National Arbitration Forum
DECISION
American Laser Centers v.
Kresch Legal Services c/o Scott Steele
Claim Number: FA1004001317314
PARTIES
Complainant is American Laser Centers (“Complainant”), represented by David
J. Ford, of Clark Hill PLC,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <americanlasercentersclassaction.com>, <americanlasercenterclassaction.com>,
<americanlasercenters.org>, and <americanlasercenter.org> registered with eNom, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 5, 2010.
On April 5, 2010, eNom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <americanlasercentersclassaction.com>, <americanlasercenterclassaction.com>,
<americanlasercenters.org>, and <americanlasercenter.org> domain names are registered
with eNom, Inc. and that the Respondent
is the current registrant of the names. eNom, Inc. has verified that Respondent is
bound by the eNom, 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 14, 2010, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 4, 2010 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@americanlasercentersclassaction.com,
postmaster@americanlasercenterclassaction.com,
postmaster@americanlasercenters.org, and
postmaster@americanlasercenter.org by
e-mail.
A timely Response was received and determined to be complete on May 4,
2010.
Complainant submitted an Additional Submission on May 7, 2010 that was
deemed timely and in compliance with Supplemental Rule 7.
Respondent submitted an Additional Submission on May 12, 2010 that was
deemed timely and in compliance with Supplemental Rule 7.
On May 12, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends ownership of the service mark AMERICAN LASER CENTERS
for laser hair removal, skin rejuvenation, and cellulite therapy services.
Complainant has common law rights in this mark, as it has used the mark
continuously and extensively in commerce since April 15, 2002.
Complainant has established rights in the AMERICAN LASER CENTERS mark
for purposes of Policy ¶ 4(a)(i) through its long, continuous and extensive
use of
the mark. Complainant does not yet hold a registration for its AMERICAN
LASER CENTERS mark, however, “governmental trademark registration is not
necessary to establish rights under Policy ¶
4(a)(i).”
Complainant has used the AMERICAN LASER CENTERS mark since the
inception of its business on April 15, 2002 in connection with its laser
hair
removal, skin rejuvenation, and cellulite therapy services. Complainant has
more
than 200 locations nationwide and spends millions of dollars a year to
promote
the AMERICAN LASER CENTERS mark and its services throughout the United
States. As such, Complainant’s AMERICAN LASER CENTERS mark is well
known throughout the
Complainant has served over 80,000 patients per year and performed well
over
one million treatments per year. The mark is featured on Complainant’s
website,
brochures, direct mailings, and is prominently
displayed at trade show events.
The mark is also featured on third party billboards, websites, and in radio
and television advertisements. Complainant runs advertisements in newspapers
around the country, including the Boston
Globe, the Boston Metro, the New York Metro, and the Knoxville News Sentinel.
The mark is also featured in national magazines, including Allure, Elle, Health,
Marie Claire, New Beauty, Self, SHAPE, and Women’s Health. Through its
continuous and extensive use, Complainant’s AMERICAN LASER CENTERS
mark has acquired secondary meaning among consumers sufficient to establish
common law rights.
Complainant has continuously and extensively promoted its AMERICAN LASER
CENTERS mark in connection with its services well before Respondent’s
registration of the disputed domain names. Complainant registered
<americanlasercenters.com> on March 24, 2002;
<americanlasercenter.com> on
March 6, 2003; and <americanlaser.com> on
December 31, 2004.
Respondent registered the <americanlasercenters.org> domain
name on May
12, 2009 (more than 7 years after Complainant registered
<americanlasercenters.com>); the <americanlasercenter.org> domain
name on
May 12, 2009 (more than 6 years after Complaint registered
<americanlasercenter.com>); the <americanlasercentersclassaction.com>
domain name on May 12, 2009 (more than 7 years after Complainant registered
<americanlasercenters.com>); and the <americanlasercenterclassaction.com>
domain name on August 21, 2009 (more than 6 years after Complainant
registered
<americanlasercenter.com>).
In this regard, Complainant contends that all of the disputed domain names fully incorporate Complainant’s mark, AMERICAN LASER CENTERS.
Small distinctions or the addition of the generic term “classaction” are insufficient to negate the confusingly similar of Respondent’s domain names.
Complainant contends that Respondent lacks all rights and legitimate interests in respect of the disputed domain names. First,with full knowledge of Complainant’s AMERICAN LASER CENTERS mark, Respondent registered the disputed domain names in 2009, well after Complainant’s first use of the mark in 2002. It is clear that Respondent had
knowledge of Complainant’s AMERICAN LASER CENTERS mark at the time
the disputed domain names were registered because the domain names fully
incorporate Complainant’s mark and Respondent maintains a website resolving
from the disputed domain names that encourages a class action lawsuit
against
Complainant.
Second, Respondent is not commonly known by any of the disputed domain
names and Complainant has not licensed or authorized Respondent to register
or use a domain name incorporating any variation of Complainant’s AMERICAN
LASER CENTERS mark. Complainant’s counsel sent a cease and desist letter to
Joseph M. Yaker, dated February 15, 2010, detailing Complainant’s prior rights
in the AMERICAN LASER CENTERS mark and demanding an immediate transfer of the
disputed domain names to Complainant. In response, Complainant received two (2)
letters from attorney Alyson Oliver written on “Class Action Legal Group”
letterhead. The first letter, dated February 26, 2010, acknowledges receipt of
the letter dated February 15, 2010 and
confirms that Mr. Yaker “will continue his current usage” of the disputed
domain
names. The second letter has conflicting dates of February 25, 2010 and
March 1,
2010. In the second letter, Ms. Oliver states that “Mr. Yaker, who owns the
[disputed] domains with which we have gained valuable information regarding
ALC’s business practices.”
Third, Respondent is using the disputed domain names to criticize and
harass
Complainant, and to tarnish Complainant’s AMERICAN LASER CENTERS
mark. Respondent’s website resolving from the disputed domain names
includes
disparaging comments about Complainant’s business, purportedly from
dissatisfied customers, and encourages the formation of a class action
lawsuit
against Complainant. There is no evidence that the comments posted on
Respondent’s website are from actual customers of Complainant’s services.
Respondent’s use of Complainant’s AMERICAN LASER CENTERS mark in the
disputed domain names to host a website that disparages Complainant
constitutes
a lack of rights and legitimate interests. Therefore, Respondent is not
using the
disputed domain names in connection with a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
under
Policy ¶ 4(c)(iii).
Fourth, Respondent is using the website resolving from the disputed domain
names not as a genuine criticism site, but for commercial or financial
gain. Such
use is not a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i)
and it is not legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The website resolving from the disputed domain names includes a “User account” section whereby users can submit personal contact information in order to be contacted by an attorney. Whoever controls the website resolving from the disputed domain names will benefit commercially and financially from any legal work that is generated through the website. As stated previously, Complainant’s counsel sent a cease and desist letter to Joseph M. Yaker, and received two (2) letters in response. In the second letter, attorney
Alyson Oliver acknowledges that she is obtaining information from the
website
resolving from the disputed domain names. Specifically, Ms. Oliver states
in her
second letter, “It is our intent to continue our representation of Mr.
Yaker and his
position while pursuing redress for all of our clients as well as those
similarly
situated who are not included in the already pending litigation.”
Accordingly, one
of the purposes of the website is to solicit legal work for the commercial
and
financial benefit of Respondent and Ms. Oliver.
In addition, the website resolving from the disputed domain names itself is
at least
in part a “sales pitch” for what is described in a link at the bottom of
the website
as “
Finally, Complainant contends that Respondent registered and is using the disputed domain names in bad faith. First, Respondent’s use of the disputed domain names to display a website criticizing Complainant and its business activities indicates bad faith registration and use pursuant to Policy ¶4(a)(iii).
Second, Respondent registered and is using the disputed domain names
primarily
for the purpose of disrupting the business of a competitor under Policy ¶ 4(b)(iii).
The word “competitor” in this context has been held to mean “one who acts
in
opposition to another and the context does not imply or demand any
restricted
meaning such as commercial or business competitor.” Thus, Respondent’s
primary
motivation in registering the disputed domain names and setting up the
website
resolving from the disputed domain names was to disrupt the business of
Complainant by encouraging litigation against it, with all of the time,
cost and
diversion of resources that goes with it, to the detriment of the
Complainant.
Third, Respondent registered and is using the disputed domain names in bad
faith
pursuant to Policy ¶ 4(b)(iv) as Respondent is using the confusingly
similar
domain names to capitalize on the goodwill associated with Complainant’s
mark to promote a class action law suit and to promote the Kresch Oliver law
firm, for
commercial gain. It can be inferred, based on the fact that Respondent is
targeting
Complainant’s business, that Respondent had actual knowledge of
Complainant’s
AMERICAN LASER CENTERS mark when it registered the disputed domain
names. Registration of an infringing domain name, despite actual knowledge
of
Complainant’s rights, is evidence of bad faith registration pursuant to
Policy ¶
4(a)(iii).
Fourth, Respondent is currently using the disputed domain name in order to
attract Internet users interested in Complainant’s services to Respondent’s
website. Respondent is therefore using a confusingly similar domain name in
order to attract Internet users to its website for its own commercial
benefit by
generating click-through revenue associated with the “Michigan Bankruptcy
Attorney” link and/or by generating legal work for the Kresch Oliver law
firm.
This type of behavior is evidence of bad faith use pursuant to Policy ¶
4(b)(iv).
Further, Respondent’s attempt to hide the true ownership and control of the
disputed domain names can be used to infer that the disputed domain names
were
registered and are being used in bad faith. Complainant contends that if
Respondent was conducting itself in a legitimate manner there would be no
reason
to conceal its involvement in this scheme.
Respondent may argue that it has included a disclaimer on the website
resolving
from the disputed domain names. However, Respondent’s undersized disclaimer
is not enough to overcome a finding of bad faith registration and use.
B. Respondent
Respondent contends that Complainant does not actually have a service mark or, in the alternative, Complainant holds no registrations for said mark. Complainant makes no claim or offer of proof that it has ever attempted to obtain any registration for the alleged service mark. Treating the common phrase “American Laser Centers” as if it were a service mark obtained through the registration process would be tantamount to declaring that the registration process is superfluous, something that American courts clearly do not support. The registration process for service marks exists for a reason, and when a Complainant chooses not to avail itself of that process, that Complainant should not be permitted to rely on the mere fact that they used the phrase as the operating name for their business enterprise for a period of years.
Complainant argues that it should have
common-law rights and protections afforded to it for its failure to register
its alleged service mark. This is
untrue, and the three decisions Complainant cites in an effort to support its
untenable position are clearly distinguishable from the instant matter.
Complainant merely claims it has spent “millions of dollars a year” to promote its mark, and then provides a few brochures and some copies of magazine advertisements as ostensible proof of its incredible assertion.
Respondent hereby asserts that Complainant has not established that it
has any right, common law or otherwise, to the phrase “American Laser Centers,”
nor has it established that the phrase constitutes a service mark.
Complainant further claims that its ostensible service mark has
acquired secondary meaning among consumers sufficient to establish common-law
rights and cites two decisions in what it apparently believes exists support
for Complainant’s position.
According to Respondent the term “American Laser Centers” is not unique,
nor was it a proper noun until Complainant capitalized the first letter of each
of these words and, without obtaining any registration for any trademark,
decided to treat it as such.
In the event that it is determined that Complainant does have a common-law
right to the phrase “American Laser Centers” as a service mark, Respondent next
addresses Complainant’s claim that <americanlasercentersclassaction.com>
is “confusingly similar.” Complainant
cites three decisions in ostensible support of its arguments. Complainant is incorrect, as these decisions
are distinguishable from the instant matter.
Respondent contends that the use of the phrase “americanlasercenters”
in conjunction with “classaction” cannot create confusion through similarity to
Complainant’s mark where Complainant has no mark or rights to any mark.
Complainant then argues that Respondent
lacks all rights and legitimate interest in the disputed domain names. This is
incorrect. Respondent is a law firm that
seeks to obtain contacts from individuals who have had their rights infringed
upon by Complainant by virtue of Complainant’s illegal business practices. Respondent does not seek to attract
individuals for a competing laser hair removal business, but seeks to attract
former customers of Complainant who have been harmed by Complainant, and who
would not be searching for Complainant’s website, but for information on how to
bring lawsuits against Complainant.
Respondent’s purpose is not only legitimate, but is unlikely to confuse
anyone and is likely to only attract those individuals who intend to never seek
services from Complainant again. The
whole of Complainant’s action in this matter is calculated to save itself from
embarrassment and exposure to liability for the wrongful acts it has committed
against numerous ex-patients.
Complainant cites a number of decisions, ostensibly in support of its
allegations, but, as is true with each of Complainants citations in this
matter, there are clear distinctions between those cases and the instant
matter. First, each of those cases
involves a Complainant who owns a registered mark in the disputed name.
Respondent is using the disputed domain names to make a bona fide offer of legal services to those who have been harmed by
Complainant, and is targeting that select group of people who, by virtue of
their past experience with Complainant, are not potential customers of
Complainant. Respondent’s website is not
designed to “criticize or harass” Complainant, but to garner members for a
class action lawsuit against Complainant—the distinction being that the former
act is arguably not protected with regard to the use of domain names, while the
latter is not only protected, but is not even an issue given Complainant’s lack
of a trademark or registration of a trademark.
The purpose of Respondent’s website is to identify those individuals
who have legal remedies available to them against Complainant, and to advise
them of same. This is a legal and just
purpose, and Complainants cite no authority that treats this as bad faith.
C. Additional Submissions
In its Additional Submission, Complainant contends that its mark has
become distinctive in relation to Complainant’s services through its long,
extensive, substantially exclusive and continuous use of the mark in
commerce. Complainant established its
business and began using the AMERICAN LASER CENTERS service mark at least as
early as April 15, 2002. The mark was prominently displayed on Complainant’s
website resolving from <americanlasercenters.com> at least as early as
July 2, 2002. The mark has continuously been in use in commerce on
Complainant’s website and is now in use on Complainant’s website resolving from
<americanlaser.com>. Thus,
Complainant has continuously used the mark in commerce for approximately eight
(8) years. Complainant’s use of the mark
in connection with laser hair removal, skin rejuvenation, and cellulite therapy
services has been substantially exclusive because no evidence exists anywhere that
the mark has been used by others in connection with laser hair removal, skin
rejuvenation, and cellulite therapy services.
Complainant’s substantially exclusive and continuous use of the mark in commerce has resulted in widespread recognition of the brand and the AMERICAN LASER CENTERS service mark in the minds of consumers, which is evident by Complainant’s 168 clinic locations nationwide. These clinics render services to some 80,000 clients each year.
Complainant mentions that it has provided evidence that it has been in business and has been using the mark in commerce in connection with its services since at least 2002; that it acquired domain names incorporating the mark in 2002, 2003 and 2004; that the mark has been prominently displayed on its website in connection with its services since at least 2002; that the mark is prominently displayed and widely recognized at clinic locations throughout the United States; that the mark is viewed as an indicator of source with respect to Complainant’s services by approximately 80,000 patients each year; that it distributes brochures featuring the mark and describing its services at all its clinic locations, at trade show and promotional events, and through direct mailings; that it displays the mark at trade show and promotional events throughout the country; and that the mark is featured in a variety of advertising mediums distributed nationwide, including billboard, direct mail, magazine, newspaper, online, radio, and television.
Next, Respondent disputes that the domain names at issue are confusingly similar to the AMERICAN LASER CENTERS service mark while simultaneously admitting that it uses these domain names precisely for the stated purpose “to attract former customers of Complainant.” Respondent cannot dispute that <americanlasercenters.org> is identical to the AMERICAN LASER CENTERS mark. Likewise, Respondent cannot dispute that <americanlasercenter.org> is nearly identical to the AMERICAN LASER CENTERS mark.
Further, Respondent cannot dispute that <americanlasercentersclassaction.com> is confusingly similar to the AMERICAN LASER CENTERS mark. The addition of a generic word such as “lawsuit” or “classaction” has routinely been held not to detract from or weaken the clear confusing similarity that comes when the entirety of a mark is included in a domain name. In addition, Respondent admitted that it chose the domain names precisely to have them associated with Complainant and “to attract former customers of Complainant” who are familiar with Complainant’s mark in order to “garner members for a class action lawsuit against Complainant.”
Respondent contends that it is using the disputed domain names for a legitimate business purpose, namely, “to make a bona fide offer of legal services to those who have been [allegedly] harmed by Complainant” and “to garner members for a class action lawsuit against Complainant.” Fair use, under the Policy, contemplates a use without intent for commercial gain. Respondent’s offer of legal services is clearly for commercial gain. Thus, fair use is not established.
In addition, offering unrelated bankruptcy legal services through the link on Respondent’s website is strong evidence of an intent to use the website resolving from the disputed domain names for commercial gain.
Most shockingly, Respondent admitted to Complainant’s representative that it has no interest in the disputed domain names and is willing to sell the domain names. On May 5, 2010, one day after Respondent filed its response, Ari Kresch contacted Complainant’s representative by telephone at 11:37 AM and stated that he no longer had any interest in the disputed domain names and then inquired whether Complainant would like to purchase the domain names. Mr. Kresch is a principal at Respondent, Kresch Legal Services, and stated that Respondent would sell the four domain names at issue for $10,000. Mr. Kresch confirmed his offer to sell the domain names to Complainant in an e-mail to Complainant’s representative dated May 5, 2010. Respondent’s willingness to sell the disputed domain names for far more than its out-of-pocket costs strongly suggests that Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
In summary, Complainant has clearly established that:
(1) the disputed domain names are identical and confusingly similar to Complainant’s service mark in which it has common law rights;
(2) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(3) that the disputed domain names have been registered and are being used in bad faith.
In its Additional Submission, Respondent contends that Complainant’s argument that Respondent is using the words “American Laser Centers” because customers recognize the mark and view it as an indicator of source of Complainant’s service is incorrect. There is literally zero chance of any Confusion on the part of any customer seeking hair removal services, zero chance that such a customer, searching for American Laser Center’s hair removal services online, would happen upon <americanlasercentersclassaction.com> and believe that site to be affiliated with American Laser Centers in any way.
Respondent’s choice of domain names here was to attract former clients of Complainant – individuals who are upset with the damages they have suffered from Complainant’s hair removal treatments, not current or prospective customers who are looking for hair removal services. It defies all common sense for Respondent to argue that individuals seeking hair removal services would see <americanlasercentersclassaction.com> and think “Great, the hair removal service I was looking for!”
Complainant next argues that Respondent’s use of the dispute domain names for a legitimate business purpose to make a bona fide offer of legal services to those who have been harmed by Complainant does not qualify as fair use because it is for commercial gain. This is incorrect. Respondent seeks to aid the hundreds of people injured by Complainant to recover some compensation for their injuries.
In summary, Complainant has failed to establish that:
(1) the disputed domain names are identical and confusingly similar to Complainant’s service mark in which it has common law rights;
(2) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(3) that the disputed domain names have been registered and are being used in bad faith.
FINDINGS
The Panel finds that:
1.
the
Domain Names <<americanlasercentersclassaction.com>, <americanlasercenterclassaction.com>,
<americanlasercenters.org>, and <americanlasercenter.org> are confusingly
similar to Complainant’s mark;
2.
the
Respondent has not established any right or legitimate interest in the Domain
Names <americanlasercentersclassaction.com>, <americanlasercenterclassaction.com>,
<americanlasercenters.org>, and <americanlasercenter.org>; and
3. the Respondent has registered and is using the Domain Names <americanlasercentersclassaction.com>, <americanlasercenterclassaction.com>,
<americanlasercenters.org>, and <americanlasercenter.org> 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
Complainant does not yet hold
trademark registrations with the United States Patent and Trademark Office
(“USPTO”) for the AMERICAN LASER
CENTERS mark. However, federal
trademark registration is not necessary to establish rights under Policy ¶
4(a)(i). Prior panels have found that a
governmental registration is not required so long as the Complainant can
establish common law rights through proof of sufficient secondary meaning
associated with the mark. See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see also Artistic Pursuit LLC
v. calcuttawebdevelopers.com, FA 894477
(Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require
a trademark registration if a complainant can establish common law rights in
its mark).
Complainant asserts common law rights in the AMERICAN LASER CENTERS mark in connection with its hair removal, skin rejuvenation, and cellulite therapy services. Complainant claims it has used the mark continuously and extensively in commerce since its inception on April 15, 2002. Complainant claims it has served over 80,000 patients and performed over one million treatments each year over the last three (3) years. Complainant asserts it has more than 200 locations nationwide and that each clinic prominently displays the AMERICAN LASER CENTERS service mark on either the building, door or windows, or some combination of these. In addition, Complainant states that it spends million of dollars each year to promote its mark. Complainant provides evidence that it has featured the AMERICAN LASER CENTERS mark in its brochures and direct mailings and at numerous trade show events. Complainant submitted a list detailing the nature and manner of advertising from January 2006 through April 2010, including use of the AMERICAN LASER CENTERS mark in national newspaper, radio, and television advertisements. Complainant also provides evidence of its advertisements featuring the mark in national magazines. Furthermore, Complainant states the AMERICAN LASER CENTERS mark and services were featured on the nationally televised E! show “Keeping Up With The Kardashians” which originally aired on May 11, 2008. Finally, Complainant claims that it has acquired secondary meaning in the mark through its registration of numerous websites that incorporate various forms of the mark in their domain names. Therefore, the Panel finds Complainant has provided sufficient evidence of its continuous use and acquired secondary meaning in the AMERICAN LASER CENTERS mark to establish common law rights in the mark under Policy ¶ 4(a)(i) dating back to 2002. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
Complainant asserts that the disputed <americanlasercentersclassaction.com>
domain name is confusingly
similar to its mark. Respondents
incorporates Complainants mark in its entirety in the disputed domain
name. Respondent then adds the generic
terms “class” and “action” to Complainant’s mark in the disputed domain
name. Finally, Respondent adds
the generic top-level domain (“gTLD”) “.com” to Complaint’s mark in the
disputed domain name. Complainant argues
that these additions do not render Respondent’s disputed domain name distinct
from Complainant’s mark. The Panel is of the same view and finds that
Respondent’s disputed <americanlasercentersclassaction.com> domain
name is confusingly similar to Complaint’s AMERICAN LASER CENTERS mark pursuant to Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (
Complainant also argues that the disputed <americanlasercenterclassaction.com> domain name is confusingly similar to its mark. Respondent deletes the letter “s” from Complainant’s mark in the disputed domain name. Respondent then adds the generic terms “class” and “action” and then the gTLD “.com” to Complainant’s mark in the disputed domain name. Complainant alleges these changes do not distinguish Respondent’s disputed domain name from Complainant’s mark. The Panel is of the same view and finds that Respondent’s disputed <americanlasercenterclassaction.com> domain name is confusingly similar to Complainant’s AMERICAN LASER CENTERS mark pursuant to Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Disney Enters. Inc. v. McSherry, supra; see also Reese v. Morgan, supra.
In addition, Complainant argues that the disputed <americanlasercenters.org>
domain name is identical to
its mark. The disputed domain name
incorporates Complainant’s mark in its entirety and then adds the gTLD
“.org.” The Panel also finds
Respondent’s disputed <americanlasercenters.org> domain
name is identical to Complaint’s AMERICAN
LASER CENTERS mark pursuant to Policy ¶ 4(a)(i). See
Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis); see also Red
Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding
that the <redhat.org> domain name is identical to the complainant’s RED
HAT mark because the mere addition of gTLD was insufficient to differentiate
the disputed domain name from the mark).
Finally, Complainant claims the disputed <americanlasercenter.org>
domain name is confusingly
similar to its mark. In the disputed
domain name, Respondent deletes the letter “s” and then adds the gTLD “.org” to
Complainant’s mark. Complainant
alleges this slight alteration does not distinguish Respondent’s disputed
domain name from Complainant’s mark. The Panel finds Respondent’s disputed <americanlasercenter.org>
domain name is confusingly similar to Complaint’s AMERICAN LASER CENTERS mark pursuant
to Policy ¶ 4(a)(i). See Universal City Studios, Inc. v.
HarperStephens, supra; see also Gardline Surveys Ltd. v. Domain
Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a
top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”).
Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or
legitimate interests in respect of the disputed domain name. The Respondent
does not assume the burden of proof, but may establish a right or legitimate
interest in a disputed domain name by demonstrating in accordance with
paragraph 4(c) of the Policy:
(a) He
has made preparations to use the domain name or a name corresponding to the
domain name in connection with a bona
fide offering of goods or services prior to the dispute;
(b) He is commonly
known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make
a legitimate, non-commercial or fair use of the domain name without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of
proof for the second criterion: The Respondent has failed to demonstrate any
legitimate right or interest.
According to the majority of Panel decisions
this Panel also takes the position that while Complainant has the burden of
proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the
Respondent to show, by providing concrete evidence, that it has rights to or
legitimate interests in the domain name at issue. See Document Techs., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270
(WIPO June 6, 2000); Inter-Continental
Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has
asserted that the Respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the Respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively shifts
to Respondent.”); see also Clerical Med.
Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that, under certain circumstances, the mere assertion by the
complainant that the respondent has no right or legitimate interest is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist).
Complainant argues
that the WHOIS registrant information does not indicate Respondent is commonly
known by any of the disputed domain names.
Furthermore, Complainant alleges
it is not affiliated with Respondent nor has it authorized Respondent to use
the AMERICAN LASER CENTERS mark in a domain name. The Panel
is of the view that Respondent is not commonly known by the disputed domain
name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA
699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not
commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the respondent
was commonly known by the disputed domain names, and the complainant had not
authorized the respondent to register a domain name containing its registered
mark); see also Reese v. Morgan, FA
917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not
commonly known by the <lilpunk.com> domain name as there was no evidence
in the record showing that the respondent was commonly known by that domain
name, including the WHOIS information as well as the complainant’s assertion that
it did not authorize or license the respondent’s use of its mark in a domain
name).
Complainant contends Respondent’s disputed domain names do not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent does not use the disputed domain names as genuine criticism websites, but instead uses them for commercial gain. Complainant states that Respondent’s website includes disparaging comments about Complainant’s business and encourages the formation of a class action lawsuit against Complainant. Thus, Complainant asserts that the purpose of the disputed domain names is to solicit legal work for Respondent’s commercial benefit. Furthermore, Complainant claims Respondent uses the disputed domain names for commercial gain from the receipt of click-through fees. Complainant states that Respondent’s disputed domain names resolve to websites that feature a link to “Michigan Bankruptcy Attorney.” Complainant claims that Respondent uses the disputed domain names to generate click-through revenue from its association with the “Michigan Bankruptcy Attorney” link. Since the Panel agrees, it finds Respondent’s use of the disputed domain names do not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Vance ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Registration and Use in Bad Faith
Complainant argues that Respondent’s use of
the disputed domain names disrupts Complainant’s business and
constitutes registration and use in bad faith under Policy ¶ 4(b)(iii). Complainant states that Respondent’s primary
motivation for registering the disputed domain names was to disrupt
Complainant’s business by encouraging litigation against it. The Panel agrees
and finds this use disrupts Complainant’s business and constitutes registration
and use in bad faith pursuant to Policy ¶ 4(b)(iii). See
Mission KwaSizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”); see also Surface Prot.
Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that,
given the competitive relationship between the complainant and the respondent,
the respondent likely registered the contested domain name with the intent to
disrupt the complainant's business and create user confusion)
Complainant also claims Respondent uses the
disputed domain names to receive click-through fees from its association with
the “Michigan Bankruptcy Attorney” link and/or by generating legal work for
Respondent’s law firm. Complainant
argues that the Internet users may be confused as to Complainant’s affiliation
with the website that resolves from Respondent’s disputed domain names. As previously discussed, the Panel
finds Respondent receives click-through fees from its use of the disputed
domain name. Therefore, the Panel finds
Respondent’s use of the disputed domain names is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also Maricopa Cmty. Coll. Dist. v.
College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The
Panel infers that Respondent receives click-through fees for diverting Internet
users to a competing website. Because
Respondent’s domain name is identical to Complainant’s
Furthermore,
Complainant alleges that it can be inferred that Respondent had actual
knowledge of Complainant’s AMERICAN LASER CENTERS mark when it registered the
disputed domain names because of its targeted purpose to promote litigation
against Complainant. The Panel finds
that this use constitutes registration and use in bad faith under Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Yahoo!
Inc. v.
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 <americanlasercentersclassaction.com>, <americanlasercenterclassaction.com>,
<americanlasercenters.org>, and <americanlasercenter.org>
domain names be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda Panelist
Dated: May 26, 2010
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