Lime Medical, LLC v. RJ Ertlmaier d/b/a Lime Medical Group
Claim Number: FA0905001264163
Complainant is Lime Medical, LLC (“Complainant”), represented by Michael Feigin, of Law Firm of Michael J.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is <limemed.com> and <limemedicalsupplies.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
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 firstname.lastname@example.org and email@example.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.
Complainant requests that the domain names be transferred from Respondent to 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.
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
The Respondent has made actual preparations to use the disputed domain names in connection with a bona fide offering of services.
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.”).
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
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