Michael C. Karr d/b/a
Claim Number: FA0906001269248
Complainant is Michael C. Karr d/b/a West
Los Angeles Chiropractic (“Complainant”), represented by Gary J. Nelson, of Christie, Parker &
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <west-los-angeles-chiropractic.com>, <west-la-chiropractic.com>, <west-los-angeles-chiropractor.com>, and <west-la-chiropractor.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.
Hon. Charles A. Kuechenmeister (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2009.
On June 19, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <west-los-angeles-chiropractic.com>, <west-la-chiropractic.com>, <west-los-angeles-chiropractor.com>, and <west-la-chiropractor.com> domain names are 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”).
On June 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 20, 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 email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org by e-mail.
Respondent's Response was received in electronic copy only on July 2, 2009. However, in that no hard copy was received by the Response deadline, the Response is considered deficient under ICANN Rule 5.
On July 28, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Charles A. Kuechenmeister (Ret.) as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. Dr. Michael
C. Karr, D.C. (Complainant) has owned and operated his chiropractic practice
since 1993. With degrees from UCLA and
Southern California College of Chiropractic, Dr. Karr’s graduate studies
focused on Kinesiology,
3. The domain names at issue, <west-los-angeles-chiropractic.com>, <west-la-chiropractic.com>, <west-los-angeles-chiropractor.com>, and <west-la-chiropractor.com> (the “Domain Names”) are all identical or confusingly similar to at least one of the West LA Chiropractic Marks, incorporating the entire mark and merely adding hyphens and the gTLD .com. The Domain Names misappropriate sufficient textual components from Complainant’s West LA Chiropractic Marks that ordinary Internet users familiar with Complainant’s services are likely to think that, owing to the visual and phonetic similarities between the domain names and Complainant’s marks, an affiliation exists between the domain names and Complainant.
another chiropractor in the
5. Another circumstance that shows registration and use in bad faith under the Policy is detailed in Policy ¶ 4(b)(iii) which states: “you have registered the domain name primarily for the purpose of disrupting the business of a competitor.” Respondent’s registration and commercial use of the Domain Names, which are confusingly similar to the mark of Complainant, a competitor, satisfies the requirements of Policy ¶¶ 4(b)(iii) and (iv).
6. Respondent has no rights or legitimate interest in the Domain Names. The Respondent is not known by West Los Angeles Chiropractic or any of the other West LA Chiropractic Marks. Complainant has not licensed Respondent to use his marks, nor does Respondent have any legal relationship with Complainant that would entitle it to use Complainant’s marks. Respondent has no legitimate reason for using these Domain Names that incorporate Complainant’s trademarks in their entirety. Accordingly, Respondent cannot establish rights to and legitimate interest in the Domain Names under Policy ¶ 4(a)(ii).
7. Respondent is not using the Domain Names “in connection with a bona fide offering of goods and services.” Policy ¶ 4(a)(i). As discussed above, Respondent uses the Domain Names to compete with Complainant by featuring links to competitors of Complainant thereby misdirecting consumers attempting to access Complainant’s website. Use of another’s trademark within a domain name to provide a website offering goods or services in direct competition with the trademark owner cannot support a legitimate interest.
8. Neither is Respondent making a “legitimate noncommercial or fair use of the domain name[s], without intent for commercial gain,” within the meaning of Policy ¶ 4(a)(iii). Respondent uses the domain names to provide websites featuring pay-per-click advertisements or indirectly advertising for Respondent’s own competing services. This use establishes Respondent’s “intent for commercial gain” and undermines any claim that the use was “noncommercial.” Accordingly, Respondent cannot establish rights to and legitimate interest in the domain names under Policy ¶ 4(a)(iii).
1. The Respondent, Family Chiropractic, with technical and administrative contacts being Lynn Kerew (email@example.com), purchased the Domain Names in March 2009 and no activity was conducted with them. Neither Family Chiropractic nor Dr. Kerew appears if an Internet user enters the websites under any of the Domain Names.
2. If the Complainant wants the Domain Names and has trademark rights to them, Family Chiropractic was unaware of that and is planning to release them as soon as GoDaddy will allow it to, based upon guidelines for the pending UDRP proceeding.
DISCUSSION AND FINDINGS
Preliminary Issue: Deficient Response
Respondent’s Response was received in electronic copy only on July 2, 2009. Thus, the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, may choose whether to accept and consider this Response. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”). The Panel in this case elects to allow and consider the Respondent’s submission.
Merits of the Case
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel in contested cases 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.
In this case, however, the Respondent says she purchased the Domain Names in March 2009 without awareness of Complainant’s trademark rights in them, has made no use of them whatever, and plans to release them as soon as the pending UDRP proceedings will permit. Although the Panel has seen more clear and unequivocal statements evidencing consent to transfer, Respondent’s statements are nevertheless sufficiently clear to support a finding that she consents and agrees that the Domain Names be transferred to Complainant. The tenor of her Response, taken as a whole, is that she does not want the Domain Names and seeks to wash her hands of this matter as quickly and with as little bother as possible.
a respondent does not contest the transfer of a domain name but instead agrees
to its transfer to a complainant, the Panel may forego the traditional UDRP
analysis and order an immediate transfer of the domain name
without analysis of the Policy standards set forth above or further discussion. See
Honorable Charles A. Kuechenmeister (Ret.)
Dated: August 7, 2009
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