ElderCare Advocates, Inc. v. Isaac Goldstein
Claim Number: FA 1357548
Complainant is ElderCare Advocates, Inc. (“Complainant”), represented by Carrie A. Johnson, Ohio, USA. Respondent is Isaac Goldstein (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eldercareadvocates.com>, registered with Network Solutions, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2010; the National Arbitration Forum received payment on November 10, 2010.
On November 10, 2010, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <eldercareadvocates.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@eldercareadvocates.com. Also on November 12, 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 November 29, 2010.
An Additional Submission was received from Complainant and determined to be complete on December 2, 2010. An Additional Submission was also received by Respondent and determined to be complete on December 2, 2010.
On December 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
(1) Respondent’s domain name <eldercareadvocates.com> is confusingly similar to Complainant’s ELDERCARE ADVOCATES, INC. WE’RE THERE WHEN YOU CAN’T BE registered mark, and Complainant’s ELDERCARE ADVOCATES common law mark.
(2) Respondent does not have any rights or legitimate interests in this domain name.
(3) The domain name was registered and is being used in bad faith.
B. Respondent’s Contentions
The term ELDERCARE ADVOCATES is generic.
C. Additional Submissions
The Additional Submissions of Complainant and Respondent do not address any issues relevant to the decision rendered herein.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) 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.
Paragraph 4 (a)(i) of the Policy requires Complainant to show that Respondent’s domain name is identical or confusingly similar to a mark in which Complainant has rights. Complainant has shown that it has rights to the registered mark ELDERCARE ADVOCATES, INC. WE’RE THERE WHEN YOU CAN’T BE. In connection with that registration, Complainant has disclaimed all rights to the term ELDERCARE ADVOCATES, INC. apart from the mark as a whole. The Panel finds that the term “eldercare advocates”, contained in Respondent’s domain name, is neither identical to, nor confusingly similar to, Complainant’s trademark registration, particularly in light of the disclaimer.
With respect to Complainant’s assertion of common law rights to the term ELDERCARE ADVOCATES, INC., the Panel finds that Complainant’s self-serving assertions that it has used this mark in commerce so as to create common law rights is not supported by objective evidence provided by Complainant. See Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that prior UDRP precedent did not support a finding of common law rights in a mark in lieu of any supporting evidence, statements or proof (e.g., business sales figures, revenues, advertising expenditures, number of consumers served, trademark applications or intent-to-use applications)).
Because this Panel has determined that Complainant has not satisfied Policy § 4(a)(i), there is no need for the Panel to decide whether Respondent has rights or legitimate interests in the domain name or whether Registrant registered or used the domain name in bad faith.
As Complainant has failed to establish the requirements of Policy § 4(a)(i), Complainant’s requested relief is hereby DENIED WITHOUT PREJUDICE.
David A. Einhorn, Panelist
Dated: December 13, 2010
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