Informatics Corporation of America v. Caroline Snyder
Claim Number: FA1205001442482
Complainant is Informatics Corporation of America (“Complainant”), represented by Michael A. Bullock, Tennessee, USA. Respondent is Caroline Snyder (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carealign.com>, registered with GoDaddy.com, 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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2012; the National Arbitration Forum received payment on May 11, 2012.
On May 4, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <carealign.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2012 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@carealign.com. Also on May 11, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 1, 2012.
On June 4, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In its Complaint, Complainant contends as follows:
Respondent’s <carealign.com> domain is identical to Complainant’s CAREALIGN registered mark.
Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because it has no website at the disputed domain name and it registered <carealign.com> with the intention of selling it.
Respondent has failed to establish a website at the disputed domain name even though it has owned it for over 5 years.
Respondent's passive holding of the disputed domain name demonstrates a lack of rights and legitimate interests. Complainant solicited the transfer of the domain name on January 5, 2012, anticipating a reasonable out of pocket payment to Respondent. On February 26, 2012, Respondent responded that offers were being heard from several other suitors and requested that Complainant submit an offer. At that time, Respondent was notified of Complainant’s CAREALIGN trademark, and a link to review it.
Complainant determined that an out of pocket expenditure of $300-$450 was recently made by the Respondent to re-register (Feb-2012) the domain for 10 years. Complainant offered $450 and subsequently $1000, further considering Respondent’s cost of time in completing the transfer process. On March 29, 2012, Respondent indicated that an offer in excess of $30,000 would be required for further consideration. Complainant therefore alleges Respondent’s attempt to sell the disputed domain name to Complainant who is the owner of trademark, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(i)
Additionally, the <carealign.com> domain name is identical to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the <carealign.com> domain name, despite it being identical, is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
B. Respondent
In its Response, Respondent contends as follows:
Respondent recognizes that the <carealign.com> domain name is identical to Complainant’s CAREALIGN mark
Respondent registered the disputed domain name on February 20, 2007 with no intention of selling it, but for future use in Respondent’s future work as a therapist, social worker, and mental health professional. “Carealign” has the same phonetic pronunciation as Respondent’s first name, Caroline. In addition, the words “care” and “align” are both common words integrally related to mental health.
Respondent intended to use the website both as a blog about mental health issues and a resource for mental health services, after obtaining a Master of Social Work (MSW) degree. Respondent was enrolled in school to earn a Master Degree of Social Work from September 2008 through May 2012. Respondent was informed of the complaint before the date of graduation, May 20, 2012. Respondent has established online alias of “carealign” for future use as a mental health professional on other sites including Flickr, Tumblr, Twitter and Wordpress. The above demonstrates “legitimate interests” pursuant to UDRP ¶ 4(a)(ii).
Respondent was unaware of the existence of Complainant at the time of registration of the <carealign.com> domain name on February 20, 2007. Complainant registered the CAREALIGN trademark Reg. No. 3,749,146 on February 16, 2010, nearly three years after Respondent registered <carealign.com>. Therefore the disputed domain name could not have been registered in bad faith. Respondent’s intended use of the website is unrelated to the business of Complainant and cannot be considered a competitor.
The email correspondence between Complainant and Respondent demonstrates Respondent’s interest in the <carealign.com> domain name, willingness to consider sale, rejection of Complainant’s offers, and ultimate attempt to end sales discussion or make substantial profit ($30,000) to defray educational loans in excess of $50,000. Respondent’s willingness to consider sale does not preclude legitimate interest nor does it indicate bad faith.
Complainant owns a federal trademark registration for CAREALIGN, Registration No: 3,749,146, Registration Date February 16, 2010, filed on June 29, 2009, for “Computer software for use in providing clinical information via the Internet to members of the medical and healthcare communities; computer software for use in providing web-based access to an electronic health records portal; computer software for use in analyzing clinical results and/or medical da ta for use by medical and healthcare businesses,” in International Class 9. First use / first use in commerce: February 2009.
Respondent registered the disputed domain name on February 20, 2007.
DISCUSSION
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 has evidenced that it has trademark rights in the CAREALIGN mark.
Since the disputed domain name incorporates the CAREALIGN mark in its entirety, with the only addition of the generic top level domain “.com”, the Panel finds that disputed domain name is identical to Complainant's mark
Given the Panel’s finding on bad faith (see below), the Panel need not deal with rights or legitimate interests in the disputed domain name. See I4 Solutions, Inc. v. Miani, FA 1153871 (Nat. Arb. Forum April 24, 2008) (finding it unnecessary to examine Policy ¶¶ 4(a)(i) and (ii), as the complainant must succeed under all three portions in order to grant the requested relief; thus, a denial under Policy ¶ 4(a)(iii) leads the Panel to decline to analyze the other portions of the Policy); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).
A finding of registration in bad faith requires that the respondent knew or should have known of the complainant's mark at the time of registering the domain name, i.e., that the domain name registration is made with the complainant's mark in mind. See Jet Marques v. Vertical Axis, Inc., D2006-0250 (WIPO May 26, 2006) (a finding of bad faith registration requires that respondent registered the domain name with complainant’s trademark in mind); see also carsales.com.au Ltd. v. Flanders, D2004-0047 (WIPO Apr. 8, 2004) (“In considering the issue of bad faith, the Panel takes account of the fact that the Complainant filed its application for and apparently began use of the mark ‘CARSALES’ almost three years after the Respondent registered the disputed domain name. It would therefore follow as is asserted by the Respondent that the Respondent could ‘not possibly have registered the disputed domain with Complainant’s mark in mind’. It is well established that a Complainant cannot succeed in its burden of proof of showing bad faith when registration of the domain name is antecedent to a Complainant’s trademark application or use of the mark in question.”).
In the present case, Respondent registered the disputed domain name on February 20, 2007, that is over two years before Complainant filed its application for the CAREALIGN trademark with the USPTO, on June 29, 2009, and almost three years before Complainant registered the mark, on February 16, 2010. Moreover, according to Complainant's statement made at the moment of filing its trademark application, the CAREALIGN mark was first used in February 2009, that is two years after the registration of the disputed domain name by Respondent.
This means that Respondent could not have had Complainant's mark in mind when it registered the disputed domain name. In other words, Complainant has failed to prove that Respondent registered and is using the disputed domain name in bad faith.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <carealign.com> domain name REMAIN WITH Respondent.
Roberto A. Bianchi, Panelist
Dated: June 18, 2012
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