Lime Medical, LLC v. RJ Ertlmaier d/b/a Lime
Medical Group
Claim Number: FA0905001264163
PARTIES
Complainant is Lime Medical, LLC (“Complainant”), represented by Michael Feigin, of Law Firm of Michael J.
Feigin, Esq.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is <limemed.com>
and <limemedicalsupplies.com>,
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.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 21, 2009; the National Arbitration Forum received a hard
copy of the Complaint on May 22, 2009.
On May 21, 2009, Godaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <limemed.com>
and <limemedicalsupplies.com>
domain names are registered with Godaddy.com, Inc. and that the Respondent is
the current registrant of the names.
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”).
On May 29, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 18,
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@limemed.com and postmaster@limemedicalsupplies.com
by e-mail.
A timely Response was received and determined to be complete on June
18, 2009.
Complainant submitted an Additional Submission to the National
Arbitration Forum on June 19, 2009, which was deemed timely in accordance with
the National Arbitration Forum’s Supplemental Rule 7.
On June 23, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant states that it is part of a famous and well known
company, “Lime Group,” makers of the LimeWire software, amongst other products
and services.
The Complainant alleges that the name “Lime,” in connection with
healthcare services, is arbitrary. At
least in sound, sight, and channels of commerce, it is quite obvious that the
Respondent’s use of names derived from “Lime Medical” in connection with health
care services is confusingly similar.
More specifically, the disputed domain names are uncannily close to the
Complainant’s name, and the Respondent has, in fact, used this name in
connection with “Lime Medical Group” which is uncannily similar to both “Lime
Medical” and “Lime Group,” the trade names of the Complainant.
According to the Complainant, the Respondent was notified of the likelihood of confusion of his trade
name, “Lime Medical Group” on April 20, 2009, and has made an implicit
admission to same by his agreement to change his business name.
Further, says the Complainant, the disputed domain names have been used
by physicians for health care purchasing services under the name “Lime Medical
Group” and are also based on the implicit admission of the Respondent and pursuant to ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i), confusingly similar to a
trademark in which the Complainant has at least common law rights, at this
time.
The Complainant states that, pursuant to ICANN Rule 3(b)(ix)(2);
ICANN Policy ¶ 4(a)(ii), the Respondent has no legitimate right to the disputed
domain names. The Respondent’s website
was/is nothing more than a phishing scam seeking to gain client information
from those who would seek out the Complainant’s services. Still further, the Respondent’s address and
principal place of business (listed in the registrant data for the domain names
in dispute) are bogus. Mail to this
address is returned with a stamp marked, “No such address.” Respondent has no known clients, no known
sales, and not even a description of an actual product or service to be sold.
The Complainant makes other allegations about the Respondent, but, in
the Panel’s opinion, the evidence it presents does not support the allegations,
which might be considered to be defamatory.
Since the allegations in question are in any case not relevant for the
present case, the Panel will not summarize those allegations here.
In addition, says the Complainant, the Respondent has chosen to
register names confusingly similar to that of the Complainant in bad
faith. Put another way, it is extremely
improbable that the Respondent did not come across the domain and services
advertised in connection with the Complainant’s web site
<limemedical.com> when searching for available domain names and
registering the disputed domain names.
Each name is a derivative and variation of the Complainant’s domain
name, and the arbitrary choice of “Lime” in connection with services in the
same channels of commerce is strong evidence of bad faith on the part of the
Respondent. The Respondent clearly
attempted to attract, for commercial gain and in bad faith, the clients of Lime
Medical.
B. Respondent
According to the Respondent, the disputed domain names are derived from
the company’s legal name, Lime Medical Group.
They were registered when the company name was legally registered in
The Respondent states that it intends to sell medical supplies, not
software, so its products are not confusingly similar to those of the
Complainant. The Respondent is a group
purchasing organization: it groups buying power together and negotiates
discounts for its clients.
The Respondent presents printouts of its web site, showing that indeed
it plans to develop group purchasing services for medical supplies.
C. Additional Submissions
In its Additional Submission, the Complainant states that the disputed
domain names are confusingly similar to its mark.
Further, says the Complainant, the Respondent has shown no evidence
that any legitimate business has been conducted. There are no profit and loss statements signed
by the business’s CPA, no accounting records, no sales receipts, no invoices,
no date-verifiable material, and so forth.
According to the Complainant, anyone, using their own personal address,
can pay a fee and file a business registration, whether legitimate or
illegitimate. In NJ, the process is
online and takes about ten minutes. A satellite view of the address of this
“business” reveals that it is a beach club bungalow house on the
FINDINGS
The Respondent has made actual preparations
to use the disputed domain names in connection with a bona fide offering of services.
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.
Under the Policy, the Complainant must prove
that it has a trademark which is confusingly similar to the disputed domain
name. In the present case, the
Complainant does not assert that it has a registered trademark, but it does
allege that it has common law rights in the mark “Lime Medical”. However, it does not present any evidence of
actual use of that mark to sell products or services.
On the contrary, its website at
<limemedical.com> states:
Stay tuned! We are
currently preparing our first products for market. Please let us know how to
reach you and we will let you know when we open for business.
Thus, it isn’t obvious that the Complainant
actually has trademark rights in the term LIME MEDICAL. See Build-A-Bear Workshop,
Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding
that the complainant did not establish common law rights in the BEAR BUILDER or
BEAR BUILDERS marks because the evidence it submitted was insufficient to show
the mark had acquired any secondary meaning); see also Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v.
Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that
the complainant did not submit sufficient evidence showing that its OCCIDENTAL
mark had acquired the necessary secondary meaning for it to establish common
law rights pursuant to Policy ¶ 4(a)(i)).
In any case, for the reasons set forth below,
it is not necessary for the Panel to further consider this element of the
Policy.
According to the Complainant, “the Respondent
has no known clients, no known sales, and not even a description of an actual
product or service to be sold”. The
first two allegations might be correct, but the last one is not.
Indeed, the evidence presented by the
Complainant itself (and supported by additional evidence presented by the
Respondent) includes printouts of web pages prepared by the Respondent that
describe in some detail, and extensively, a perfectly legitimate service,
namely grouped purchases of medical supplies.
According to the Complainant, the Respondent
cannot legitimately provide such services using the disputed domain names
because those domain names are confusingly similar to its “well known”
mark. But the Complainant does not
provide any evidence to show that its mark is well known. On the contrary, the Complainant’s website
merely indicates that some products are under development. And the word “lime” is a common word that
others use in connection with software products (see below for an example).
According to the Complainant, it is in the
medical software business. This is not
the same business as that of the Respondent, who plans to provide purchasing
services. Domain name registration is
basically a “first-come, first-served” business. The Policy exists only to prevent cybersquatting, that is the deliberate violation of
trademark rights.
A domain name that is confusingly similar to
a trademark, but is being used to promote a legitimate business that does not
conflict with that of the trademark owner, will be held to violate the Policy
only if the trademark is famous. As
noted above, the Complainant has not provided any evidence to support its
assertion that its mark is famous. Thus,
the Complainant has not provided evidence to show that the Respondent’s use of
the disputed domain names cannot be legitimate.
The Complainant asserts that the Respondent
intends to engage in phishing. But Wikipedia
(<wikipedia.org>) defines “phishing” as follows:
In the field of computer security, phishing
is the criminally fraudulent process of attempting to acquire sensitive
information such as usernames, passwords and credit card details by masquerading
as a trustworthy entity in an electronic communication. Communications
purporting to be from popular social web sites, auction sites, online payment
processors or IT Administrators are commonly used to lure the unsuspecting
public. Phishing is typically carried out by e-mail or instant messaging, and
it often directs users to enter details at a fake website whose look and feel
are almost identical to the legitimate one.
The Complainant has presented as evidence a
printout of part of the Respondent’s website.
The page presented by the Complainant does not present any of the
characteristics found in the Wikipedia definition. That page does contain a form that requests
information, but it does not masquerade as some other entity’s web page, it
does not request usernames, passwords or credit card details. The page clearly identifies its source as
being the Respondent. The Complainant
does not allege (much less present evidence to show) that that Respondent’s
website is mimicking some other website so as to trick an unsuspecting user
into providing confidential information.
The Respondent presents as evidence the same
web page presented by the Complainant, and provides in addition the printouts
of other parts of his website. As noted
above, the evidence presented by the Respondent supports his statements to the
effect that he is planning to use the disputed web page for a legitimate
business, namely grouped purchases of medical supplies.
The information requested by the Respondent
on the form that the Complainant characterizes as “phishing” consists of the
name, address, phone number, and E-Mail of prospective users of the services
offered by the Respondent. Such
information requests are perfectly normal and widely used. For example, the same information is
requested of anybody who wishes to submit a query to an organization (not
related to the Complainant) called Lime Software, see their web site at: <lime-software.com/Registration.aspx>. And it is similarly requested of anybody who
wishes to obtain information on products that are being prepared by the
Complainant, see its website at: <limemedical.com>.
Thus the Panel finds that there is no
evidence that the Respondent is engaging in phishing or some other illegal
activity. On the contrary, the evidence
presented by both parties indicates that the Respondent has plans to use the
contested domain names to develop a web site for a legitimate business. That is, the Respondent, before any notice to
of the dispute, made actual preparations to use the disputed domain names in
connection with a bona fide offering of services.
In accordance with ¶ 4(c)(i)
of the Policy, this suffices to find that the Respondent does have a legitimate
interest in the disputed domain name. See Target Brands, Inc. v. ALDnet Media
Group & Harrison, FA 227647 (Nat. Arb. Forum Mar. 24, 2004)
(holding that the respondent’s use of the <targetwholesale.com> domain
name to offer search engine services to wholesale vendors and their customers
was a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i)); see also Safeguard Operations, LLC v. Safeguard
Storage, FA 672431 (Nat. Arb. Forum June 5, 2006) (finding that the
respondent’s operation of a self-storage facility and execution of a business
plan demonstrate that the respondent has rights or legitimate interests under
Policy ¶ 4(c)(i)).
For the reasons set forth above, the Panel
need not analyze this element further. See
Lockheed Martin Corp. v. Skunkworx
Custom Cycle, D2004-0824 (WIPO Jan.
18, 2005) (finding that the issue of bad faith registration and use was moot
once the panel found the respondent had rights or legitimate interests in the
disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track,
FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has
rights and legitimate interests in the disputed domain name, his registration
is not in bad faith.”).
DECISION
Having considered all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Richard Hill, Panelist
Dated: July 1, 2009
Click Here to return
to the main Domain Decisions Page.
Click Here
to return to our Home Page
National
Arbitration Forum