Austin Area Birthing Center, Inc. v. CentreVida Birth and Wellness Center c/o Faith Beltz and Family-Centered Midwifery c/o June Lamphier
Claim Number: FA0911001295573
Complainant is Austin Area Birthing Center, Inc. (“Complainant”), represented by Joanne Summerhays, of Clark, Thomas & Winters, P.C., Texas, USA. Respondent is CentreVida Birth and Wellness Center c/o Faith Beltz and Family-Centered Midwifery c/o June Lamphier (“Respondent”), represented by Timothy E. Taylor, of Andrew Kurth, LLP, Texas, USA
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <austinbirthcenter.com> registered with Godaddy.com, Inc. and <austinareamidwife.com>, registered with Namesdirect.
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 November 19, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 23, 2009.
On November 20, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <austinbirthcenter.com> domain name is 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 November 20, 2009, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <austinareamidwife.com> domain name is registered with Namesdirect and that the Respondent is the current registrant of the name. Namesdirect has verified that the registrant of this domain name is bound by the Namesdirect 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 December 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 28, 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 and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on December 28, 2009.
Complainant submitted an Additional Submission on December 31, 2009, which was compliant with Forum Supplemental Rule #7. Respondent submitted an Additional Submission on January 4, 2010, which was compliant with Forum Supplemental Rule #7.
On January 7, 2010, 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 alleges that, during an eighteen year period of
continuous use, its
According to the Complainant, the Respondent, which was
established in September, 2008, coming into existence seventeen years after
The Complainant sates that the Respondent is using the disputed domain
names to direct customers who are searching for the Complainant's website to
the Respondent's website. The
Complainant is commonly known as
According to the Complainant, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site and other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of service on the Respondent’s web site or location.
The Complainant notes that the two disputed domain names are registered
by two different individuals. It states
that the registrant of the second disputed domain name provides midwife services for the Respondent
(who is the registrant of the first disputed domain name) and out of her home. On her web site, she uses the link "
According to the Complainant, both
registrants are in fact one Respondent using the disputed domain names to confuse and
mislead viewers. Both are using the
disputed domain names on their websites.
Both advertise their business location as 7002 Manchaca,
According to the Respondent, the two registrants of the disputed domain
names are not a single Respondent as alleged by the Complainant. The registrant of the first disputed domain
names is Centra Vida Birth and
The registrant of the second disputed domain name is an individual who
began providing home birth services in the
While the websites at the two disputed domain names do have reciprocal links, neither that fact, nor the fact that the registrant of the second disputed domain name collaborates with the Respondent, are sufficient to establish that the two registrants are in fact a single Respondent, see Forum Supplemental Rule 1(d).
According to the Respondent, rights under the Policy may be obtained in
a mark only if the mark is capable of registration. The claimed mark in this instance,
Further, says the Respondent, even if the claimed mark in this case were descriptive rather that generic, the Complainant has failed to provide evidence of the secondary meaning required to acquire trademark rights.
And, according to the Respondent, there is no evidence than any consumers have been confused by the disputed domain names. On the contrary, some consumers contacting the Respondent have disclosed that they were explicitly searching for a birthing center other than the Complainant.
The Respondent points out that the Complainant has acknowledged that
the Respondent is a birth center located in
According to the Respondent, both registrants are experienced midwives
who have been active in the
The Respondent states that it chose its domain name because this was
the most accurate description of the services it would be offering as a
licensed birthing center in
According to the Respondent, the fact that the disputed domain names are generic and descriptive is evidence of the Respondent’s good faith and legitimate interest. The Respondent cites UDRP precedent to support its position.
C. Additional Submissions
In its Additional Submission, the Complainant reiterates that the two registrants list the same primary address, that both websites contain multiple cross-links, and that the registrant of the second disputed domain names is listed as working for the Respondent.
The Complainant disputes the allegation that its mark is generic and
provides evidence of use, arguing that this establishes secondary meaning. The Complainant goes on to cite
According to the Complainant, it is not necessary to show that a person has been actually deceived by the use of a confusingly similar name, only that the party’s use of the name is calculated to deceive the ordinary customer. It is clearly the Respondent’s intent to use the goodwill and long standing reputation of the Complainant to direct customers to the Respondent’s web site.
In its Additional Submission, the Respondent points out that Rule 3(c) provides that a Complaint may address more than one domain name only if the domain names are registered by the same domain holder (the same registrant).
According to the Respondent, the Complainant does not contest the essential facts that neither the Respondent nor its principal has anything to do with the second contested domain name.
According to the Respondent, it is not correct to state that the primary addresses for the registrants of the two disputed domain names are the same. The registrant of the second disputed domain name identifies two offices, neither being identified as “primary”. One address is indeed that of the Respondent, where the registrant of the second disputed domain name provides midwife services.
According to the Respondent, the two domain names have different registrants, different registrars, different addresses in their respective registrars’ WHOIS databases, and they resolve to different websites. The bare fact that one registrant spends part of her time assisting the Respondent, and that they have mutual links on their respective websites, is not sufficient to establish that they are, in fact, one person or entity with multiple aliases. There is no UDRP case where a Panel has found multiple respondents to be a single entity on such scant evidence.
The Respondent reiterates that the Complainant’s business name is a descriptive term which cannot acquire trademark rights. It goes on to cite doctrine and US case law to support its position. Further, according to the Complainant, the evidence offered by the Complainant for secondary meaning is not sufficient. For the reasons set forth below, the Panel considers that those arguments are not relevant for the present case, so they are not summarized here.
According to the Respondent, the Complainant has wholly failed to address the fact that both registrants have legitimate interests in their respective domain names. Thus the Complaint is fatally defective. Further, the Complainant has failed to provide evidence (much less proof) of any bad faith behavior by the registrants.
The Respondent provides birthing services in the Austin Area.
The registrant of the second domain name provides midwife services in the Austin Area.
The Complainant did not provide convincing evidence to the effect the registrants of the two disputed domain names are a single entity.
The disputed domain names are generic descriptions of the services offered by the registrants.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, the Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
From the evidence presented to it, the Panel concludes that the Respondent provides out-of-hospital maternity services as the sole owner of a business. The registrant of the second disputed domain name provides midwife services and assists the Respondent. The two websites contain reciprocal links to each other. But the Respondent is the sole owner of the first disputed domain name and its business, which business is a legal entity that is entirely separate from the registrant of the second disputed domain name. As the Complainant correctly point out, the bare fact that one registrant spends part of her time assisting the Respondent, and that they have mutual links on their respective websites, is not sufficient to establish that they are, in fact, one person or entity with multiple aliases.
Thus the Panel must dismiss the Complaint with respect to the second disputed domain name. Further, for the reasons set forth below, the Complaint would in any case have been dismissed with respect to that domain name.
Both parties provide extensive discussions of
US trademark law, in an effort to establish whether or not the Complainant has
a protectable mark. Such arguments are
best evaluated by national courts, not by UDRP panels. If the Complainant wishes to argue trademark
For the reasons set forth below, it is not necessary for the Panel to consider whether or not the Complainant has acquired trademark rights for its trade name.
With respect to the first disputed domain name, for the reasons set forth below, it is not necessary for the Panel to consider this element of the Policy.
With respect to the second disputed domain
name, the Panel holds that it cannot be considered to be confusingly similar,
in the sense of the Policy, to the Complainant’s trade name
As the Respondent
correctly asserts, the disputed domain names contain descriptive terms regarding
its midwifery and birth center services in the
The Respondent also argues that the terms of the disputed domain names are common and generic and/or descriptive, and therefore, the Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel agrees. It must not be forgotten that domain name registration is basically a “first come, first served” process and that the purpose of the Policy is not to adjudicate between parties who have some legitimate interest in using a particular domain name, but only to correct cases of obvious cybersquatting. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis.").
The legislative history of the Policy is well summarized in the Final Report of the WIPO Internet Domain Name Process, available at:
Paragraph 153 of that Report states, in pertinent part:
The scope of the procedure would be limited to cases of abusive registrations (or cybersquatting), as defined below, and would not be available for disputes between parties with competing rights acting in good faith.
And paragraph 172 states, in pertinent part:
The cumulative conditions of the first paragraph of the definition make it clear that the behavior of innocent or good faith domain name registrants is not to be considered abusive. For example, a small business that had registered a domain name could show, through business plans, correspondence, reports, or other forms of evidence, that it had a bona fide intention to use the name in good faith. Domain name registrations that are justified by legitimate free speech rights or by legitimate non‑commercial considerations would likewise not be considered to be abusive. And, good faith disputes between competing right holders or other competing legitimate interests over whether two names were misleadingly similar would not fall within the scope of the procedure.
The Panel finds that the Respondent and the registrant of the second disputed domain name have established legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Since the Panel has concluded that the Respondent and the registrant of the second disputed domain name have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii), the Panel finds that the Respondent and the registrant of the second disputed domain name did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). 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.”).
Further, the Panel finds that the Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
For all the reasons stated above, the Panel concludes that relief shall be DENIED. The Complaint is dismissed.
Richard Hill, Panelist
Dated: January 20, 2010
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