Majid Hajizadeh Bashy v. Maryam Kaveh
Claim Number: FA1507001628851
Complainant is Majid Hajizadeh Bashy (“Complainant”), represented by Kamran Fattahi of Law Offices of Kamran Fattahi, California, USA. Respondent is Maryam Kaveh (“Respondent”), represented by Michael J. McCue of Lewis Roca Rothgerber LLP, Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <veincliniclasvegas.com> and <veincliniclasvegas.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.
Honorable John J. Upchurch, (Ret.), Mr Kelly Tillery, Mr Petter Rindforth as Panelists.
Complainant submitted a Complaint to the Forum electronically on July 14, 2015; the Forum received payment on July 14, 2015.
On July 15, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <veincliniclasvegas.com> and <veincliniclasvegas.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 July 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2015 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@veincliniclasvegas.com, postmaster@veincliniclasvegas.net. Also on July 21, 2015, 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 10, 2015.
An Additional Submission from Complainant was received on August 17, 2015, and determined to have been received in a timely manner according to The Forum's Supplemental Rule #7.
An Additional Submission from Respondent was received on August 24, 2015 and was considered by the Panel.
On August 18, 2015, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the Forum appointed Petter Rindforth as the Chair of the Panel along with M. Kelly Tillery and Honorable John J. Upchurch, (Ret.).
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a medical physician who practices medicine in Las Vegas Nevada, and offers medical services for the treatment of varicose veins and provides non-surgical cosmetic treatments. Complainants owns common law rights in the VEIN CLINIC OF LAS VEGAS trademark, as established through its continuous use of the trademark, extensive advertising and marketing expenditures, and amount of revenue generated under the trademark. The <veincliniclasvegas.com> and <veincliniclasvegas.net> domain names are confusingly similar to the VEIN CLINIC OF LAS VEGAS trademark. The domain names include Complainant’s entire mark, merely omitting the spaces between each portion of the trademark, and deleting the preposition “of” between “VEIN CLINIC” and “LAS VEGAS.” The <veincliniclasvegas.com> domain name adds the generic top-level domain (“gTLD”) “.com,” while the <veincliniclasvegas.net> domain name adds the gTLD “.net.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names. Rather, Respondent is commonly known by “Alpha Vein Clinic.” Further, Complainant has never authorized Respondent to use Complainant’s VEIN CLINIC OF LAS VEGAS trademark, and there is no contractual relationship between Complainant and Respondent. Respondent is not using the <veincliniclasvegas.com> and <veincliniclasvegas.net> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. Respondent uses the disputed domain names to offer medical services, including vein therapy and treatment services, for commercial gain and in direct competition with the services offered by Complainant and under Complainant’s trademark.
Respondent has engaged in bad faith registration and use of the <veincliniclasvegas.com> and <veincliniclasvegas.net> domain names. Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademark. Finally, Respondent must have had knowledge of Complainant prior to registering the disputed domain names.
B. Respondent
Complainant does not own a federal or state trademark registration for VEIN CLINIC OF LAS VEGAS, and Complainant thus fails to satisfy the requirements of Policy ¶ 4(a)(i). Complainant’s USPTO trademark application does not establish rights in the trademark. Complainant’s trademark consists of both generic and descriptive terms, and Complainant has failed to prove that its trademark has acquired distinctiveness through secondary meaning.
Complainant’s evidence of secondary meaning is circumstantial, such as advertising spend and revenue and such evidence is insufficient to establish secondary meaning. Complainant must also demonstrate that consumers perceive the VEIN CLINIC OF LAS VEGAS trademark as identifying Complainant as a single source. Other vein clinics not disclosed in Complainant’s evidence also use the same and similar generic or descriptive terms to describe their business, including Las Vegas Vein Center (owner of <lasvegasveincenter.com>), Las Vegas Vein Clinic (owner of <lvveinclinic.com>), and Nevada Heart & Vascular Vein Center (owner of <veinslasvegas.com>).
Respondent has rights and legitimate interests in the disputed domain names, as it has a competitive need to use the terms “vein clinic” and “Las Vegas” together to describe its services. Respondent is not attempting to divert consumers away from Complainant simply because Google search results return hits for competing businesses whose services are accurately described by those terms. Respondent, together with her husband, owns and operates a vein clinic in the city of Las Vegas. Respondent uses the disputed domain names to advertise the goods and services it offers at its vein clinic in Las Vegas, Nevada. Respondent has therefore used the disputed domain names in connection with a bona fide offering of goods or services. Respondent has no intent to divert Internet users, as Respondent was not aware that Complainant was using the VEIN CLINIC OF LAS VEGAS mark in connection with its business.
Respondent has no intent to disrupt Complainant’s business or divert consumers, and geographic proximity does not establish bad faith under Policy ¶ 4(b)(iii). Complainant’s prior registration of the <veinclinicoflasvegas.com> domain is circumstantial evidence of Respondent’s constructive notice, and mere constructive notice generally is not sufficient for a finding of bad faith registration and use.
Complainant is attempting to reverse highjack the disputed domain names and tradeoff on Respondent’s substantial investment in driving traffic to its business through the disputed domain names.
C. Additional Submissions
Complainant’s Additional Submission:
Complainant states that although there does not yet exist a trademark registration for Complainant’s trademark, Complainant enjoys protectable common law rights to his trademark, which would satisfy the requirements of UDRP ¶ 4(a)(i).
Complainant filed U.S. Application Serial No. 86,567,359 for VEIN CLINIC OF LAS VEGAS in standard characters, and on June 26, 2015, the USPTO approved that application for publication which occurred on August 4, 2015. In that application, Complainant has claimed first use in commerce of his trademark at least as early as March 15, 2001. Also, Complainant disclaimed the term “Vein Clinic” as being descriptive, but claimed secondary meaning and acquired distinctiveness of the entire trademark under Section 2(f) of the U.S. Trademark Act on grounds of substantially exclusive and continuous use for at least five years of Complainant’s trademark, which was accepted by the USPTO and the application was approved and published for opposition purposes.
Furthermore, although that pending federal application does not in and of itself establish Complainant’s rights to his trademark, Complainant has previously submitted facts and evidence to show that his trademark has acquired secondary meaning and distinctiveness. With the Additional Statement, Complainant submitted further evidence of secondary meaning to establish common law rights to his trademark, claiming that a) the trademark VEIN CLINIC OF LAS VEGAS has been continuously used by Complainant since at least as early as March 15, 2001 (over 14 years) in connection with medical services for the treatment of varicose veins and non-surgical cosmetic treatments, b) Complainant has been advertising his medical services under the trademark continuously since 2001, c) Complainant he has provided medical services under the trademark to an estimated number of more than 10,000 distinct patients, and d) since the first use of the trademark in 2001, Complainant has generated gross revenues in excess of approximately $14,000,000 from medical services offered under the VEIN CLINIC OF LAS VEGAS trademark, and has spent approximately $1,300,000 in advertising and marketing the medical services offered under the trademark.
Complainant and Respondent (including Respondent’s husband) live in Las Vegas, and have known each other on a personal/social and professional level approximately since 2003. Over the past several years, including prior to registration and use of the disputed domain names in 2012, Respondent’s husband has referred several patients to Complainant’s Vein Clinic of Las Vegas medical office. Respondent’s husband has, in a recent e-mail exchange between him and Complainant, acknowledged that there was at least one instance of actual confusion by a potential patient between the respective businesses of Respondent and Complainant.
Complainant owns common law rights in the VEIN CLINIC OF LAS VEGAS trademark, with its first use in commerce since March 15, 2001.
Respondent registered the disputed domain names <veincliniclasvegas.com> and <veincliniclasvegas.net> on March 19, 2012.
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 notes that the Policy does not require that Complainant’s trademark be registered by a government authority or agency to establish rights in the trademark under ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant asserts that he owns common law rights in the VEIN CLINIC OF LAS VEGAS mark, as established through the continuous use of the trademark, extensive advertising and marketing expenditures, and amount of revenue generated under the trademark. Complainant claims he has used the trademark since as early as March 15, 2001, advertising its medical services under the trademark in various magazine ads, on brochures, post cards, business cards, and gift certificates that are distributed to the public, and the trademark is also prominently displayed on its business signage. Further, Complainant states that he has filed U.S. Application Serial No. 86,567,359 for VEIN CLINIC OF LAS VEGAS on March 17, 2015, that has been approved and published for opposition purposes. The Panel finds that Complainant has established secondary meaning in its trademark, and thereby finds that Complainant owns common law rights in the VEIN CLINIC OF LAS VEGAS mark, satisfying the initial requirement of 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); Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”).
Complainant asserts that the <veincliniclasvegas.com> and <veincliniclasvegas.net> domain names are confusingly similar to the VEIN CLINIC OF LAS VEGAS mark. The Panel notes that the disputed domain names include Complainant’s entire mark, merely omitting the spaces between each portion of the mark, deleting the preposition “of” between “VEIN CLINIC” and “LAS VEGAS”, and adding the gTLDs “.com,” and “.net”. Removal of a portion of a complainant’s mark is not a sufficient distinguishing feature, nor is the addition of a gTLD. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). This Panel therefore determines that the disputed domain names are confusingly similar under Policy ¶ 4(a)(i).
Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain names establishes a prima facie case under the Policy. Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). 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 alleges that Respondent has no rights or legitimate interests in the disputed domain names. According to Complainant, Respondent is not commonly known by the disputed domain names; rather, Respondent is commonly known by “Alpha Vein Clinic.” The Panel also notes that the WHOIS information for the disputed domain names lists “Maryam Kaveh” as the registrant of record. Further, Complainant states that he has never authorized Respondent to use Complainant’s VEIN CLINIC OF LAS VEGAS trademark, and there is no contractual relationship in this respect between Complainant and Respondent. This Panel therefore agrees that Respondent lacks rights to the disputed domain names per Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims that Respondent is not using the <veincliniclasvegas.com> and <veincliniclasvegas.net> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names, but to offer medical services, including vein therapy and treatment services, for commercial gain and in direct competition with the services offered by Complainant and under Complainant’s trademark.
Use of a confusingly similar domain name to offer competing services is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel finds that Respondent lacks a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), respectively.
Complainant argues that Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Complainant alleges that customers seeking Complainant’s website will be directed to the website of a business by the name of “Alpha Vein Clinic,” which is operated by Respondent.
The Panel agrees that Respondent’s efforts to promote its competing business through the disputed domain names constitutes commercial disruption as proscribed by Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where the respondent and the complainant were in the same line of business in the same market area).
Further, Complainant alleges that Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademark. Complainant asserts that Respondent is attempting to trade on the goodwill of Complainant’s trademark and improperly take misled consumers on the Internet who are looking for Complainant’s business, and that Respondent intended to confuse consumers into thinking that there is an association between Complainant and Respondent. Past panels have found that use of a confusingly similar domain name to attract Internet users constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name). The Panel therefore finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant claims that Respondent must have had knowledge of Complainant prior to registering the disputed domain names. Complainant states that both its and Respondent’s medical offices are in Las Vegas, Nevada, and are located only 7.7 miles from each other. In fact, Complainant and Respondent have known each other on a personal/social and professional level since 2003.
While constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the proximity of Complainant's and Respondent’s businesses, and the long professional and personal knowledge and co-operation, Respondent had actual knowledge of the trademark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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”).
Reverse Domain Name Hijacking
As stated above, the Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a), and thereby the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <veincliniclasvegas.com> and <veincliniclasvegas.net> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth (Chair),
Kelly Tillery and Honorable John J. Upchurch, (Ret.).,Panelists
Dated: August 28, 2015
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