InSight Health Corp. d/b/a Insight Imaging v. Jerry Grigoropoulos
Claim Number: FA1004001318563
PARTIES
Complainant is InSight Health Corp. d/b/a Insight
Imaging (“Complainant”), represented
by Alina S. Morris, of Knobbe Martens Olson & Bear LLP,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <insightimaging.com>, registered with Network Solutions, 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.
Robert T. Pfeuffer, Senior District Judge, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April 9, 2010.
On April 12, 2010, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <insightimaging.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 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 postmaster@insightimagin.com. Also on April 15, 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 May 12, 2010.
On
May 20, 2010, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National
Arbitration Forum appointed Robert T. Pfeuffer, Senior District Judge, as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. That Complainant argues that Respondent’s <insightimaging.com> is confusingly similar to Complainant’s INSIGHT mark.
2. That Complainant is a holder of a trademark registration for its INSIGHT mark with the United States Patent and Trademark office (USPTO) Reg. No. 2,485,208 issued September 4, 2001.
3. That Complainant says that its registration of the INSIGHT mark with the United States Patent and Trademark office is sufficient to establish Complainant’s rights under Policy ¶ 4(a)(i).
4. That Complainant’s INSIGHT IMAGING mark was adopted in 2006 and that the mark is a well known and respected brand of diagnostic imaging services.
5. That Complainant alleges it has generated excess of $725 million dollars from services offered under the INSIGHT IMAGING mark. It has served an average of 500,000 patients a year.
6. That Complainant’s INSIGHT IMAGING mark was registered with the USPTO on July 31, 2007 and that its INSIGHT mark was registered with the USPTO on September 4, 2001.
7. That the ownership of a registered trademark satisfies the threshold requirement of having ownership rights.
8. That Complainant has prominently promoted its INSIGHT IMAGING mark and services.
9. That in 2007 Complainant first saw that the disputed domain name <insightimaging.com> was listed on a Godaddy.com auction site.
10. That upon learning of the disputed domain name being listed on Godaddy.com, it made an anonymous offer of $10,000 and that Respondent counter offered for $99,000.
11. That the counter offer of $99,000 was an affirmative step of the Respondent and its behavior constituted bad faith use, pursuant to ¶ 4(a)(3), in that the offer to transfer was far in excess of the reasonable out of pocket expenses associated with such a transfer.
12. That Complainant and Respondent began discussions on December 7, 2009 asserting the disputed domain name.
13. That Respondent claimed it had rejected earlier offers from third parties to buy the domain name.
14. That on January 15, 2010, Complainant sent to Respondent a demand letter setting forth reasons why Respondent’s ongoing use of the disputed domain name was contrary to law and again offered $10,000 if Respondent would transfer the domain name to Complainant.
15. That in response Respondent demanded at least $30,000 to transfer the domain name.
16. That Respondent’s last demand was for $30,000.
17. That the disputed domain name <insightimaging.com> is letter for letter identical to Complainant’s mark INSIGHT IMAGING except for the inclusion of the TTLD “.com”.
18. That the disputed domain name <insightimaging.com> is merely a concatenation of Complainant’s INSIGHT mark with the word “imaging”.
19. That Complainant’s INSIGHT mark is registered for “health care services in the nature of diagnostic imaging, imaging guided therapy services, radiology services, and managed diagnostic health care services".
20. That Complainant need only establish a prime facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
21. That Respondent is not using <insightimaging.com> in any bona fide offering of goods or services.
22. That upon notice of this dispute to Respondent, the disputed domain name under its control was replaced with a default “coming soon” page.
23. That as of the date of filing of the Complaint, INSIGHT imaging contains a generic place holder.
24. That for at least the past three years Respondent has been the registered owner of the disputed domain name and during this time Complainant has widely used its registered mark INSIGHT and INSIGHT IMAGING for diagnostic services and related offerings.
25. That during this time the website at <insightimaging.com> has contained only sponsored listings and jump pages.
26. That after Complainant contacted Respondent the disputed page has been replaced with the current version, which is a generic “coming soon” page provided by Network Solutions.
27. That the WhoIs <insightimaging.com> was first created on August 19, 1998 and at some point between August 3, 2006 and January 10, 2007, the domain name came into the possession of Respondent.
28. That between October 28, 2006 and until at least February 18, 2007, <insightimaging.com> contained park pages with searches and advertising that appeared to be keyed to INSIGHT and INSIGHT IMAGING.
29. That when <insightimaging.com> was first registered, but not by Respondent, and until October 28, 2006, the site at the domain was used to promote a product called ImageBall.
30. That when Respondent took possession of the domain name, the ImageBall content was removed and its sponsored search page was substituted in its place.
31. That Respondent’s use of the domain names as described is not 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).
32. That Respondent is not a bona fide reseller and has no rights or legitimate interests in the disputed domain names.
33. That it is now well established that “registration and use in bad faith” is not a conjunctive requirement, bad faith use is sufficient, even if the registration is assumed to have been made in good faith.
34. That Respondent’s use of the disputed domain name demonstrates that it has attempted to profit from Complainant’s marks by click-through advertising and sponsored searches.
35. That Respondent has been creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the web sites at the disputed domains and was using such confusion to attract, for commercial gain, users to his websites.
36. That Respondent’s unauthorized use of the disputed domain name is likely to disrupt Complainant’s business and demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii)
37. That the web page currently at <insightimaging.com> may be automatically generated from a template provided by the webhost and registrar and is not a page affirmatively managed or maintained by Respondent, therefore further demonstrating Respondent’s bad faith.
38. That Respondent has had over three years to put the site to legitimate use, but has failed to do so.
39. That Complainant believes Respondent is a radiologist with a specialty in diagnostic radiology and as such is a competitor or potential competitor for the services offered by Complainant.
B. Respondent
1. That Complainant’s request to transfer Respondent’s <insightimaging.com> domain name should be denied.
2. That Respondent’s domain name is not identical or confusingly similar to Complainant’s alleged marks because Complainant:
a. Did not have trademark rights in INSIGHT IMAGING at the time of the registration of the domain name.
b. Cannot prohibit the use of a generic or descriptive term in a domain name.
c. That Respondent purchased the domain name at issue in this case in preparation for the bona fide and legitimate future use of the domain name as an amateur photography website.
3. That Respondent has not made any revenue from the domain names.
4. That it has not solicited Complainant in an attempt to sell the domain name to the Complainant.
5. That Respondent purchased the domain names without prior notice of Complainant’s alleged rights.
6. That the purchase by Respondent of the disputed domain name was prior to Complainant’s first use of INSIGHT IMAGING in commerce.
7. That Respondent’s generic or descriptive use of “INSIGHT IMAGING” and the disputed domain name is not identical or confusingly similar to the Complainant’s INSIGHT IMAGING mark.
8. That the burden of proof is upon Complainant to establish by competent evidence that the domain name is identical or confusingly similar to a trademark or service mark claimed by the Complainant and that it does indeed have rights in the mark.
9. That Complainant bears a higher burden where the mark consists of common and aptly descriptive words.
10. That Respondent’s domain name has not used the Complainant’s alleged mark in a trademark sense and therefore cannot be “identical or confusingly similar to a trademark or service mark in which the Complainant has rights”.
11. That Complainant’s mark consists of generic terms and common words “inside” and “imaging”.
12. That Complainant cannot have trademark rights in generic terms that are necessary to establish that Respondent’s domain name is identical or confusingly similar to Complainant’s alleged trade mark.
13. That Complainant achieved trademark registration with the United States Patent and Trademark office on July 31, 2007.
14. That Complainant’s trademark application had not yet been filed when Respondent registered the domain name on September 27, 2006.
15. That ownership of a service mark does not ipso facto give the Complainant the exclusive right to the descriptive name.
16. That because Complainant did not have a registered trademark at the time Respondent registered the domain name now in dispute, Complainant must show that a secondary meaning had been established at the time of Respondent’s registration through its extensive use of the mark in the marketplace in order to establish common law rights, and has failed to submit evidence sufficient to support that it has such rights.
17. That Complainant cannot establish a secondary meaning necessary to establish rights in the mark at the time of Respondent’s registration of the disputed domain name because Complainant’s first use in commerce of INSIGHT IMAGING, as stated in its USPTO application was on December 4, 2006, approximately three months after Respondent’s registration of the domain name.
18. That Complainant was not using INSIGHT IMAGING as a mark on its website as late as April 4, 2007.
19. That because Complainant’s mark consists of generic terms and common words, Complainant cannot, by definition, submit evidence sufficient to support a finding of secondary meaning.
20. That Complainant has disclaimed exclusive rights in and into the term “imaging” in its USPTO registration for INSIGHT IMAGING. Therefore, it could not have established any secondary meaning in the INSIGHT IMAGING mark at the time of Respondent's registration of the domain name.
21. That other panels have considered the term “imaging” under similar facts and in connection with similar goods and services as offered by Complainant.
22. That the addition of the term “imaging” sufficiently mitigates any confusing similarity because “Complainant does not own the right to all uses of the term ‘insight’ that other panels have found that a Respondent’s use of the term ‘imaging’ is sufficient to distinguish its domain name from a Complainant’s mark for purposes of Policy ¶ 4(a)(i).
23. That Complainant’s trademark registration for INSIGHT does not grant it the right to prohibit the use of the term “insight” in all domain names.
24. That Numerous third party uses of the term “insight” exists in domain names which further evidences its lack of distinctiveness and lack of potential for consumer confusion when used in association with another generic or descriptive term.
25. That other previous UDRP holdings have found that to find Complainant’s INSIGHT mark to be confusingly similar to the Respondent’s name would have the “unfortunate” result that the Complainant would potentially be given a monopoly on domain names that add words to the expression “insight” and that as a matter of policy this is undesirable and unacceptable.
26. That numerous panels have recognized that extensive third party uses evidence the lack of confusing similarity where a trademark term is combined with another generic term to form a domain name, provided it is not attempting to pass itself off as the Complainant.
27. That as a result of the issues raised above, Complainant cannot establish that Respondent’s domain name is identical or confusingly similar.
C. Respondent’s Rights and Legitimate Interests in his Domain Name
1. Respondent has not registered or used the domain in bad faith.
2. Both of the Respondent’s contentions in respect to these matters will be deferred in light of the Panel’s ruling.
C. Additional Submissions
An additional submission was received by the Forum of the National Arbitration Forum and promptly forwarded to Respondent. Notwithstanding Respondent’s complaint that the matter had not been transmitted electronically per its election, the Panel finds that Respondent has been fully apprised of the matters contained in the Additional Submission and the Panel has fully reviewed and considered on the matters contained therein.
FINDINGS
The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(i) because the disputed domain name is not confusingly similar to the mark and therefore declines to analyze the other two elements of the policy.
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.
The disputed domain name <insightimaging.com> is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark. Additionally, the Panel finds that the term “imaging” sufficiently mitigates any confusing similarity. The Panel finds that Complainant’s trademark registration for its INSIGHT mark does not grant it the right to prohibit the use of the term “insight” in all domain names. The Panel finds that numerous third party uses of the term “insight” exist in domain names and that this is evidence of the lack of confusing similarity. The Panel therefore finds that Respondent’s addition of the word “imaging” is sufficient to disregard Respondent’s disputed domain name from the Complainant’s mark.
See Webvan Group, Inc. v. Atwood, D2000-1512
(WIPO) Feb.20, 2001) (“[W]hen a mark is a relatively weak non-distinctive term,
courts have found that the scope of protection may be limited to the identical
term and that the addition of other descriptive matter may avoid confusion”).
See Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (finding that “[t]he Panel determines that ‘target’ is a generic term and a common word…,” “Complainant does not have monopoly over any domain name with the word ‘target’ in it,” and that “[t]he Panel finds Respondent has rights to and legitimate interests in a domain name that consists of a generic or common term”).
See Shopping.com v. Internet Action Consulting, Case No. D2000-0439 (WIPO July 28, 2000) (finding the use of the term “shopping” in a domain name to be generic, despite the fact that the complainant’s website was located at shopping.com).
The Panel having concluded that Complainant has not satisfied Policy ¶ 4(a)(i) because the disputed domain name is not confusingly similar to the mark, declines to analyze the other two elements of the Policy.
DECISION
Having failed to establish that the disputed domain name is identical or confusingly similar to Complainant’s mark, it is ORDERED that the complaint be DISMISSED.
Robert T. Pfeuffer,
Senior District Judge, as Panelist
Dated: June 2, 2010
Click Here to return to the main Domain Decisions Page
Click Here to return to our Home Page
National Arbitration Forum