eyecarecenter, O.D., P.A. v. Eye Care Associates, ODPA
Claim Number: FA1107001398961
Complainant is eyecarecenter, O.D., P.A. (“Complainant”), represented by T. Stewart Gibson, North Carolina, USA. Respondent is Eye Care Associates, ODPA (“Respondent”), represented by David E. Bennett, North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eyecarecenters.com>, registered with Wild West Domains, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
James A. Carmody, Terry F. Peppard, Darryl C. Wilson, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2011; the National Arbitration Forum received payment on July 15, 2011.
On July 18, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <eyecarecenters.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 July 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2011 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@eyecarecenters.com. Also on July 20, 2011, 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 August 9, 2011.
An additional submission was timely received from the Complainant on August 15, 2011 and was deemed compliant with Supplemental Rule 7.
An additional submission was timely received from the Respondent on August 17, 2011 and was also deemed compliant with Supplemental Rule 7.
On August 16, 2011 pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed James A. Carmody, Terry F. Peppard, Darryl C. Wilson, Chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it has protectable rights in the word mark EYE CARE CENTER based on common law, state and federal statutory rights. Complainant states that it adopted the words “eye care center” over 30 years ago and has continuously used the terms in association with its business as a provider of optometry services. Complainant asserts that Respondent is a direct competitor of Complainant who maintains several websites and who registered and is using the disputed domain <eyecarecenters.com> in bad faith. Complainant contends that the disputed domain name “is confusingly similar to Complainant’s service marks “eyecarecenter” and “EYE CARE CENTER” in which the Complainant has rights….”
B. Respondent
Respondent contends that “Complainant has not established rights in the mark eye care center.” Respondent instead asserts that Complainant’s mark is generic. Respondent contends that Complainant’s registrations should not be taken as recognition of the Complainant’s rights and to the extent that any are recognized that Respondent’s domain name is not confusingly similar to the Complainant’s marks. Respondent further asserts that “Complainant cannot establish rights in the name EYE CARE CENTER standing alone under common law.” Respondent also stated that even assuming that Complainant has some rights in the alleged marks, that Respondent still has some right to use the mark in connection with its business. Respondent stated that it did not register the disputed domain with an intention of causing confusion but merely sought to increase the visibility of its services to netizens entering generic terms while searching the web for potential assistance with eye care matters.
C. Additional Submissions
Complainant’s additional submissions consisted of an affidavit and exhibits on behalf of its current President. The submissions provided some additional history of the company along with a current snapshot of it competitive status relative to the Respondent and others in the optometric field in its geographical area and throughout the United States. The documents provided examples and detailed the expenditures made on Complainant’s “primary branding ‘eyecarecenter’ or ‘EYECARECENTER’”. The additional submissions also state that Complainant was unaware of the Respondent’s disputed domain name until 2009 and that upon becoming aware promptly took action by filing a related complaint with the North Carolina Board of Optometry.
Respondent’s additional submission “maintains that Complainant’s Additional Submission fails, in all respects, to refute the core contentions of the Response and, at best, merely obscures the essential issues facing the Panel.” The Respondent’s additional submission then restates the principle arguments of its initial response arguing that Complainant has not shown it has rights in any protectable mark, that Respondent has a legitimate right in the disputed domain name, and that Complainant has not shown that the disputed domain was registered in bad faith.
Complainant is Eye Care Center, O.D., P.A. (“ECC”), a professional corporation incorporated in the State of North Carolina on December 15, 1976. Complainant has 54 total company and franchised offices located in North and South Carolina employing 473 people including 83 optometrists. One industry trade publication ranked Complainant as 13th in sales in the United States in 2010. Complainant claims a first use of the mark EYE CARE CENTER of January 1980 as reflected in its North Carolina State service mark registration for the mark OPTOMETRIC EYE CARE CENTER and its accompanying design. Additionally Complainant received a federal registration from the United States Patent and Trademark Office (USPTO) for the service mark EYECARECENTER and design on March 2, 2011. Complainant also registered the domain name <eyecarecenter.com> on January 13, 2002 and has maintained a website at that domain since March of the same year. Complainant claims to have spent millions of dollars on advertising over the past years to “promote its services under the ‘eyecarecenter’ brand.” In 2010 approximately $1, 014,000 was spent on advertising Complainant’s services in association with its marks. Complainant has used the marks “eyecarecenter” or “EYECARECENTER” in a wide variety of advertising contexts since 1980 and has also engaged in the licensing of its marks to various optometry practices since 1986.
Respondent Eye Care Associates, O.D., P.A. (“ECA”), was formed in 1993 although it additionally identifies itself as a successor in interest to optometric businesses in continuous operation since 1978. Respondent currently owns and operates 20 eye care centers with over 245 employees of whom 28 are trained optometrists. It is ranked by one industry trade publication as the 20th largest eye care provider in the United States. Respondent received a USPTO service mark registration for the mark EYE CARE ASSOCIATES on January 23, 2007. Respondent is Complainant’s primary competitor for provision of optometric services both locally and regionally and has operated a website at the domain <eyecareassociatesnc.com> since 2000. That domain name is one of 23 domains owned or controlled by Respondent all of which include some reference to ECA and/or its eye and vision care services expressly or by abbreviation.
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.
Complainant is the owner of state and federal service mark registrations for the mark EYECARECENTER in full or in part. The EYECARECENTER service mark federal registration was issued by the USPTO (for EYECARECENTER and Design mark, Reg. No. 3,754,126 filed June 12, 2009) on March 2, 2010. Such registration has been found by prior panels under the UDRP to confer rights upon a complainant. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”). The Panel finds that Complainant has established rights in its EYECARECENTER mark under Policy ¶ 4(a)(i) through its registration of such with the USPTO, which dates back to the original filing date on June 12, 2009. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant also submits evidence claiming common law rights in its mark dating back to 1980 based on its alleged first use date reflected in its North Carolina state service mark application. The Panel notes that the State of North Carolina registration contains the terms OPTOMETRIC EYE CARE CENTER with a design and does not reflect the issuance of a registration for the mark EYECARECENTER alone. Complainant does provide evidence of use of both of those marks in examples of advertising that has been used over the years dating back to 1994 to inform consumers of Complainant’s services. The Panel takes note of Complainant’s efforts and expenditures in advertising its services in association with its claimed marks and also the number of offices complainant has been operating in the region over the years since Complainant’s inception. The Panel finds, based upon Complainant’s arguments and submissions, that Complainant has demonstrated that it has some common law rights in the EYE CARE CENTER mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years).
Complainant also argues that the <eyecarecenters.com> domain name is confusingly similar to its EYECARECENTER mark. The Panel notes that the domain name contains Complainant’s entire asserted mark, absent the spaces between the terms of the mark, while adding the letter “s” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)).
While Respondent contends that the <eyecarecenters.com> domain name is comprised of common and generic or descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Plorida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met its burden.
Respondent claims that its use of the disputed domain name is legitimate. Respondent asserts that it registered the <eyecarecenters.com> domain name on July 3, 2003, and has used the domain name to refer Internet users to its official website located at <eyecareassociatesnc.com>. Respondent argues many companies that offer optometry services use the term “eye care centers” to describe their business, and that Respondent merely took advantage of this term being available. The Panel finds that Respondent’s use of the disputed domain name to direct Internet users to its official website is a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also 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 derma pathology 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).
Respondent also argues that the terms of the <eyecarecenters.com> domain name are common and generic or descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel agrees that Complainant’s rights do not confer upon the Complainant the authority to prevent the Respondent from using the words “eye care center”. The Panel finds that Complainant’s rights in the mark are limited and thus do not preclude Respondent from establishing its rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Without making any express determination on the validity of Respondent’s assertions that Complainant’s marks are generic, the Panel recognizes that the Complainant’s marks are descriptive of the services provided by both parties. One who selects descriptive terms as their mark or brand may put sufficient time and money behind those terms to elevate them to a level of distinctiveness under the doctrine of secondary meaning, but that recognition and commensurate registration cannot take the words out of the common vernacular. The words may continue to be used by all to convey their standard meaning.
In this instance despite the size, revenue, and overall sophistication of the parties there was clearly a lack of foresight in regards to selecting marks that did more than indicate the type of services provided. While the Complainant’s specialized business acumen is reflected positively in the success of its operations, its practice and understanding in regards to its marks is clearly out of focus.
Complainant has not proven this element.
Because the Panel concludes that Respondent has rights or legitimate interests in the <eyecarecenters.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). 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.”).
Complainant has not proven this element.
As Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <eyecarecenters.com> domain name REMAIN WITH Respondent.
James A. Carmody, Terry F. Peppard, Darryl C. Wilson, Chair, Panelist
Dated: August 30, 2011
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