AMN Healthcare, Inc. v. LaPorte Holdings,
Inc.
Claim
Number: FA0502000414207
Complainant is AMN Healthcare, Inc. (“Complainant”), represented
by Lisa M. Martens of Fish and Richardson P.C.,
12390 El Camino Real, San Diego, CA 92130.
Respondent is LaPorte Holdings,
Inc. (“Respondent”), 2202 South Figueroa Street, Suite 721, Los Angeles, CA
90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <americanmobilehealthcare.com>, registered
with Nameking.com, Inc.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
1, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 4, 2005.
On
February 3, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <americanmobilehealthcare.com>
is registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified that Respondent is bound
by the Nameking.com, Inc. registration agreement and has thereby agreed to
resolve domain name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
February 15, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 7, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities
and persons listed on Respondent's registration as technical, administrative
and billing contacts, and to postmaster@americanmobilehealthcare.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 10, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Honorable
Paul A. Dorf (Ret.) 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." 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americanmobilehealthcare.com>
domain name is identical to Complainant’s AMERICAN MOBILE HEALTHCARE mark.
2. Respondent does not have any rights or
legitimate interests in the <americanmobilehealthcare.com> domain
name.
3. Respondent registered and used the <americanmobilehealthcare.com>
domain name in bad faith.
B. Respondent failed to submit a Response in this
proceeding.
Complainant, AMN
Healthcare, Inc., has been providing staffing solutions to health care
facilities across the United States since 1985. Complainant uses a multi-brand recruitment strategy to attract
the most experienced, quality health care professionals. Complainant then places these professionals
in employment positions with health care facilities.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office for the AMERICAN MOBILE HEALTHCARE mark (Reg. No. 2,356,365 issued June
6, 2000). Complainant has been using
the AMERICAN MOBILE HEALTHCARE mark in commerce since at least February 1999 in
connection with healthcare professional contract staffing.
Respondent
registered the <americanmobilehealthcare.com> domain name on
October 20, 2002. Respondent is using
the disputed domain name to redirect Internet users to a website entitled,
“What you need, when you need it.” In
addition, the website provides various links for nursing jobs and healthcare-related
resources that are in competition with Complainant’s services. Respondent presumably commercially benefits
from the diversion of Internet users to the disputed domain name by receiving
pay-per-click fees from advertisers when Internet users follow the links on the
website.
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."
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.
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.
Complainant has
provided extrinsic evidence that it holds a trademark registration with the
United States Patent and Trademark Office (“USPTO”) for the AMERICAN MOBILE HEALTHCARE
mark. In addition, Complainant
established that it has rights in the mark through continued use of its mark in
commerce over the last six years. See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also
Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that
ICANN Policy ¶ 4(a)(i) does not require complainant to demonstrate ‘exclusive
rights,’ but only that complainant has a bona fide basis for making the
Complaint in the first place); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.).
Respondent’s <americanmobilehealthcare.com>
domain name is identical to Complainant’s AMERICAN MOBILE HEALTHCARE mark
because the domain name wholly incorporates the mark and simply adds the
generic top-level domain (“gTLD”) “.com.”
The addition of a gTLD does not distinguish Respondent’s domain name
from Complainant’s mark. Thus, the
Panel concludes that Respondent’s minor alteration to Complainant’s mark is not
sufficient to discern Respondent’s domain name from Complainant’s mark pursuant
to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Sporty's Farm L.L.C. v. Sportsman's Mkt., Inc., 202 F.3d 489 (2d
Cir. 2000), cert. denied, 530 U.S. 1262 (2000) ("For
consumers to buy things or gather information on the Internet, they need an
easy way to find particular companies or brand names. The most common method of
locating an unknown domain name is simply to type in the company name or logo
with the suffix .com"); see also Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s
Web site often assume, as a rule of thumb, that the domain name of a particular
company will be the company name or trademark followed by ‘.com.’”).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(i).
Complainant has
contended that Respondent has no rights or legitimate interests in the <americanmobilehealthcare.com>
domain name that contains in its entirety Complainant’s AMERICAN MOBILE
HEALTHCARE mark. The burden shifts to
Respondent to show that it does have rights or legitimate interests once
Complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii). See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
complainant has asserted that respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once complainant asserts that respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that under certain circumstances the mere
assertion by complainant that respondent has no rights or legitimate interests
is sufficient to shift the burden of proof to respondent to demonstrate that
such rights or legitimate interests do exist).
Moreover, where
Respondent does not respond, the Panel may accept all reasonable allegations
and inferences in the Complaint as true.
Due to Respondent’s failure to respond, the Panel presumes that
Respondent lacks rights and legitimate interests in the domain name. See 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.”); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
response the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do);
see also Parfums Christian Dior v.
QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
response, respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name); see also
Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding that respondent has no rights or
legitimate interests in the domain name because respondent never submitted a
response or provided the Panel with evidence to suggest otherwise).
Respondent was
not authorized or licensed by Complainant to register or use a domain name that
wholly incorporates the AMERICAN MOBILE HEALTHCARE mark. Nothing in the record shows that Respondent
holds a trademark or is commonly known by the <americanmobilehealthcare.com>
domain name pursuant to Policy ¶ 4(c)(ii).
Therefore, the Panel finds that Respondent lacks rights and legitimate
interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc.
v. 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); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that respondent does not have rights in a domain name when
respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb.
Forum Aug. 29, 2000) (finding that respondent has no rights or legitimate
interests in domain names because it is not commonly known by complainant’s
marks and respondent has not used the domain names in connection with a bona
fide offering of goods or services or for a legitimate noncommercial or fair
use).
Respondent’s use
of the infringing domain name to offer and advertise nursing jobs and
healthcare-related resources, which are similar to services that Complainant
offers, is not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that
respondent’s diversionary use of complainant’s marks to send Internet users to
a website which displayed a series of links, some of which linked to
competitors of complainant, was not a bona fide offering of goods or services);
see also Computer Doctor Franchise
Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000)
(finding that respondent’s website, which is blank but for links to other
websites, is not a legitimate use of the domain names); see also
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that respondent’s appropriation of complainant’s mark to market
products that compete with complainant’s goods does not constitute a bona fide
offering of goods and services).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s mark and deviates only with the addition of a gTLD, suggests that
Respondent knew of Complainant’s rights in the AMERICAN MOBILE HEALTHCARE mark. Moreover, the Panel infers that Respondent
had actual knowledge of Complainant’s rights in the mark due to the obvious
connection between the content advertised on Respondent’s website and
Complainant’s business. Furthermore,
Respondent registered the domain name with constructive knowledge due to
Complainant’s registration of the mark with the USPTO. Thus, the Panel concludes that Respondent
chose the <americanmobilehealthcare.com> domain name based
on its knowledge of Complainant’s mark, and thus registered and used the domain
name in bad faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively”); see also Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse"); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal
Register of the USPTO, a status that confers constructive notice on those
seeking to register or use the mark or any confusingly similar variation
thereof”).
Respondent is
using the disputed domain name to advertise and offer nursing jobs and
healthcare-related resources.
Complainant’s business provides staffing solutions to health care
facilities. The Panel finds that, by
creating confusion around Complainant’s AMERICAN MOBILE HEALTHCARE mark,
Respondent is attempting to disrupt the business of a competitor. Respondent’s use of a domain name that is
identical to Complainant’s mark to sell goods and services similar to those
offered by Complainant is evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(iii). See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
respondent acted in bad faith by attracting Internet users to a website that
competes with complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from complainant's marks suggests that
respondent, complainant’s competitor, registered the names primarily for the
purpose of disrupting complainant's business); see also Toyota Jidosha Kabushiki Kaisha v. S&S
Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of
a domain name [by Respondent that incorporates another’s trademark] goes
further than merely correctly using in an advertisement the trade mark of
another in connection with that other’s goods or services: it prevents the
trade mark owner from reflecting that mark in a corresponding domain name”).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <americanmobilehealthcare.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
March 22, 2005
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