Westlake IVF, LLC v. Vaughn, Silverberg and Associates, LLP
Claim Number: FA1307001512344
Complainant is Westlake IVF, LLC (“Complainant”), represented by Mehryar K. Kavoussi of Westlake IVF, LLC, Texas, USA. Respondent is Vaughn, Silverberg and Associates, LLP (“Respondent”), represented by William D. Raman of Fleckman & McGlynn, PLLC, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <westlakeivf.com> ("the Domain Name"), registered with TierraNet Inc. d/b/a DomainDiscover.
The undersigned certifies that he or 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.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2013; the National Arbitration Forum received payment on August 6, 2013.
On July 30, 2013, TierraNet Inc. d/b/a DomainDiscover confirmed by e-mail to the National Arbitration Forum that the <westlakeivf.com> domain name is registered with TierraNet Inc. d/b/a DomainDiscover and that Respondent is the current registrant of the name. TierraNet Inc. d/b/a DomainDiscover has verified that Respondent is bound by the TierraNet Inc. d/b/a DomainDiscover 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 August 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 2013 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@westlakeivf.com. Also on August 13, 2013, 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 August 30, 2013.
On September 6, 2013 an Additional Submission of the Complainant was received which was not compliant with Supplemental Rule 7.
On September 11, 2013 an Additional Submission of the Respondent was received which was compliant with Supplemental Rule 7.
On September 6, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist. The Panel made an Order under Rule 12 of the Policy for further evidence from the parties on September 23, 2013 ('the Order').
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.
On September 29, 2013 the Complainant provided further evidence pursuant to the Order.
On September 30, 2013 the Complainant provided further evidence pursuant to the Order.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant's submissions can be summarised as follows:
The Domain Name is identical to the registered trade mark WESTLAKE IVF, filed February 27, 2012, granted August 14, 2012 with a first use date of February 6, 2010. The Respondent has not been granted any permission or license to use the Complainant's WESTLAKE IVF trade mark. The Complainant is entitled to the uncontestable use of this mark. The Respondent has registered the Domain Name to disrupt the Complainant's business, to cause confusion for commercial gain and has caused financial loss.
B. Respondent
The Respondent's submissions can be summarised as follows:
The registration of the Domain Name on July 8, 2011 predated the acquisition of rights in the WESTLAKE IVF trade mark by the Complainant. The Complainant did not obtain its Supplemental Registration for WESTLAKE IVF until August 14, 2012 and was not filed until February 27, 2012. The Complainant has not submitted any proof of its alleged first use date of bona fide use in the course of trade February 6, 2010. Indeed in its trade mark application the first use date is given as, at least as early as 08/06/2010, a full six months after the date listed in the Complaint. According to the records of the Texas Secretary of State, the Complainant was not even formed until December 9, 2010. The Complainant did not render services under the name WESTLAKE IVF until after its office opened in July or August 2011. This date is approximately simultaneous or, more likely, just after the registration of the Domain Name. Given the descriptive nature of the name the Complainant could not have obtained the requisite distinctiveness in WESTLAKE IVF before said registration.
Westlake is a city in Texas and a suburb of Austin. IVF is an acronym for in vitro fertilization. As such, the Domain name is descriptive of in vitro fertilization services offered in the geographical area of Westlake in Texas. Respondent practices in Westlake and use of Westlake IVF in relation to its IVF services in Westlake is fair use.
Respondent's acquisition and use of the Domain Name has been made in good faith since July 2011. It has been the Respondent's practice to purchase domain names related to geographical areas in which it practices as far back as January 2010 when it purchased <roundrockivf.com> (forwarded to its main website at <www.txfertility.com>) and wacoivf.com (forwarded to <wacofertility.com>). It has since purchased <templeivf.com> on December 15, 2010 (forwarded to <www.templefertility.com>) and purchased <southaustinfertility.com> in 2012. The Domain Name is a name in these series of names which are integral to the Respondent's business and was purchased for valid business reasons in good faith. There is no intent to sell the Domain Name. The Respondent was not aware at the time of registration of the Domain Name that the Complainant was in the process of opening a business using WESTLAKE IVF. Even if it had been WESTLAKE IVF is a geographically descriptive designation and has not gained the requisite distinctiveness and secondary meaning in the marketplace. The Respondent was not aware of the formation of the Complainant until this complaint was filed.
Respondent has practiced IVF services in Texas since 1984 and is recognised worldwide for its pregnancy rates. It prospers in a competitive environment and the Complainant is not its sole competitor. The speculation by the Complainant that the Respondent registered the Domain Name to disrupt the Complainant's business has no basis in fact.
Even if there was any confusion amongst customers this is due to the Complainant's use of a descriptive term and the law allows such use.
C. Additional Submissions
The Additional Submission of the Complainant was not compliant with Supplemental Rule 7, however in the interests of justice and because the Additional Submission of the Respondent does not make sense without the Complainant's Additional Submission the Panel will in its discretion admit it into the Proceedings.
The Additional Submission of the Complainant as far as it is relevant can be summarized as follows:
Westlake IVF is an independent entity formed as an LLC on December 9, 2010 with a first date of use of August 6, 2010 before the date of registration of the Domain Name.
The formation of Westlake IVF was a matter of public record. Respondent knew about the formation of the Complainant before the date of the Complaint as it was informed of such in an e mail dated February 19, 2012.
The Article in Austin Fit was written in July 2011 and published August 2011.
<Wacofertility.com> is not in existence and is not a domain name owned by the Respondent.
The only domain names purchased in 2011 by the Respondent were <westlakeivf.com> and <ivfwestlake.com>, both purchased on July 8, 2011 within weeks of public advertisement of Westlake IVF and the prominent display of the Complainant's sign on Bee Caves Road. In purchasing the Domain Name and <ivfwestlake.com>, the Respondent intended to drive business away from the Complainant's practice to the Respondent's.
The Additional Submission of the Respondent as far as it is relevant can be summarised as follows:
Additional Submission of the Complainant fails to address the allegation that Complainant has failed to prove trade mark rights in the description Westlake IVF before the registration date of the Domain Name. The Complainant was not offering services to patients before July 2011 sufficient to establish use in commerce of a mark.
The Respondent may have been mistaken that it did not know of the formation of the Complainant until after the Complaint was filed, but the e mail cited as mentioning the formation to the Respondent was sent seven months after registration of the Domain Name and so is not evidence that the Respondent knew of Complainant's alleged use of Westlake IVF before it acquired the Domain Name and so cannot evidence bad faith.
The reference to <wacofertility.com> in the Response should have been a reference to <infertilitywaco.com>. However this error is inconsequential to the Respondent's arguments that it acquires domain names such as the Domain Name for valid business reasons and without bad faith.
Additional points made in the Complainant's Response to the Order can be summarised as follows:
Westlake IVF was open for seeing patients in early June 2011, although staff were taking calls even earlier. The first new patient consultation was done on Monday, June 20, 2011 and the first IVF case was done in July 2011. .
Complainant reserved the rights to the name Westlake IVF with the Texas Secretary of State on October 27, 2010. Filed copies of the Certificate of Filing and Certificate of formation of Westlake IVF LLC were received from the Office of the Secretary of State on December 9, 2010.
The official estimate for the cost of the V Shaped Structure and Nameplates (including Westlake IVF') to be erected on the property facing Bee Caves Road was dated October 25, 2010 and was approved for creation at that time. It was accompanied by a proof showing what the sign would look like including specifications.
The sign for Westlake IVF was erected on March 23, 2011.
The Complainant had business cards with the Westlake IVF name and address created on March 25, 2011.and began using them immediately to inform patients that Westlake IVF was about to open. They were given to OBGYN offices and other specialities in town to be given out to patients. Accordingly late March 2011 is when the general public became aware of the existence of Westlake IVF.
The new name Westlake IVF was added to an outdoor placard in front of the building where Westlake IVF resides on June 22, 2011.
The Complainant placed advertisements within the July 2011 edition of Austin Woman magazine and Austin Fit Magazine to announce that services were being provided at Westlake IVF. If Respondent saw our August advertisements, then it probably saw the July issues as well and so would have had access to these advertisements for at least one week prior to purchasing the Domain Name.
The Respondent purchased only <westlakeivf.com> and <ivfwestlake.com> domain names in the year 2011. Both domain names were purchased on July 8, 2011, definitely after the Complainant's practice (of the exact same name) had begun.
Additional points made in the Respondent's Response to the Order can be summarised as follows:
The Respondent acquired the Domain Name on July 8, 2011 and linked it to the website <txfertility.com> on July 13, 2011, before the existence of the Complainant's Westlake facility came to its attention and prior to awareness by Respondent of any use by Complainant of the designation Westlake IVF.
According to Complainant's own admissions in its press releases and in a testimonial provided by one of the Complainant's founders it did not open its Westlake IVF office until sometime in July or August of 2011 after Respondent had already purchased and started using the Domain Name. The Respondent did not become aware of the publication in the August issue of Austin Fit magazine until it was required to respond in these proceedings and so the Respondent did not register the Domain Name in bad faith.
Dr. Ulehlova, a senior embryologist referred to Westlake IVF in an e-mail of December 6, 2011 as a 'new IVF Centre'. Even if the Complainant had some minimal use before July 8, 2011, it was minimal and not enough to create exclusive rights in such a geographically descriptive designation.
Complainant's amendment of its United States Trade Mark application to the Supplemental Register is an admission that the designation “Westlake IVF" is not inherently distinctive designation, but requires proof of acquired distinctiveness (secondary meaning) for protectable exclusive rights to exist. As such the Complainant has presented no evidence that it has developed the necessary acquired distinctiveness to exclusive rights today, let alone in 2011.
Respondent has used the descriptive term Westlake IVF as a domain name to inform patients that it offers IVF services to people in the geographical area of Westlake Texas. It is one of a number of geographical domain names registered by the Respondent in relation to which the Respondent has rights and legitimate interests. Respondent's use could not have traded on any goodwill of the Complainant (because none existed) and therefore could not have been in bad faith. Accordingly, the Respondent did not use the Domain Name in bad faith.
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.
Identical and/or confusingly similar
Rights and/or legitimate interests
The Respondent has presented no evidence that it is commonly known by the name Westlake IVF. It appears that the Complainant has not given any sort of permission to the Respondent for its use. In light of the finding of opportunistic bad faith registration below the Panellist finds that there are no rights or legitimate interests in selection of the name of a competitor to attract customers to a competing web site. (See Florists' Transworld Delivery v Malek FA 676433) The Panellist notes that before the registration of the Domain Name the Respondent had registered a couple of other domain names with the formula geographical designation plus 'ivf'. However, given the finding below as to opportunistic bad faith registration the Panellist finds that this was not an innocent registration of a descriptive domain name. As such the Panellist finds that the Respondent has no rights and legitimate interests with respect to the Domain Name.
Registered and used in bad faith
The Domain Name was registered approximately one week after the Complainant's name was advertised in two local magazines. In view of this the Panellist finds that the registration was opportunistic and designed to disrupt the Complainant's business (see Surface Prot. Indus. Inc v Webposters D2000-1613) and to take commercial advantage of Internet users seeking the Complainant by causing confusion (See Westcor Santan Village LLC v David Letro FA 0902001248888, Sota v Waldron D2001-0351 and Thermo Electron Corp. v Xu, FA 713851) continued by the use of th Domain Name to date for similar services. As such the panellist finds that the Domain Name was registered and used 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 <westlakeivf.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: October 11, 2013
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