web site that allows third
parties to post their software offerings
When a computer user
downloads the infringing MDEMAIL software, the <mdemail.net> web
site is accessed in the background. But because the users of these third-party
software web sites are not actually being
redirected to <mdemail.net>, they will never see the disclaimer.
In addition, as a result of Respondent
placing links to <mdemail.net> on various third-party web sites, <mdemail.net> appears higher in the
<google.com> search result rankings. As <mdemail.net> appears closer and
closer to <mdemail.md>, the
top-ranked Google search result for "mdemail," the chance that
consumers will mistakenly click on a
link to <mdemail.net>
is increased. Therefore, it is necessary for Complainant to take over
this domain name to prevent further consumer confusion.
Although Respondent is
based in
B. Respondent
Respondent argues that the domain name at issue is
a generic term, that Complainant has not met a single condition of the Policy, and that the Complaint
should be denied. See Canned Foods, Inc. vs. Ult. Search Inc. Claim Number: FA0012000096320 (Nat. Arb. Forum February 2001).
Respondent submits that the <mdemail.net> domain
name is not identical or confusingly similar to a trademark or service mark in
which the Complainant has rights as required by the Policy.
Respondent submits that the domain name <mdemail.net> does not wholly incorporate the Complainant’s
registered .MDEMAIL mark. The term “mdemail” used in the domain name <mdemail.net> does not include the “.” (dot)
in front of the term as Complainant’s mark does.
Respondent submits that there are no parties who
have a registered trademark in the term MD email, and a general interest search
on the term "MD email" reveals that it is in widespread generic use. There are numerous
generic press references employing the term "MD email" to refer to a Medical Doctor email
among many others. There is no common law jurisdiction in which
trade or service mark rights will accrue to a generic designator of goods or
services. The name of a product or service itself is the very antithesis of a trade or service mark. Roux Laboratories v. Clairol,
Inc., 427 F2d 823 (C.C.P.A. 1970).
Complainant appears to separately claim a trade or
service mark right in the term "mdemail.net". For the purpose of
establishing such a right, this term is indistinguishable from the term
"MD email". Respondent’s MDemail term is comprised of generic terms, “MD” and “email”, that
are not exclusively associated with Complainant’s goods and services. See SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb.
Forum May 25, 2000) (finding that the Complainant failed to show that it should be
granted exclusive use of the domain name "SOCCERZONE.COM",
as it contains two generic terms and is not exclusively associated with its business); see
also Rollerblade, Inc. v. CBNO and Ray Redican Jr.,
D2000-0427 (WIPO Aug. 24, 2000) (finding that "genericness, if established, will defeat a claim of trademark
rights, even in a mark which is the subject of an incontestable
registration").
“MD email” is a generic term. Google search for
term “MD email” outside of the Respondent’s and Complainant’s context reveal 35400
distinct pages where the term “MD email” is used. Complainant could not obtain a
trademark for the common name and opted for .MDEMAIL term instead.
Respondent submits that there are many of other
enterprises that use the term "MD email," and Respondent has
furnished examples in an annex to the Complaint. therefore one cannot conclude
that Complainant must necessarily be the special target. See Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no
bad faith where the domain name involves a generic term, and there is no direct evidence
that Respondent registered the domain name with the intent of capitalizing on
Complainant’s trademark interest).
The “mdemail” portion of the Respondent’s domain
name has different pronunciation, and the connotation and impression is different from
Complainant’s .MDEMAIL mark.
Respondent’s place of business incorporation is
Respondent first became aware of the
Complainant’s .MDEMAIL mark on February 24, 2009. When Respondent became aware of the
Complainant’s mark being somewhat similar to its own <mdemail.net> domain name,
Respondent posted a disclaimer on its MDemail.net
web site stating “MDemail.net is a free
service not affiliated
with .mdEmail® of Park Avenue Capital LLC dba MaxMD.” A prominent link to Complainant’s web
site was also placed.
Respondent’s web site has different design,
different visual effects and art, and employs different colors than Complainant’s web site.
Respondent argues that
it has rights or legitimate interest in respect of the domain name
that is the subject of the complaint.
Legitimate rights and interests on the part of
the Respondent do not need to constitute trademark rights, but may include use or
preparation to use the domain name in connection with a bona fide offering of
goods or services.
Respondent is using the <mdemail.net> domain name for the bona
fide offering of services. Respondent is in the business of developing email
services for Medical Doctors and Health Care Providers among other Internet development
projects, as made apparent in the Complainant’s own evidence. The Complainant incorrectly
claims that the Respondent derives revenue from directing web traffic to the “mdemail.net” site. The
services offered by the Respondent are not directly competitive with MaxMD’s services. Respondent is exclusively offering
end-to-end encrypted services where
system and network administrators do not have the ability to decipher stored or
transmitted information. Complainant
does not offer end-to-end encrypted
services, but offers transfer layer encrypted services. Accordingly, Respondent’s use of <mdemail.net> is open, honest, and sincere, and therefore is a bona
fide offering of services under Policy ¶ 4(c)(i).
In the unlikely event that user would be
mistakenly redirected to Respondent’s website a disclaimer includes Complainant’s registered
trademark and includes a prominent link. This disclaimer effectively and immediately
dispels any “initial interest confusion”.
Respondent refers to itself as “MDemail.net Team”. Respondent does not control third-party web
sites and did not place links to <mdemail.net> on them. Any links on third-party
websites referring to <mdemail.net> website provide additional evidence that Respondent’s service at <mdemail.net>
is well known, established, and accepted by a
wide audience,
and further shows that Respondent is commonly known by the “MD email” and “MDemail.net” names; Policy ¶ 4(c)(ii).
Respondent’s MDemail.net
service was not primarily designed to satisfy the privacy and security requirements
mandated by HIPAA although it can be used to help achieve HIPAA compliance.
Although HIPAA is a
Respondent is using and has always been using the <mdemail.net>
domain for a legitimate noncommercial and
fair use. The <mdemail.net> domain name is not used to sell or deliver Respondent’s service for
commercial gain. In fact this is clearly
stated on every page of the <mdemail.net> website; Section 4(c)(iii) of the Policy.
The domain name <mdemail.net> was not registered or used in bad faith.
Respondent has not registered or acquired the
domain name primarily for the purpose of selling, renting, or otherwise transferring
the domain name registration to the Complainant.
Respondent is using the common term “MD email” in
the <mdemail.net>
domain name as
demonstrated by Google search results.
Respondent was not aware of the existing <mdemail.md>
domain name until it was notified by GoDaddy.com
regarding a formal trademark infringement claim on February 24, 2009.
Respondent is using the <mdemail.net> domain name in
connection to free offering of services.
Respondent uses a prominent and sufficient
disclaimer to immediately dispel any initial confusion should a user be redirected to
Respondent’s website in error.
Respondent’s offering of end-to-end encryption
services does not directly compete with Complainant’s transfer layer encryption business.
Complainant’s .MDEMAIL mark is registered in the
Respondent’s domain name “mdemail.net” does not infringe
Complainant’s .MDEMAIL mark. Respondent’s domain name “mdemail.net” does not include the “.”
(dot) in front of the term. Since the name “mdemail.net” does not wholly
incorporate the Complainant’s .MDEMAIL mark, it cannot infringe upon said mark.
C. Complainant’s Additional Submissions
Complainant has demonstrated that it has rights
in the .MDEMAIL service mark by presenting
evidence of its ownership of a
The Panel's decision in
Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) does not apply to this case. Complainant is
not relying on its common-law rights; neither has Complainant disclaimed the
literal portion of .MDEMAIL in its trademark registration. Complainant owns a federal trademark registration for .MDEMAIL.
Respondent implies that Complainant’s trademark registration for .MDEMAIL is somehow deficient, but provides no
evidence to support this claim.
This is because Respondent's claim is baseless and without any truth in fact.
The Panel cannot discount the literal portions of Complainant s .MDEMAIL trademark registration simply
because Complainant has registered a stylized version of its mark. See
Orchard Supply Hardware TLC v. RareNames Web Reg, FA 1178941 (Nat. Arb. Forum June 27, 2008) ("The stylization of the OSH ORCHARD SUPPLY
HARDWARE service mark is irrelevant for the purposes of Policy ¶ 4(a)
(i)") citing Roux Labs., Inc. v. SheldeeBeau0 Salon, D2005-0799 (WIPO Sept. 30, 2005) ("The fact that
Complainant's stylized mark incorporates a distinctive design element is irrelevant to this analysis.
Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this
element"); Global Affiliates,
Inc. v.
Respondent argues that the individual terms "MD" and
"email" are generic terms, and
individually these terms are not exclusively associated with Complainant’s goods and services.
Respondent's allegations are not correct based on Complainant’s ownership of a federal registration for .MDEMAIL for
electronic mail services.
Respondent's argument incorrectly attempts to apply the
doctrine of genericism. Countless trademarks incorporate terms with dictionary
meanings. For instance, the famous trademark APPLE includes only the word
"apple," which <dictionary.com> defines as the "usually round, red
or yellow, edible fruit of a small tree." APPLE is generic for apples, but
arbitrary for computers.
Whether a trademark is
generic cannot be determined in a vacuum by showing that the individual words
comprising the trademark have established meanings. Rather, whether a trademark is generic
must be determined in the context of the particular goods or services with which the trademark is used. See J.
McCarthy, Trademarks and Unfair Competition § 12:1(4th ed. 2009) ("Of course, to properly be
called an unprotectable 'generic name' in trademark law, the designation must be the name of the same product
or service which it is alleged to
identify the source of. Certainly, a term can be a generic name of one thing
but be a valid trademark for some other
product") (emphasis added).
The question of whether a mark is generic is as
much a factual question as it is a legal question. Therefore, the holding in one decision
that a term is generic has limited, if any, applicability to a completely different mark. In Canned
Foods, the Panel held that the term "grocery outlet" was generic for
online resources for groceries and similar goods. In Soccerplex, Inc. d/ b/ a Soccersone, Inc. v. NBA
inc., FA 94361 (Nat. Arb. Forum May 25, 2000), also cited by Respondent,
the Panel held that the term SOCCER ZONE was generic for providing soccer
information and scores.
Complainant admits that the term "email" is generic
for electronic mail services. And Complainant admits that the term "MD," while not generic
or descriptive for electronic mail services, is a common abbreviation for
medical doctor. But, as the Panel held in GlobalRx, Inc. v. Global Internet MKTG c/o Jatin Jani, FA 1247953 (Nat. Arb. Forum Apr. 3, 2009), whether the terms
"email" and "MD" are common or generic individually is
irrelevant:
Respondent contends that the <globalrxpharmacy.com> domain name is comprised
of common, descriptive terms and as
such cannot be found to be confusingly similar to Complainant's mark. That the components of a mark or phrase may be common or even generic
terms does not resolve the question of whether in combination
they form a protectable mark. See
David Hall Rare Coins v.
Complainant is not
claiming the exclusive right to own domain names individually incorporating
the term "email" or "md." Rather, MaxMD is enforcing its
right, under the Policy, to prevent Respondent from using a domain
name that wholly incorporates MaxMD's registered .MDEMAIL mark.
The
composite mark .MDEMAIL is not generic for electronic e-mail services. Just as the
term APPLE does not describe computers, the term MD, or even medical doctor,
does not describe electronic mail services. Therefore, the composite mark
.MDEMAIL is not the generic name for electronic mail services, or even a subset
of electronic mail services.
Rather, it is the brand name for a specific provider of
electronic mail services. Accordingly, .MDEMAIL (and "MD email," which is
virtually identical to .MDEMAIL) is not generic for electronic mail services
and Respondent is not entitled to adopt a domain name that is confusingly similar to
the .MDEMAIL mark.
Respondent’s
evidence does not support its position that the mark .MDEMAIL, or even the term
"MD email," is generic for electronic mail services. Respondent has
attached the first ten search results for a
Google search for the term "MD email." None of these search results show use of the term "MD
email" in connection with electronic mail services. Rather, most of the search results simply show
instances where the terms "MD" and "email" appear
next to each other without respect to any specific good or service.
Despite Respondent's implication
that Complainant's .MDEMAIL service mark is or has become
genetic, this Panel is not empowered to deny Complainant's
complaint on the basis of alleged genericism
in light of Complainant's federal trademark registration. A Panel
considered an almost identical
question in Tetris Holding, LLC v. Smashing Conceptions, FA 1030720
(Nat. Arb. Forum Sept. 11, 2007). In Tetris,
the respondent alleged that the term TETRIS had become generic for falling
block games despite complainant's ownership of numerous trademark registrations
internationally. The Panel stated:
Issues concerning
trademark validity, which Respondent here raised in the context of a lack of registerability
owing to genericness
of the mark, are clearly not within the purview of any UDRP proceedings and
are best left for administrative and/or judicial adjudication. Not only is doing so
outside the very
limited and focused jurisdiction afforded to ICANN panels under the Policy but
moreover the summary and rather abbreviated
nature of UDRP proceedings totally precludes the establishment of a fully
developed factual record that underlies such a question.
UDRP panels cannot and
hence do not assess the validity of any federally registered trademark. Instead, such
panels must, of
necessity, accord significant deference to decisions of that government body, namely
the USPTO, which, in the first instance not only possesses the requisite expertise to
assess such issues
but also the federal statutory mandate to do so. It is simply not within the
purview of any UDRP panel to evaluate and review the judgment of the USPTO on such questions.
* * *
Hence, once the USPTO
has made a determination that a mark is registerable, as it has here by
issuing a registration to Complainant for its mark TETRIS, a UDRP panel is not empowered to nor should it disturb that
determination.
See also HRB Royalty, Inc. v. Asif Vadaria, WIPO Case No. D2007-1658 ("That it is
not for a panel to second guess the validity
of a trademark on the grounds of its supposed generic nature is a stance that has been adopted by so
many cases that this Panel would suggest that there is now a consensus view on
this issue"); GlobalRX, Inc. v. Global Internet MKTG c/o jatin Tani,
FA 1247953 (Nat. Arb. Forum Apr. 3, 2009) ("If Respondent wishes to
pursue its contention that the GLOBALRX
marks are descriptive or generic, this is not the forum to do so, at
least not based on the evidence Respondent has adduced").
Respondent has failed to refute Complainant's evidence that
Respondent's domain name is confusingly
similar to Complainant's registered
.MDEMAIL service mark.
Respondent possesses no legitimate rights or interest in
the <mdemail.net>
domain name.
In its Complaint, Complainant presented a prima
facie case that Respondent does not have any right to use <mdemail.net>, which
is confusingly similar to Complainant's registered .MDEMAIL service mark. Accordingly, the burden has
shifted to Respondent to prove that it has legitimate rights or interests in the <mdemail.net>
domain name pursuant to Policy ¶ 4(a)(ii). See Do The Hustle,
I,LC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once complainant
asserts that the respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to the respondent to provide "concrete evidence that it has rights to or legitimate interests in
the domain name at issue").
Other
than its alleged genericness evidence, Respondent has not presented any other concrete
evidence with respect to its alleged rights in <mdemail.net>. Therefore, Respondent's
arguments should immediately fail.
Respondent is attempting
to avoid the unavoidable fact that its services are used in the
Respondent also states
in its Response that "Respondent is using and has always been using the <mdemail.net> domain for a
legitimate noncommercial and fair use. The <mdemail.net>
domain name is not used to sell or deliver Respondent's services for commercial gain." And Respondent alleges
"[t]he Complainant incorrectly claims that the Respondent derives revenue from directing web
traffic to the `mdernail.nef site." The concrete evidence in
this case, available on Respondent's own web site, directly contradicts Respondent's
sworn and certified statement to the Panel.
Although Respondent
states on its web site that its services are "free," various pages on Respondent's web site
suggest that the services are not free. For instance, at <http: / /mdemail.
net/hipaa-medical-email-security/secure-email/36-services/67-secureemail.html>,
Respondent states "Low Cost — We offer extremely
competitive price for a secure and encrypted
system." Similarly, at <http://mdemail.net/hipaamedical-email-security/about-us.html>, Respondent
states "MD email is targeted to groups of
healthcare professionals looking to achieve HIPAA compliance with minimal cost
and no technical expertise."
It appears that Respondent has attempted to
make superficial changes to its web site to
circumvent the application of the Policy to Respondent's registration and use
of an infringing domain name. Compare Complainant’s evidence (attached to MaxMD's Complaint) with Respondent's (showing that claim
of "free service" was added after MaxMD filed its Complaint). But Respondent was clearly engaged in the offering
of commercial services on <mdemail.net> at the time Complainant filed its complaint, and it
appears that Respondent is still engaged in
the offering of commercial services. Even if Respondent does not charge for various aspects of its services (e.g.,
trial versions), Respondent is a for-profit enterprise offering electronic mail services that compete
directly with Complainant's electronic mail services. Accordingly,
Respondent's web site is not noncommercial in any way, shape, or form.
Finally, Respondent
states that "Respondent does not control third-party web sites and did not
place links to <mdemail.net> on them." The concrete
evidence in this case, available on each of the third-party web sites, directly
contradicts Respondent's sworn and certified
statement to the Panel. As shown in Complainant's evidence Respondent's infringing software is available through <qarchive.org>.
According to the Terms of Service for <qarchive.org>,
"any software with the author's
descriptions is presented by the software authors using their PAD files or submitted via QArchive.org programs submission system."
Similarly, Respondent's infringing
software is available on <wareseeker.com>.
According to the Terms of Service for
<wareseeker.com>, "WareSeeker
allows the users to submit and post different content on the web."
While Respondent claims
that it did not place links to <mdemail.net> on the third- party web sites, Respondent has not provided
any evidence to support this claim. Because the
objective evidence proves that, in fact, Respondent did upload its software to
the third- party web sites and/or
provide links to <mdemail.net>, Respondent's contrary
statement should be disregarded by this Panel.
Because Respondent
has adopted a confusingly-similar domain name to offer services that compete with Complainant's services, Respondent is not
offering bona
fide services.
Respondent alleges that
it is "using the <mdemail.net> domain name for the bona
fide offering
of services." In support of its allegations, Respondent argues that there
are nuanced differences
between Respondent's and Complainant's electronic mail services. But Respondent does not refute the
undeniable evidence that Respondent is using the <mdemail.net> domain name to advertise
and promote electronic mail services, for which Complainant has exclusive
service mark rights.
Complainant has no opinion of the
legitimacy of Respondent's business or the efficacy of Respondent's electronic
mail services. But, as explained in Globallix, Inc., the legitimacy of a
respondent's
business is completely irrelevant to the consideration of whether an offering
of goods or services is bona
fide under the Policy, when the respondent uses the complainant's trademark
or service mark.
In this case, Respondent
is using a term confusingly similar to Complainant's .MDEMAIL mark both as the name of Respondent's service, and within
the domain name used to advertise, promote, and distribute Respondent's services.
While MaxMD's and Respondent's services may not be identical, they are close enough to be
competitive. Complainant
and Respondent are both offering secure electronic mail services to medical
doctors and
health care providers, as Respondent openly admits in Section 3[131 of its
Response.
Accordingly, Respondent's offering of services cannot be
a bona fide offering of goods or services as a matter of law. The fact that Respondent's
web site may look different is irrelevant, since the only issue is the similarity of
Respondent's infringing domain name and MaxMD's registered service mark. As a result,
Respondent lacks rights and legitimate interests in the <mdemail.net> domain name under Policy ¶ 4(a)(ii).
Respondent
registered and is using <mdemail.net>
in bad faith.
A.
Respondent's registration and use of a
confusingly-similar domain name to advertise and promote services that compete with Complainant constitutes bad faith.
Because:
(i) Respondent has failed to refute Complainant’s
evidence that Complainant owns the .MDEMAIL service mark for
electronic mail services; (ii) Respondent has failed to refute that
.MDEMAIL and <mdemail.net> are confusingly similar;
and (iii) Respondent has failed to present any concrete evidence that it
is entitled to use <mdemail.net> to compete with Complainant, Respondent
has registered and is using the <mdemail.net> domain name in bad faith.
Respondent alleges that
it was not aware of Complainant's .MDEMAIL mark, but Respondent's allegation is irrelevant. Respondent's lack
of awareness of Complainant's registered
.MDEMAIL trademark is not sufficient to allow Respondent "to take
predatory advantage
of [Complainant's] reputation and
goodwill in the .MDEMAIL mark." See Tropicana Products, Inc. v. Chris Dunne, FA 1235498 (Nat. Arb. Forum Jan. 13, 2009).
Respondent's disclaimer does not sanitize Respondent's bad faith use and registration of <mdemail.net>.
Respondent
alleges that "[i]n the unlikely event that user would be mistakenly
redirected to Respondent's website a disclaimer includes Complainant's
registered trademark
and includes a prominent link. This disclaimer effectively and
immediately dispels any 'initial
interest confusion."' As explained below, Respondent's disclaimer
does not negate bad faith.
Respondent’s
use of a
confusingly-similar domain name creates the most prevalent type of domain name confusion — initial interest
confusion. Internet users seeking Complainant's
web site are likely to accidentally arrive at Respondent's web site either
through Google or an
incorrectly-typed gTLD. This type of confusion has been the basis of domain name transfers in hundreds of UDRP cases,
including David Foox v. Bill Hicks, in which the panel explains why initial interest confusion is
the type of evidence from which confusing similarity can be inferred:
What is the consequence of a third party adopting
for itself the name/trade mark (without any addition or adornment) of a trade mark owner
and using it to connect to a website? The inevitable consequence is that there will be
initial interest confusion. A substantial proportion of Internet users visiting the site will be doing so in the hope and
expectation of reaching a site of (or
authorized by) the trade mark owner. When they reach the site they may realize that they have been duped, but in any event the registrant's objective of bringing
them there will already have been achieved.
WIPO
Case No. D2008-0397 (May 30, 2008); see also Christian Dior Couture v. Major,
Inc., WIPO
Case No. 2008-0068 (holding that attempting to attract Internet users to a web
site by using
well-known marks is initial interest confusion and creates a likelihood of
confusion as to source,
sponsorship, affiliation or endorsement).
Immediately upon landing on <mdemail.net>,
consumers are immersed in information
regarding Respondent's electronic mail services that directly compete with Complainant's electronic mail services. Internet users seeking Complainant's .MDEMAIL services are far
more likely to explore Respondent's web site as a result of Respondent's use of
a confusingly-similar domain name
than they would be if Respondent did not use a confusingly-similar domain name. Accordingly, as soon as Internet users
reach <mdemail.net>, Respondent has
already accomplished its objective of bringing traffic to its web site
through the use of a confusingly-similar domain name.
Panels have consistently held that disclaimers
similar to Respondent's disclaimer do not negate bad faith. See, e.g.,
Tropicana Products, Inc. v. Chris Dunne, FA 1235498 (Nat. Arb. Forum Jan. 13, 2009)
("The use of a disclaimer by Respondent [does not] mitigate the negative effects of an otherwise identical or
confusingly similar disputed domain name pursuant
to Policy ¶ 4(a)(ii)"). In addition, providing a link to Complainant's web
site also does not negate bad faith. See
NY Times Co. v. NY Internet Servs., D2000-1072
(WIPO Dec. 5, 2001) ("[d]isclaimers and links directly to the
authorized site do not mitigate matters").
In GlobalRx, after
receiving the complainant's complaint, Respondent added a disclaimer that '"Respondent has 'no
relation with GlobalRx© [sic] or the site GlobalRX.com."' Globalla, Inc. v.
Global Inteniet MKTG c/o Jatin Jani, FA 1247953 (Nat. Arb. Forum Apr. 3, 2009). The Panel held that the respondent's disclaimer
did not prevent a finding of bad faith.
Accordingly, this Panel should not consider
Respondent's disclaimer to mitigate its bad faith behavior. Rather, as shown
throughout Complainant's Complaint
and Additional Statement, Respondent not only continues to use <mdemail.net>
in bad faith, but it also makes false sworn statements in its Response to
attempt to wrongfully retain ownership of the domain name.
In conclusion, Respondent has failed to
successfully refute any of MaxMD's allegations in its Response. Therefore, MaxMD respectfully
requests that this Panel find in MaxMD's favor and order the transfer of the
<mdemail.net>
domain name.
D. Respondent’s Additional Submissions
In additional
submissions, Respondent asserts that it is engaged in providing free and
non-commercial medical doctor email service commonly referred to as Medical
Doctor Email service also known as MD email service. In the context of domain
name registration, the term “MD email” is identical to the term “mdemail”
because domain names can only consist of alphanumeric text. Since the service
offered through mdemail.net domain is exactly what the name describes and is
provided to medical doctors, it constitutes fair and legitimate interest in the
domain name.
Respondent claims
that “MD email” term is generic in context of medical doctor email which
consequently leads to the term “mdemail” being used as an appropriate domain
name term.
Even though the
Complainant has federal trademark registration for .MDEMAIL finding that
genericness, if established, will defeat a claim of trademark rights in context
of medical doctor email, even in a mark which is the subject of an
incontestable registration.
Respondent
provided evidence to support the claim that Complainant
would not be able to obtain a trademark for the term “Medical Doctor Email” or
“MD Email” for medical doctor email service because such a term is common and
already in wide use in context of medical doctor email.
Complainant failed
to show that Respondent’s common term “MD Email” is not used with connection to
goods and services described by the term itself.
Respondent is
using the term “MD Email” as a common term which describes services it
provides, and to whom they are being provided. For this reason alone,
Respondent cannot be prevented to use this term by anyone having a registered
trademark for other purposes. The name of a product or service itself is the
very antithesis of a trade or service mark.
Complainant is
alleging that Respondent failed to show that term “MD Email” is generic. This
would be true if the term was used in context other than medical doctor email.
Since Respondent showed that “MD Email” is a common term in wide spread use,
and that it is being used in the context of medical doctor email, the proof of
genericism is sufficient. See McCarthy, Trademarks and Unfair Competition §12:1
(4th ed. 2009) (“Of course, to properly be called an unprotectable ‘generic
name’ in trademark law, the designation must be the name of the same product or
service which it is alleged to identify the source of. Certainly, a term can be
a generic name of one thing but be a valid trademark for some other product”) . The Respondent is using the term to identify the same
service which it identifies.
Since the term MD
is generic for medical doctor and term “email” is generic for electronic email
services, combined term “MD email” is necessarily a generic term for medical
doctor electronic e-mail services. Respondent is not providing a generalized
email service under the term “MD email”. Respondent is not providing a
generalized medical doctor service under the term “MD email”. Respondent is
providing a medical doctor email service under the term “MDemail”.
Respondent showed
that Google search result for the term “MD email” returns many thousands of
pages with the term present. It is unreasonable that anyone would be required
to separately analyze each occurrence to determine the degree of relevance in
which it applies to this case. Furthermore Google search results are not
necessarily ranked in sequence of relevance to this particular case so a
presumption that the top result is the one most relevant is baseless and has no
truth in fact. In an annex to its submissions, Respondent
shown an example of how the term “M.D. E-mail” is used in reference to medical
doctor email. This term is virtually identical to the term “M.D. Email”
since terms “E-mail” and “Email” are synonyms.
Consequently the
terms “M.D. Email” and “MD Email” and “mdemail” are identical in context of
domain name registration since domain names can only consist of alphanumeric
text.
For the reasons
stated above the Respondent has legitimate rights and interest to use the
‘mdemail.net’ domain for purposes of exactly what the “MD Email” name itself
describes, which is medical doctor email.
Although Complainant
claims that Respondent’s services offered on mdemail.net website are not free
pointing out to few confusing articles does not prove that Respondent is
charging any monetary amount for mdemail.net services. In fact the “Low Cost”
and “price” terms referred by the Complainant do not refer to any amount of
money which would have to be rendered in exchange for using services presented
on the mdemail.net website. Furthermore, the website clearly states that
services presented on the mdemail.net website are free and it is true in fact.
At most this shows that mdemail.net website is poorly written and still under
development.
Complainant has
failed to show any evidence that Respondent is using mdemail.net domain name
for commercial gain. The Panel should find that the domain name is being used
for a legitimate noncommercial and fair use, without intent for commercial
gain.
The Respondent is
not in exclusive control of any third party websites in placing links to its
own website. Even though <qarchive.org> websites states in their Terms of
Service that “descriptions is presented by the software authors using their PAD
files or submitted via QArchive.org programs submission system” this does not
prove that such Terms of Service are well enforced.
Posting a
statement alone without backing it up with concrete evidence does not
necessarily present the truth in fact. Similarly according to the Terms of
Service for <wareseeker.com> “WareSeeker allows the users to submit and
post different content on the web” does not necessarily mean that authors have
exclusive access to post their content on their page. The enforceability of
third party website Terms of Service has not been shown.
The Respondent
should not be required to prove the non-placement of the links on third party
websites because it is very hard to prove the action of inaction. Therefore it
is the Complainant’s responsibility to prove that such action in fact took
place. The Complainant failed to provide any evidence to this claim because
none exists.
The Complainant
has not dispelled the fact that Respondent is commonly known by the name “MD
Email.net Team.” This shows that although the Respondent has not acquired
trademark or service mark rights, it is in fact commonly known by the domain
name.
The Respondent has
clearly shown that the domain name is used in connection with bona fide
offering of services. Also Complainant has failed to prove bad faith.
FINDINGS
Complainant is the owner of
Complainant has used the
.MDEMAIL mark and <mdemail.md> domain name
in connection with electronic mail services since at least March 27, 2006.
Respondent is the registrant of the domain
name in dispute, registered on June 19, 2008.
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.
Complainant asserts its rights in the .MDEMAIL mark through its registration
of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 3,332,337 issued November 6, 2007).
This Panel is satisfied that Complainant has sufficient rights in the mark to satisfy the requirements of Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark).
As to the issue of confusing similarity, this Panel accepts Respondent’s argument that the “mdemail” portion of Respondent’s domain name
when spoken is not confusingly similar to Complainant’s .MDEMAIL trademark.
Complainant’s trademark would be pronounced “ dot m d
email.” However the Panel concludes that there is a strong visual similarity
between the trademark, as registered, and the domain name at issue.
Previous panels have found the omission of a period from a mark to be
insufficient in distinguishing the disputed domain name from the mark under
Policy ¶ 4(a)(i).
See, e.g., Memoirs,
Inc. v. Patel, FA 98244
(Nat. Arb. Forum Aug. 28, 2001) (finding the domain name
to be confusingly similar where a period was omitted from the I.MEMOIRS mark
and the gTLD “.com” was added); see also
Furthermore it is well established that
the addition of a generic top-level domain name extension, such as “.net,” should
not normally be considered when comparing a mark and a domain name. See
Katadyn N. Am. v.
In the circumstances this Panel is
satisfied that the domain name <mdemail.net> is confusingly similar to Complainant’s
.MDEMAIL mark for the purposes of Policy ¶ 4(a)(i).
Complainant
has therefore satisfied the first element of the test as set out in Policy ¶ 4(a)(i).
It
is difficult to accept that Respondent is using the domain name for
non-commercial use as it claims, when all the indications are that the
Respondent is a commercial enterprise, nonetheless, this Panel accepts
Respondent’s argument that it has a right to use the domain name in
This
Panel accepts Respondent’s argument that the domain name at issue is generic or
descriptive of email services for medical doctors.
This
Panel accepts that Complainant is the owner of a
Respondent
argues that the terms incorporated in the disputed domain name are generic and
of common use and therefore, Complainant does not have an exclusive monopoly on
the terms on the Internet.
This
Panel must accept Complainant’s trademark registration as it finds it. It
cannot go behind the registration. Neither is it for this Panel to consider the
strength or weakness of Complainant’s rights in the registered federal trademark
within the
Furthermore
Complainant’s statutory rights are in the trademark .MDEMAIL (including the
period and as distinct from the letters “mdemail” simpliciter) and registered in a stylized form (as distinct from a
word mark simpliciter).
Whatever
distinctive character may exist in Complainant’s trademark as registered, there
is nothing distinctive about the combination of the “md” and “email” elements
in the domain name in dispute.
In
the view of this Panel, it follows that Respondent has correctly argued that
Complainant’s
In
the view of this Panel, and given the limitations of procedures under the
Policy, Respondent therefore has established a prima facie case that it has rights or legitimate interest in the domain
name at issue.
It
follows that the Complainant has failed to establish the second element of the
test in Policy ¶ 4(a) and the Complaint cannot succeed.
As the Respondent has made out a prima facie case that it has rights or
legitimate interest in the domain name and therefore the Complainant has failed
to establish the second element of the test in Policy ¶ 4(a)(ii), it is not necessary for this
Panel to consider whether the domain name was registered and is being used in
bad faith.
This is an unusual case and this decision is based on an unusual and
unique set of facts. It would be inappropriate to extrapolate any general
principles from this decision.
Complainant relies solely on its statutory rights in the registered
trademark. Complainant makes no claim to common law rights either within the
While Respondent has asserted that it is restricting the provision of
its services to jurisdictions outside the
In the event that such evidence comes to light Complainant may perhaps
be entitled to bring a new complaint under the Policy or bring proceedings in
another forum insofar as any such use
of the domain name within the
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
James Bridgeman, Panelist
Dated: May 19, 2009
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