national arbitration forum

 

DECISION

 

WellMed Medical Management, Inc. v. Wellmed Medical Center

Claim Number: FA1205001446303

 

PARTIES

Complainant is WellMed Medical Management, Inc. (“Complainant”), represented by Cathryn Berryman of Winstead, P.C., Texas, USA.  Respondent is Wellmed Medical Center (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wellmedplan.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2012; the National Arbitration Forum received payment on May 31, 2012.

 

On May 31, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <wellmedplan.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 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 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@wellmedplan.com.  Also on May 31, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

a)            Complainant has rights in the WELLMED mark, which it uses in connection with medical goods and services;

b)            Complainant owns United States Patent and Trademark Office (“USPTO”) trademark registrations for the WELLMED mark (e.g., Reg. No. 2,970,921 registered July 19, 2005);

c)            The <wellmedplan.com> domain name is confusingly similar to the WELLMED mark;

d)            Respondent is not commonly known by the <wellmedplan.com> domain name;

e)            The <wellmedplan.com> domain name resolves to a website, which advertises Respondent’s competing healthcare business;

f)             Respondent registered and is gainfully using the <wellmedplan.com> domain name by diverting Internet users away from Complainant’s website;

g)            Respondent had actual and/or constructive knowledge of Complainant’s rights in the WELLMED mark at the time of the <wellmedplan.com> domain name’s registration.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds a registered trademark for the WELLMED mark in the United States.  Respondent did not submit a Response in this proceeding.

 

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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it has rights in the WELLMED mark, which Complainant claims it uses in connection with medical goods and services. Registration of a mark with a federal trademark authority is one way to demonstrate that the complainant has rights in the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Complainant provides the Panel with evidence of its USPTO trademark registrations for the WELLMED mark (e.g., Reg. No. 2,970,921 registered July 19, 2005). Therefore, the Panel finds that Complainant has rights in the WELLMED mark pursuant to Policy ¶ 4(a)(i).

 

Complainant asserts that Respondent’s <wellmedplan.com> domain name is confusingly similar to the WELLMED mark. The addition of a generic term, such as “plan,” fails to distinguish the <wellmedplan.com> domain name from the WELLMED mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The addition of the generic top-level domain (“gTLD”) “.com” does not bar the Panel from a finding of confusing similarity. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that the <wellmedplan.com> domain name is confusingly similar to the WELLMED mark under Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant contends that Respondent is not commonly known by the <wellmedplan.com> domain name. Complainant states that Respondent is not authorized to use the WELLMED mark and there is no evidence of Respondent having a connection to the WELLMED mark beyond the improper registration of the disputed domain name. Additionally, Complainant provides the Panel with the WHOIS record for the <wellmedplan.com> domain name in which “Wellmed Medical Center” is listed as the domain name registrant. Even where a Respondent appears to be commonly known by a disputed domain name in the WHOIS record, if all other available information available disputes this fact, the panel may find that the respondent is not commonly known by the disputed domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). Therefore, on this record, the Panel finds that Respondent is not commonly known by the <wellmedplan.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant alleges that Respondent’s use of the <wellmedplan.com> domain name is further evidence of a lack of rights or legitimate interests in the disputed domain name. Complainant contends that Respondent uses the <wellmedplan.com> domain name to promote its own business, including the advertisement of healthcare plans and the promotion of its physicians and its office. The panels in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), held that the use of a disputed domain name in connection with the respondent’s competing business is not a use that is protected under Policy ¶ 4(c)(ii) and 4(c)(iii). Therefore, the Panel finds that Respondent’s use of the <wellmedplan.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant regards Respondent’s registration and use of the <wellmedplan.com> domain name as a product of bad faith. Complainant contends that Respondent intends for the <wellmedplan.com> domain name to divert Internet users from Complainant’s website to Respondent’s. Complainant also contends that Respondent is using the <wellmedplan.com> domain name for personal gain. The registration and use of a disputed domain name in connection with a competing business is generally evidence that the respondent is using the competitor-complainant’s mark as a way to achieve a wrongful advantage in the market by creating confusion as to the source of the disputed domain name. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). The Panel finds that Respondent registered and is using the <wellmedplan.com> domain name in order to create confusion as to the source of the disputed domain name and take commercial advantage of the mistakes made by Internet users as a result of that confusion.  Accordingly, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).

 

Finally, Complainant contends that the <wellmedplan.com> domain name was registered by Respondent with full knowledge of Complainant’s rights in the WELLMED mark. Complainant asserts that it uses the WELLMED mark extensively throughout the United States and Respondent registered the <wellmedplan.com> domain name six years after the WELLMED marks were registered with the USPTO. Complainant contends that Complainant’s use and trademark registrations gave Respondent actual knowledge of Complainant’s rights in the WELLMED mark at the time Respondent registered and began using the <wellmedplan.com> domain name. Therefore, because the Panel finds that Respondent had actual knowledge of Complainant’s rights in the WELLMED mark at the time Respondent registered the <wellmedplan.com> domain name, the Panel determines that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wellmedplan.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  June 29, 2012

 

 

 

 

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