Michael C. Karr d/b/a
Claim Number: FA0906001269248
PARTIES
Complainant is Michael C. Karr d/b/a West
Los Angeles Chiropractic (“Complainant”), represented by Gary J. Nelson, of Christie, Parker &
Hale LLP,
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.
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. Charles A. Kuechenmeister (Ret.), as Panelist.
PROCEDURAL HISTORY
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 postmaster@west-los-angeles-chiropractic.com,
postmaster@west-la-chiropractic.com,
postmaster@west-los-angeles-chiropractor.com,
postmaster@west-la-chiropractor.com 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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,
2. Complainant
owns
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.
4. Respondent,
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
(chiroqueen@yahoo.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.
Where
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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