J. Kyle Mathews, M.D., P.A. d/b/a Plano Ob/Gyn Associates v. C. Keith Grisham
Claim Number: FA 1358903
Complainant is J. Kyle Mathews, M.D., P.A. d/b/a Plano Ob/Gyn Associates (“Complainant”), represented by Brett E. Lewis of Lewis & Hand, LLP, New York, USA. Respondent is C. Keith Grisham (“Respondent”), represented by Stephen H. Sturgeon of Law Offices of Stephen H. Sturgeon & Assoc of Washington, D.C., Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <northwestplanoobgyn.com>, registered with GoDaddy.com, Inc.
The undersigned certify that they acted independently and impartially and to the best of their knowledge had no known conflicts in serving as Panelists in this proceeding.
Judge Carolyn Marks Johnson, G. Gervaise Davis III Esq., Prof. Darryl C. Wilson, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2010; the National Arbitration Forum received payment on November 18, 2010.
On November 17, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <northwestplanoobgyn.com> domain name is registered with GoDaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@northwestplanoobgyn.com. Also on November 23, 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 December 14, 2010.
On December 20, 2010 Complainant timely submitted an Additional Submission in compliance with Supplemental Rule 7.
On December 27, 2010 Respondent timely submitted an Additional Submission in compliance with Supplemental Rule 7.
On December 27, 2010, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Judge Carolyn Marks Johnson, G. Gervaise Davis III Esq., Prof. Darryl C. Wilson, Chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a physician who contends that he is the owner of common law and/or U.S. federal trademark rights in the marks PLANO OBGYN and PLANO OB/GYN ASSOCIATES as well as the owner of a former website located at <planoobgynassociates.com>. Complainant further asserts that Respondent’s registered domain name <northwestplanoobgyn.com> is confusingly similar to Complainant’s marks. Complainant contends that Respondent has no rights or legitimate interests in the domain name as he has not expressly “licensed, transferred, assigned or otherwise authorized Respondent to use the PLANO OBGYN Mark, or any variations thereof, as domain names on the Internet.” Complainant also claims that Respondent registered and is using the domain name in bad faith since Respondent had prior knowledge of Complainant’s marks but registered the disputed domain name despite being aware of the Complainant’s existing rights. Complainant states that Respondent is now offering directly competing services thereby disrupting Complainant’s business. Complainant additionally alleges that Respondent’s domain name is responsible for causing initial interest confusion amongst netizens as well as actual confusion amongst prospective clients and that these problems are exacerbated by Respondent’s misuse of metatags for the terms making up Complainant’s mark in Respondent’s domain name and competing website.
B. Respondent
Respondent contends that he is a physician who worked together with the Complainant for nine years in a joint venture arrangement. Respondent states that due to disagreements between the parties he separated from the Complainant thus necessitating the registration of the disputed domain name to distinguish his practice from that of the Complainant. Respondent asserts that Complainant sought and received U.S. federal registration of his mark PLANO OB/GYN ASSOCIATES after the business separation occurred and was only able to do so through the use of fraudulent assertions to the U.S. trademark office. Those allegedly fraudulent assertions included “the amazing representations that the alleged mark had been used exclusively by Complainant at least as early as December 31, 1992 and that no other person or entity had the right to use the term (or to use another term that could cause confusion).” The Respondent claims that he and the Complainant “presented themselves and marketed themselves under the name of Plano OB/GYN Associates.” The Respondent additionally states that signage at various office locations which they shared as well as the shared nature of their practice and other particulars of their business arrangement lend support to the legitimacy of Respondent’s rights and interests in the domain name. Respondent contests the assertion that the disputed domain name was registered and used in bad faith and argues that Complainant has not established protectable trademark rights on which to base the instant proceeding. The latter contention is based on Respondent’s statement that Complainant’s case should fail “because the domain name was registered before Complainant had any bona fide claim to trademark rights to the term.” Respondent also contends that Complainant is abusing the UDRP process and has engaged in reverse domain name hijacking.
C. Additional Submissions
Complainant’s Additional Submission contends that Respondent’s assertions consist of blatant factual inaccuracies, flat out misrepresentations, and contrived self-serving testimony unsupported by a shred of evidence. Complainant asserts that the parties never had a joint venture and that Respondent “has never had any rights in the mark or relationship with Complainant…that would give him any rights or legitimate interests to register and use the disputed domain name.” Complainant characterizes the business relationship that did exist between the parties as an “attempt to negotiate an expense sharing agreement” that was never signed although it expressly disavowed the existence of any joint venture or partnership agreement. Complainant also asserts exclusive use of its mark in commerce for eighteen years, and in conjunction with other statements alludes to the conclusion that Complainant’s mark, while initially descriptive, became distinctive per the U.S. trademark’s office “legal presumption that a descriptive mark used in commerce continuously over a period of five years acquires distinctiveness.” Complainant’s Additional Submission repeats its claim that Complainant has common law rights as well as registered trademark rights in the marks noted and that Respondent deliberately targeted those marks to cause confusion amongst consumers in order to divert business away from Complainant to Respondent.
Respondent’s Additional Submission contends that Complainant purposely and continuously raises irrelevant arguments, misstates Respondent’s positions, and fails to prove the elements required for success in an UDRP proceeding. Respondent asserts that Complainant’s recognition of their shared business arrangement must include the recognition that Complainant did not have exclusive use of the term “Plano Ob/Gyn Associates”. Instead it recognizes the mark as the name they were known by and the name by which they marketed themselves. Respondent reiterates his claim to legitimate rights to the domain name based on timing issues and again disputes the existence of any protectable rights in any mark held by the Complainant. Respondent’s submission and supporting documentation assert that Complainant cannot possibly have rights in the geographic designation of the city of Plano or in the commonly recognized abbreviated description of the medical services for obstetrics and gynecology, Ob/Gyn. Respondent additionally notes that he is using the disputed domain in conjunction with continuing to offer medical services as in the past and is therefore engaged in a bona fide use of the domain name. As such Respondent also reasserts his contention that the domain name was not registered in bad faith nor is it being used in such a manner.
This proceeding was instituted as part of a broader business dispute between the parties who are two physicians engaged in the practice of Ob/Gyn medicine and related services in Plano, Texas. The Complainant traces his use of Plano Ob/Gyn Associates, Inc. to 1992 when he incorporated a medical practice with another physician. Complainant claims that common law rights were established at some point in time despite the descriptive nature of the terms and that these rights became exclusive to him after he bought the other physician’s share of the business upon her retirement in 1997.
No documentation involving the name of the business when established, or support for the claim of protectable common law rights developed during that time is provided. There is also no documentation regarding trademark rights related to the purchase of any business share provided.
Complainant and Respondent entered into a business arrangement in 2001 and continued their arrangement in some form or another until sometime in 2010. Signage and/or related materials for the parties business read “Plano Obstetric and Gynecology Associates” with the parties names listed together above or below the name. Respondent registered the disputed domain name <northwestplanobgyn.com> on or about November 10, 2008 and in February 2009 received an assumed name certificate for “Northwest Plano Obstetrics and Gynecology Associates”. In March 2010 Complainant filed a trademark application for PLANO OB/GYN ASSOCIATES and a registration for that mark issued October 26, 2010. The Complainant filed the instant proceeding November 16, 2010.
The above facts are the only assertions clearly supported by the parties’ submissions. There is a lack of clarity regarding the parties’ initial relationship in 2001 as well as their business particulars until that relationship ended and particularly between 2008 and 2010. However both parties agree that there was some type of ongoing business arrangement between them. That arrangement obviously deteriorated and the current state of business affairs is unclear.
The UDRP proceedings were established to resolve conflicts between trademarks and domain names. It is not the proper forum to resolve disputes between disgruntled business associates who failed to take adequate precautions regarding trademark issues where asset distribution and private competition were concerned in the face of business dissolution. The Panel finds that this is a business/contractual dispute that falls outside the scope of the UDRP and therefore declines to analyze this matter under the UDRP. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy). The Panel makes no findings on the parties’ greater business conflicts but instead holds that under their particular history and facts that their dispute is best resolved more fully elsewhere.
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; and
(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.
The Panel declines to make a determination on this element based on the facts and history of the parties’ business relationship.
The Panel declines to make a determination on this element based on the facts and history of the parties’ business relationship.
The Panel declines to make a determination on this element based on the facts and history of the parties’ business relationship.
The Panel finds that the parties’ submissions indicate that their conflict is a business and contractual dispute that falls outside the realm of the UDRP. The Panel therefore concludes that Complainant’s requested relief shall be DENIED.
The Panel also concludes that Respondent’s request of a finding against Complainant for reverse domain name hijacking is denied for the same reasons noted above.
Accordingly, it is Ordered that the <northwestplanoobgyn.com> domain name REMAIN WITH Respondent.
Judge Carolyn Marks Johnson, G. Gervaise Davis III Esq., Prof. Darryl C. Wilson, Chair, as Panelists.
Dated: January 10, 2011
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