National Arbitration Forum

 

DECISION

 

SelectCare of Texas, L.L.C. v. Bridge Port Enterprises Limited

Claim Number: FA0906001268298

 

PARTIES

Complainant is SelectCare of Texas, L.L.C. (“Complainant”), represented by Scott Brown, of Vinson & Elkins, L.L.P., Texas, USA.  Respondent is Bridge Port Enterprises Limited (“Respondent”), Antigua and Barbuda.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <texanplus.com>, registered with Tucows 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.

 

Hon. Sir Ian Barker as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 17, 2009.

 

On June 16, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <texanplus.com> domain name is registered with Tucows Inc. and that the Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 June 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 15, 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@texanplus.com by e-mail.

 

Respondent's Response was received in electronic copy only on July 14, 2009.  However, in that no hard copy was received subsequent to the Response deadline, the Response is considered deficient under ICANN Rule 5.  In its email, the Respondent stated:  “We will release the domain in question without having to go any further and will provide the authcode once the domain Lock is removed this saves everyone a lot of time.”  That intimation will be considered by the Panel.

 

On July 23, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The Complainant provides insurance underwriting services of prepaid healthcare insurance for Medicare enrollees and healthcare for provider-sponsored organizations, health maintenance organizations and preferred provider organizations for Medicare enrollees.  Its activities cover the entire United States of America.

 

The Complainant owns United States Federal trademarks for the mark TEXANPLUS.  The first mark was registered in October 8, 2002.  It also owns a trademark for the mark TEXANPLUS in the State of Texas for which registration was issued on December 3, 2001.

 

The Complainant uses the mark TEXANPLUS in relation to its services and has done so since November 2001.  It has acquired significant goodwill and public recognition in the area in which its goods and services are known to the public.

 

The domain name is identical to the Complainant’s marks.

 

The Complainant has not given any rights to the Respondent to use its name in any way.  The Respondent operates a website under the disputed domain name which advertises various medicare and healthcare providers, none of which lead to the Complainant’s own website.  The Complainant does not qualify for any of the exemptions provided in Paragraph 4(c) of the Policy.

 

The Respondent must have been aware of the Complainant’s mark when it registered the disputed domain name on November 6, 2006.  This can be seen from its use of the disputed domain name to attract for commercial gain internet users by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website or location of a product or services on its website or location.

 

The use by the Respondent of the Complainant’s name to attract website users to its site, leading them to the advertisements for competitors of the Complainant.  The Respondent’s website dilutes the Complainant’s mark and creates an unwanted association with services which are not offered in a manner commensurate with that of the Complainant. 

 

B. Respondent

 

As indicated earlier, the Respondent did not file a proper Response but indicated that it would release the domain name in question.  This, however, is not a consent to the transfer and, accordingly, the Panel thinks it appropriate briefly to consider the Complainant’s submissions

 

FINDINGS

A.     The disputed domain name is identical to trademarks in which the Complainant has rights.

B.     The Respondent has no legitimate rights or interests in respect to the disputed domain name.

C.     The disputed domain name has been registered and is being used in bad faith.

 

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.

 

Identical and/or Confusingly Similar

 

The disputed domain name is identical to the Complainant’s trademarks.

 

Rights or Legitimate Interests

 

The Complainant gave the Respondent no rights to use a domain name which is identical to its trademark. 

 

Once that has been established, the onus shifts to the Respondent to show that it comes within one or other of the limbs of Paragraph 4(c) of the Policy.  The Respondent has not done so and has indicated its willingness to release the disputed domain name.

 

Registration and Use in Bad Faith

 

Bad faith registration and use can readily be inferred by the Panel because of the reputation of the Complainant in offering medical insurance services throughout the United States.  That this fact was known to the Respondent of the disputed domain name at the date of registration is easily inferred from the fact that the Respondent is offering products of competitors to the Complainant through the website accessed by the disputed domain name.  See University of Houston Sys. v. Salvia Corporation, FA 637920 (Nat. Arb. Forum Mar. 21, 2006) as one of many authorities in support of this inference.

 

In these circumstances, the Panel has no difficulty in finding that the Complainant has proved all three limbs of Paragraph 4(a) of the Policy.  The finding is strengthened by the lack of defence from the Respondent and the Respondent’s willingness to release the domain in question.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <texanplus.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Hon. Sir Ian Barker, Panelist
Dated: August 5, 2009

 

 

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