national arbitration forum

 

DECISION

 

Health Management Resources Corporation v. Todd Kingsley

Claim Number: FA1308001513353

 

PARTIES

Complainant is Health Management Resources Corporation (“Complainant”), represented by Thomas E. Kenney, Massachusetts, USA.  Respondent is Todd Kingsley (“Respondent”), represented by Erik M. Pelton of Erik M. Pelton & Associates, PLLC, Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

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

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2013; the National Arbitration Forum received payment on August 6, 2013.

 

On August 6, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <healthysolutions.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 August 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@healthysolutions.com.  Also on August 9, 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 29, 2013.

 

Complainant’s Additional Submission and Additional Submission Annex were received on September 3, 2013 and have been deemed to be compliant.

 

On September 6, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

1.    Respondent’s <healthysolutions.com> domain name is identical to Complainant’s HEALTHY SOLUTIONS mark.

 

2.    Respondent does not have any rights or legitimate interests in the <healthysolutions.com> domain name.

 

3.    Respondent registered and uses the <healthysolutions.com> domain name in bad faith.

 

B. Respondent

1.    Complainant does not have exclusive rights to the HEALTHY SOLUTIONS name.

 

2.    Respondent has owned and used the <healthysolutions.com> domain name since 2000.

 

3.    Respondent did not register or use the <healthysolutions.com> domain name in bad faith; there is no evidence that Respondent has offered the disputed domain name for sale.

 

4.    Complainant’s Complaint should be denied due to the Doctrine of Laches.

 

C. Complainant’s Additional Submission

1.    Laches is not a defense because Respondent has not shown that he suffered any prejudice by Complainant’s delay in bringing this UDRP Complaint.

 

2.    Respondent uses the <healthysolutions.com> domain name for a parked page with links to competing products and services.

 

3.    Respondent appears to have registered the <healthysolutions.com> domain name primarily to offer it for sale.

 

FINDINGS

Complainant owns rights in the HEALTHY SOLUTIONS trademark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,149,677 registered April 7, 1998), and uses it to provide guidance on healthy diet and lifestyle choices.  There are other USPTO trademark registrations for HEALTHY SOLUTIONS.

 

Respondent registered the <healthysolutions.com> domain name on March 6, 2000, and does not make an active use of the domain name.  The disputed domain name resolves to a parked page that provides commercial links, some of which appear to be in the health industry.

 

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has rights in the HEALTHY SOLUTIONS trademark through its registration with the USPTO (Reg. No. 2,149,677 registered April 7, 1998) for purposes of Policy ¶ 4(a)(i).  Previous panels have found that evidence of a registration with the USPTO is sufficient to establish rights in a given mark under Policy ¶ 4(a)(i).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).

 

Respondent’s <healthysolutions.com> domain name is identical to Complainant’s HEALTHY SOLUTIONS trademark under Policy 4(a)(i), as the only differences are the elimination of spaces and the addition of the generic top-level domain (“gTLD”) “.com.”  Previous panels have found that minor variations such as removing spaces between words and adding gTLDs is insufficient to differentiate a disputed domain name from a given mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).  The Panel finds that Respondent’s <healthysolutions.com> domain name is identical to Complainant’s HEALTHY SOLUTIONS registered mark.

 

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

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant contends that Respondent has no rights or legitimate interests in the <healthysolutions.com> domain name because it is not commonly known by the disputed domain name, and there is no evidence that Respondent acquired trademark or service mark rights in the disputed domain name.  The WHOIS information for the disputed domain name lists “Todd Kingsley” as registrant, which bears no resemblance to the disputed domain name.  Previous panels have found that a respondent is not commonly known by a disputed domain name if the WHOIS information, along with other information on the record does not suggest a relationship between the two.  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).  Therefore, Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).  Complainant contends that Respondent uses the disputed domain name to draw consumers to its website to sell the disputed domain name for a profit.  However, Complainant offered no evidence of Respondent’s offer to sell the disputed domain name.  Complainant also claims that Respondent’s disputed domain name resolves to a parked website featuring links to advertisements such as “Lose Weight Fast,” “Diet Solution,” “Diet Programs,” “Lose Weight Program,” “Lose the Weight, Gain the Health,” “Healthy Solutions Clinic Weight-Loss Program: A Healthy Way to Lose Weight Quickly,” and “Begin Losing Weight Now!”  The Panel notes the supporting evidence submitted by Complainant and finds that the links offer goods or services that compete with Complainant.  Previous panels have found that a respondent has no rights or legitimate interests in a domain name where the identical disputed domain name resolves to a website featuring links to third parties that compete with Complainant’s business.  See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.  The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”)   Thus, the Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.

 

The Panel finds that Complainant has made its prima facie case and, in defense, Respondent asserts that it has rights and legitimate interests in the disputed domain name because it registered the disputed domain name on March 6, 2000 and has continually used it since.  Respondent argues that the Doctrine of Laches should apply where Complainant waited more than 10 years to enforce its trademark rights in the HEALTHY SOLUTIONS mark in this UDRP proceeding.  Respondent also argues that Complainant does not have exclusive

rights to the HEALTHY SOLUTIONS name, due to the other trademark registrations for HEALTHY SOLUTIONS, and also because the phrase is very descriptive.  While the Panel agrees with Respondent that the mark is not unique, the Panel finds that Complainant holds an incontestable USPTO trademark registration with the exclusive right to use the HEALTHY SOLUTIONS mark in class 041 for “educational services, namely, conducting classes or personal health coaching sessions about dietary and lifestyle health choices,” and in class 042 for “weight reduction diet planning and supervision featuring a structured diet program in both group and individual settings.”  Respondent registered the <healthysolutions.com> domain name after Complainant obtained its trademark registration for HEALTHY SOLUTIONS.  Since Respondent is using the <healthysolutions.com> domain name for a parked page that offers services competing in Complainant’s exclusive field of use, the Panel finds that Respondent is not making a bona fide offering of goods or services of the disputed domain name.  The Panel also notes that, where Laches has been part of a successful defense in previous UDRP cases, the respondent was able to show a bona fide offering of goods or services.  If Respondent were making a non-competing use of the disputed domain name, the result might be different.  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); see also Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).

 

Further, as Complainant points out, Respondent did not argue or demonstrate any prejudice as a result of Complainant’s delay in filing this UDRP case, typically found in court cases where the Laches defense succeeded.  Moreover, Laches is an equitable remedy, routinely found to be out of place in UDRP proceedings.  See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy.  Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark.  Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”); see also Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”)

 

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

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain name resolves to a parked website featuring links that compete with Complainant.  Previous panels have found bad faith under Policy ¶ 4(b)(iii) when a respondent uses a confusingly similar domain name to resolve to a website featuring links that compete with complainant.  See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).  The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).

 

            The Panel finds that 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 <healthysolutions.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  September 12, 2013

 

 

 

 

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