John J. Wright, D.V.M., P.C., d/b/a Phelps Veterinary Hospital c/o Lynda L. Wright, D.V.M. v. Janelle Yates
Claim Number: FA1209001463770
Complainant is John J. Wright, D.V.M., P.C., d/b/a Phelps Veterinary Hospital c/o Lynda L. Wright, D.V.M. (“Complainant”), represented by Jeffrey B. Scheer of Scolaro, Shulman, Cohen, Fetter & Burstein, P.C., New York, USA. Respondent is Janelle Yates (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <phelpsveterinaryhospital.com>, registered with Tucows, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2012; the National Arbitration Forum received payment on September 24, 2012.
On September 21, 2012, Tucows, Inc confirmed by e-mail to the National Arbitration Forum that the <phelpsveterinaryhospital.com> domain name is registered with Tucows, Inc and that Respondent is the current registrant of the name. Tucows, Inc has verified that Respondent is bound by the Tucows, 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 September 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@phelpsveterinaryhospital.com. Also on September 24, 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 October 15, 2012.
Complainant submitted a timely Additional Submission on October 18, 2012.
Respondent submitted a timely Additional Submission on October 23, 2012.
On October 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Katalin Szamosi 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
Complainant argues that Respondent’s <phelpsveterinaryhospital.com> domain name is identical or confusingly similar to Complainant’s PHELPS VETERINARY HOSPITAL business name, assumed name, registered NY service mark, and registered domain name. In support of this, Complainant asserts that
· it was originally incorporated by John J. Wright on December 1, 1978 and has been continuously operated under the name “Phelps Veterinary Hospital” since its formation;
· it is known as Phelps Veterinary Hospital in Phelps, NY and throughout the surrounding area;
· upon his death, Dr. Wright’s estate transferred the practice and its name to Lynda Wright;
· it filed a Certificate of Assumed Name with the NY Department of State on September 16, 2009 and attached a copy of that certificate
· it has registered PHELPS VETERINARY HOSPITAL as a service mark with the NY State Secretary of State and attached a copy of that registration certificate
· it currently maintains a website at the <phelpsvethospital.com> domain name as part of its general business operations.
Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name. In support of this, Complainant asserts that
· Respondent’s use of the disputed domain name is in no way connected with Respondent or her employer. Respondent is employed by The Country Vet. Respondent’s husband, Dr. Yates, a shareholder of The Country Vet, was previously employed by Complainant and established The Country Vet after his employment with Complainant was terminated;
· the Country Vet advertises exclusively under the name “The Country Vet,” and operates a website at the domain name <thecountryvetonline.com>, neither Respondent nor The Country Vet is known by or associated with the disputed domain name;
· neither Respondent nor The Country Vet has any current connection, association or rights in or with Complainant or the PHELPS VETERINARY HOSPITAL name;
· Respondent’s use of the disputed domain name is in no way connected with a bona fide offering of goods or services, and therefore, Respondent has no protectable interest therein.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith. In support of this Complainant contends that
· Respondent’s use of the disputed domain name, specifically the links available thereon, is solely intended to intentionally harm and diminish Complainant’s reputation. Respondent has never used the disputed domain name to provide bona fide information about the services of either Complainant or The Country Vet;
· Respondent was aware of Complainant’s use of PHELPS VETERINARY HOSPITAL and registered the disputed domain name to prevent Complainant from doing so;
· Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor as it uses the disputed domain name and the links displayed as a venue for negative commentary regarding Complainant. Respondent’s use of the disputed domain name to deceive unsuspecting potential customers of Complainant and direct them to Respondent’s website has caused Complainant to lose substantial business revenue;
· Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark and providing negative information about Complainant at the disputed domain name. Respondent’s resolving website provides negative and damaging information about Complainant, which decreases the likelihood that consumers visiting the domain name would use Complainant’s services and increases the likelihood that those consumers would use The County Vet instead;
· since the termination of Dr. Yates’ employment with Complainant, Respondent has continuously been engaged in bad faith efforts against Complainant, including using the disputed domain name as a venue for negative and slanderous statements about Complainant.
B. Respondent
Respondent asserts, regarding the confusingly similar to of the <phelpsveterinaryhospital.com> domain name to Complainant’s mark, that
· the domain name in question is absolutely similar to Complainant’s mark;
· Respondent purchased the disputed domain name in November of 2009 in response to harassment and threats made toward her husband by Complainant after he refused to work for her;
· Respondent has owned the domain name for two years and Complainant’s service mark was applied for in March 2012 after Complainant had already determined to attack Respondent’s husband.
· the disputed domain name is also the exact name of the corporation Respondent’s husband created after considering the possibilities of developing another veterinary clinic in or around the town of Phelps, NY;
· the resolving website never makes a single mention of Complainant or its business, includes a website description, and displays a Robert Frost poem on the main page. The disputed domain name links to a website that is another poem, with no names, and no clear identifying information, of the characters of the poem.
Respondent argues that she has rights or legitimate interests in the disputed domain name as
· the original intent of the website was Respondent’s own personal venting of a frustrating situation. The resolving website has never been associated with the business Respondent and her husband started three years ago, the new business started this year, or the farm she’s been running since 1998;
· Respondent’s husband has considered starting a third clinic in the town of Phelps in the near future and has already incorporated Phelps Veterinary Hospital, P.C. In the future, the resolving website may be used in connection with this new business;
· Respondent has used the disputed domain name strictly for the fair, noncommercial use of voicing her thoughts and opinions in her own personal way.
· Numerous past cases have stated that the use of domain name for noncommercial purposes is a recognized method of proving rights and interests even when the use may cause some disadvantage or harm to other parties.
Respondent argues that the disputed domain name has not been registered in bad faith as
· there is no need for Respondent to connect her website with any service, veterinary or otherwise. Respondent has the right to use the disputed domain name solely for personal reasons, including a collection of poetry, a complete and factual listing of the lies and allegations made by Complainant or the specific reasons her husband refused to work for Complainant;
· Complainant was not forced to modify its business and assumed name when selecting a domain name as Complainant’s <phelpsvethospital.com> domain name was registered on September 30, 2010 and Respondent’s <phelpsveterinaryhospital.com> was registered on November 2, 2010;
· Respondent’s primary purpose in registering the disputed domain name was to state her own thoughts, words and opinions;
· the disputed domain name contains no link to any business associated with Respondent and does not divert traffic for Respondent’s financial benefit;
· Respondent has made no effort to promote this resolving website to the public or to attract, for commercial gain or any other reasons, Internet users to the resolving website;
· Complainant has alleged slander for the past three years but has yet to offer any proof.
C. Additional Submissions
Complainant argues in its Additional Submission that
· Respondent has acknowledged that the domain name in question is absolutely similar to the assumed name;
· Respondent’s claim that Dr. Yates registered a NY professional corporation under the name “Phelps Veterinary Hospital, P.C.” is in direct response to her receipt of the Complaint and the AVMA Censure Letter and is also in violation of Complainant’s mark;
· Respondent fails to provide adequate evidence that disproves Complainant’s allegations that Respondent has no rights or legitimate interests;
· Respondent states that the disputed domain name has never been tied to or associated with any business of Respondent, which acknowledges no bona fide offering of goods or services;
· Respondent has failed to provide any evidence that she, or any business she is associated with, is commonly known by the disputed domain name;
· Respondent’s claim that the disputed domain name is identical to the name of Dr. Yates’ recently formed NY State professional corporation is of no significance as it fails to demonstrate that Respondent has been commonly known by the disputed domain name;
· Respondent has failed to provide sufficient evidence of a “legitimate noncommercial or fair use of the domain name.”;
· Respondent has a right to utilize a website criticizing Complainant and has no interest in preventing Respondent from doing so. Its only objective is to ensure that Respondent does not do so through the inappropriate use of the Complainant’s registered servicemark and assumed name;
· the fact that Respondent has not actively promoted the disputed domain name and does not have increased traffic is not relevant. It is the only relevant fact that Respondent’s intent is to benefit from such use;
· Respondent goes to great lengths to attack Complainant, stating that the Complainant registered its <phelpsvethospital.com> domain name on September 30, 2010, which was before Respondent registered the disputed domain name on November 2, 2010. Respondent stated earlier in its Response, however, that it registered the disputed domain name in November 2009;
· By creating a likelihood of confusion with Complainant’s mark and indicating that the source of materials found on Respondent’s website may be associated with Complainant, Respondent has attempted to attract Internet users to the disputed domain name in an attempt to sway such Internet user’s opinion of Complainant.
Respondent argues in its Additional Submission that
Complainant was originally incorporated on December 1, 1978 and has been continuously operated under the name PHELPS VETERINARY HOSPITAL since its formation.
Complainant is the owner of the PHELPS VETERINARY HOSPITAL service mark registered with the NY State Secretary of State (Reg. No. S22125 registered March 12, 2012).
Complainant filed a Certificate of Assumed Name with the NY Department of State on September 16, 2009 for PHELPS VETERINARY HOSPITAL.
Complainant registered the <phelpsvethospital.com> domain on September 30, 2010.
Respondent registered the <phelpsveterinaryhospital.com> domain name on November 2, 2010.
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 finds that Complainant has continuously used the mark since 1978 so it has acquired secondary meaning in the minds of consumers rising to the level of common law rights under 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 Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003).
The Panel notes that the disputed domain name only differs from the mark of the Complainant in that it does contain the generic top-level domain (“gTLD”) “.com.”
Additionally the Panel notes that the Respondent acknowledged the similarity between the mark and the disputed domain name, therefore the Panel finds that Respondent’s <phelpsveterinaryhospital.com> domain name is confusingly similar to Complainant’s PHELPS VETERINARY HOSPITAL mark pursuant to Policy ¶ 4(a)(i).
As to the second element, 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).
The Panel finds that the WHOIS information for the disputed domain name identifies “Janelle Yates,” as the registrant, therefore Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel notes that Respondent has failed to provide evidential support for the argument that she or her business is commonly known by the disputed domain name. The claim that the disputed domain name is identical to the name of Dr. Yates’ recently formed NY state professional corporation is of no significance as it fails to demonstrate that Respondent has been commonly known by the domain name and the corporation was only formed after the receipt of the Complaint and the AVMA Censure Letter.
The Panel finds that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name.
The Panel finds that Respondent’s use of the disputed domain name is not a legitimate noncommercial or fair use because, while Respondent has a right to use a website criticizing Complainant, Respondent does not have the right to criticize Complainant through the inappropriate use of Complainant’s registered service mark and assumed name. The Panel finds that use of the Complainant’s service mark and assumed name qualifies as inappropriate because the domain name is exactly identical thereto and there is no such element which could refer to the criticizing nature of the website.
The Panel concludes that Respondent has shown neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark.
The Panel finds that using a confusingly similar disputed domain name to host a website providing criticism and negative commentary about Complainant is evidence of bad faith under Policy ¶ 4(a)(iii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith).
The Panel also notes that the Respondent asserted her intention to use the contested domain name for offering services in direct competition with Complainant’s business which could be further evidence of Respondent’s intention to use the domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <phelpsveterinaryhospital.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi, Panelist
Dated: November 8, 2012.
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