Ammar Jarrous, MD v. Amarillo Cardiovascular & Thoracic Surgery
Claim Number: FA1002001306970
Complainant is Ammar Jarrous, MD (“Complainant”), represented by Chris Stewart, of Law Office of Chris Stewart, P.C., Texas, USA. Respondent is Amarillo Cardiovascular & Thoracic Surgery (“Respondent”), represented by Andrew Little, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amarilloveins.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 on February 5, 2010, the Forum notified Complainant that the Complaint was deficient pursuant to UDRP Rule 4(b).
On February 25, 2010, Complainant requested the Forum Dismiss the Complaint Without Prejudice in accordance with the Forum’s Supplemental Rule 12(a).
On February 26, 2010, the Forum granted Complainant’s request to Dismiss the Complaint Without Prejudice pursuant to the Forum’s Supplemental Rule 12(a).
Complainant then re-filed a Complaint with the National Arbitration Forum on March 29, 2010 under the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) that became effective March 1, 2010.
On March 29, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <amarilloveins.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 April 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on April 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 21, 2010.
On April 30, 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 name be transferred from Respondent to Complainant.
The Complainant alleges that he has common law rights to the service mark AMARILLOVEIN.COM in connection with varicose vein removal and related medical services. The Complainant has continuously used its service mark since February 2007. A web site corresponding to that service mark was registered on that date and has been aggressively advertised since that time.
According to the Complainant, the Respondent registered the disputed domain name in January 2008. That domain name is confusingly similar to the Complainant’s mark and has not been used by the Respondent in conjunction with its business, which is cardiovascular and surgery, and treatment of varicose veins.
The Complainant states that he and the Respondent shared a medical practice from 2001 to 2003 and that their split was not amicable. He states that the Respondent chose a nearly identical, confusingly similar domain name only after he learned of the Complainant’s web site and aggressive marketing campaigns.
The Complainant alleges that the Respondent did not make any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of good or services prior to February 2007. Since the disputed domain name is so similar to the Complainant’s service mark, the Respondent’s use cannot be legitimate.
Indeed, says the Complainant, the Respondent’s bad faith is demonstrated by the close proximity of the businesses, similarity of services, similarity of advertising channels, actual confusion, and the Respondent’s knowledge of the Complainant’s service mark.
According to the Complainant, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s service mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site. Such conduct constitutes evidence of bad faith use and registration under the Policy.
The Complainant states that there is considerable evidence of actual confusion. Further, given the competitive relationship and past history between the Complainant and the Respondent, the Respondent must have been aware of the Complainant’s service mark when he registered the disputed domain name. And he did that primarily for the purpose of disrupting the Complainant’s business, which establishes bad faith use and registration in the sense of the Policy.
The Respondent alleges that the Complainant does not possess the necessary common law trade mark in the name AMARILLO VEIN because that phrase is too generic to have acquired any secondary meaning. Any physician in Amarillo who offered medical services related to the cardiovascular system might legitimately claim a non-exclusive use in the words Amarillo and vein. Therefore, no single physician who makes use of these words in his advertising (including the parties in the present case) can claim exclusive rights to a domain name based on generic terms.
The Respondent states that, contrary to what the Complainant alleges, he has made substantial use of print advertising to promote treatment for varicose veins. Further, the Respondent disputes the statement that there has been actual confusion on the part of Internet users.
According to the Respondent, it is clear that he has been using the disputed domain name for a bona fide offering of services long before he became aware of any dispute with the Complainant. Indeed, the disputed domain name was registered in January 2008, while the first notice of the present dispute was when the Complaint was filed in February 2010.
The Respondent states that he has legitimate interests and rights in the disputed domain name because it is merely a description of part of the medical services (vein surgery) that he offers in the city of Amarillo. It should be no surprise that two physicians in the same city who both treat varicose veins might have similar generic domain names.
The Respondent alleges that the fact that the component parts of the disputed domain name are generic is a defense to the allegation of bad faith registration. Further, he did not choose the disputed domain name himself, it was suggested by a third-party medical devices and pharmaceutical firm.
The Respondent states that the Complainant has not provided any evidence to support his allegation that the Respondent registered the disputed domain name for the purpose of disrupting the Complainant’s business, nor has the Complainant provided any evidence of actual consumer confusion.
The Respondent confirms that he had a business relation with the Complainant and that it ended on strained terms.
The Respondent concludes by saying that the Complainant’s decision to make wholly untrue and unsupportable statements leads to the conclusion that the Complaint was brought in bad faith and to harass the Respondent, so the Panel should find Reverse Domain Name Hijacking.
The Complainant and the Respondent are competitors: both offer surgical services which include treatment of varicose veins and both operate in the city of Amarillo.
The Complainant and the Respondent were associated in the past, but parted on unfriendly terms.
The Complainant registered, and started to use, the service mark AMARILLO VEIN in February 2007.
The Respondent registered, and started to use, the disputed domain name in January 2008.
The present dispute was initiated in February 2010.
The disputed domain name consists of a geographical term (Amarillo) and a generic term (veins). Those terms are related to the services offered by both parties.
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.
The Complainant does not have a registered mark. But it is well established under the Policy that a trademark registration with a governmental authority is not necessary to establish rights in a mark, provided the Complainant can establish common law rights in the mark through a showing of secondary meaning associated with the mark.
The Respondent asserts that the Complaint has not, and cannot, establish common law rights because the term in question, AMARILLO VEINS, is too generic to have acquired secondary meaning.
For the reasons set forth below, the Panel finds that it need not make a decision regarding this element of the Policy.
It is clear from the evidence that the Respondent is using the disputed domain name in conjunction with his cardiovascular medical practice, and that he offers varicose vein surgery as part of the practice. Further, that use of the disputed domain name preceded the instant dispute. Thus the Respondent has made a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Martello v. Cockerell & Assocs., FA 346319 (Nat. Arb. Forum Dec. 13, 2004) (finding that the respondent’s use of the <skindeep.com> domain name to provide information on its demapathology services was a bona fide offering of goods or services under Policy ¶ 4(c)(i) despite the complainant’s registration of the SKIN DEEP mark with the USPTO and use of the mark in connection with similar services); see also Russell & Miller, Inc. v. Dismar Corp., FA 353039 (Nat. Arb. Forum Dec. 20, 2004) (finding that the respondent used the <salesigns.com> domain name for a bona fide offering of goods or services, which was established by the respondent’s “longstanding involvement in the ‘sale sign’ market and its use of a descriptive domain name to further its competition in that market”).
Since the Respondent has rights or legitimate interests in the disputed domain name, it follows that he did not register or use the disputed domain name in bad faith in the sense of the Policy. 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.”).
It does without saying that this finding is without prejudice to what a national court might or might not conclude if one of the parties chose to initiate a national action under national law.
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:
Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.
The Respondent invokes this provision when it requests the Panel to find that the Complainant is using the Policy in a bad faith attempt to deprive a registered domain name holder of a domain name.
The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Carolyn Hughes, <smartdesign.com> D2000-0993 (WIPO, October 18, 2000):
Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.
These conditions are confirmed in Goldline International, Inc. v. Gold Line, <goldline.com> D2000-1151 (WIPO, January 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Limited, <sydneyoperahouse.net> D2000-1224 (WIPO, October 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, <planexpress.com> D2000-0565 (WIPO, July 17, 2000).
The Respondent has made a convincing case to the effect that the Complainant should have known that the Respondent had a legitimate interest (in the sense of the Policy) in the disputed domain name. However, he has not provided any evidence of malice aforethought or harassment by the Complainant in the sense of the Policy.
Therefore, the Panel dismisses the Respondent’s request for a finding of Reverse Domain Name Hijacking.
For all the foregoing reasons, the Panel concludes that relief shall be DENIED.
The request for a finding of Reverse Domain Name Hijacking is DENIED.
Richard Hill, Panelist
Dated: May 5, 2010
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