Chesapeake Medical Solutions, LLC v.
Infralogics Inc.
Claim Number: FA0602000649654
PARTIES
Complainant is Chesapeake Medical Solutions, LLC (“Complainant”), represented by Mary Elizabeth Davis, of Spotts Fain PC, 411 E. Franklin Street, Suite 600, Richmond, VA 23219. Respondent is Infralogics Inc. (“Respondent”), represented by William G. Shields, of William G. Shields & Associates P.C., 901 Moorefield Park Drive, Suite 101, Richmond, VA 23236.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <yourdocsin.com>,
which is registered with Network
Solutions, Inc. (“Network Solutions”).
PANEL
The undersigned, David H Tatham,
certifies that he has acted independently and impartially and to the best of his
knowledge has no known conflict in serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(“the NAF”)electronically on February 22, 2006; the NAF received a hard copy of
the Complaint on February 27, 2006.
On February 28, 2006, Network Solutions confirmed by e-mail to the NAF
that the disputed domain name <yourdocsin.com>
was registered with it and that the Respondent was the current registrant of
the name. Network Solutions has verified
that Respondent is bound by the its 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 March 3, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 23, 2006 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@yourdocsin.com by e-mail.
A timely Response was received and determined to be complete on March
23, 2006.
On March 30, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Mr. David H Tatham as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends as follows:
· YOUR TODC’S IN has been registered as a word and as a logo mark with the United States Patent and Trademark Office on February 16, 2006 and has been used in commerce since at least August 2, 2005. The marks are used to describe ambulatory and primary medical care of patients residing in and outside the state of Maryland and they have been assigned serial numbers 78/816,581 and 78/816,517. Copies of the official filing receipts of the proposed registrations were attached to the Complaint.
· Complainant and Respondent had a contract under which, inter alia, Respondent agreed to register the disputed domain name <yourdocsin.com>, and to develop a website at this name on behalf of Complainant. However not only did Respondent fail to develop the site according to the agreed upon schedule, but when registering the disputed domain name, Respondent misrepresented to the registrar that Philip Hecker was the owner of Complainant’s website and through this misrepresentation registered the disputed domain name which is identical to the name of Complainant’s emergent medical care practice. There can be no dispute that the name is identical. In fact, it will not be disputed that the domain name <yourdocsin.com> was to be registered by Respondent on behalf of Complainant to describe the services offered by Complainant.
· After failing to develop any website according to the agreed upon schedule in the parties’ contract, Respondent provided Complainant access to the website in order to begin site development. Copies of excerpts for the site as of the time that access was permitted and when development of the site had begun were attached to the Complaint. The website was used by Complainant to display its logo, physician pictures, description, and to advertise the services which it provided.
· When Complainant discovered and approached Respondent regarding its multiple breaches of the parties’ contract, Respondent refused to relinquish control of either the website at the disputed domain name or the disputed domain name and disabled the website, thus denying access to it by Complainant’s existing and potential patients and customers. When existing or potential patients search for the domain name they are not only denied access to the site, they receive an error message.
· Respondent does not use and is not preparing to use the domain name in connection with any bona fide offering of goods or services. Respondent has not been commonly known by the domain name. Respondent is not making any legitimate non-commercial or fair use of the domain name. Complainant has not licensed Respondent’s use of the disputed domain name and Respondent is simply holding it hostage in an effort to blackmail Complainant into paying for services either not rendered, improperly rendered, or for which it was overcharged.
· There can be no dispute that Respondent has no right or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy and Rule 3(b)(ix)(2).
· The domain name should be considered as having been registered and is being used in bad faith. There is no dispute that Respondent was directed to register the disputed domain name on behalf of Complainant, and was not authorized to register the name on its own behalf.
· Complainant has overpaid Respondent under the contract for services provided. Complainant has discharged all of its duties pursuant to the Contract and has paid the sum of $525,000.00 to Respondent, which amount more than covers Respondent’s out of pocket costs directly related to the domain name, or the $35.00 registration fee.
· Respondent’s refusal to turn over the disputed domain name to Complainant, its rightful owner, is designed to harm Complainant’s business and this, coupled with Respondent’s registration of the domain name in its own name, constitutes bad faith according to paragraph 4(a)(iii) of the Policy and Rule 3(b)(ix)(3).
B. Respondent
Respondent contends that this Complaint is not properly submitted under the Policy, in particular because, prior to filing the Complaint, Complainant had brought suit against Respondent in the Circuit Court of Chesterfield County, Virginia, in a suit styled Chesapeake Medical Solution v. Infralogics, Inc., Case No.: CL05-930, a copy of which was attached to the Response. The filing date of that suit was September 21, 2005.
In that Motion for Judgment, Complainant raised all of the same complaints about the use of the domain name as are now raised in the present Complaint. Therefore, under paragraph 5 of the Policy, the Chesterfield County Circuit Court has prior jurisdiction over the matter and should be the one to resolve the dispute.
At the time of the registration of the disputed domain name, Respondent was fully authorized to act as agent for Complainant in obtaining the disputed domain name. Attached to the Response was a copy of an Engagement Agreement between the parties under which it was agreed that Respondent would obtain the disputed domain name. Therefore, the provisions of paragraph 4 of the Policy make it clear that this dispute is not one to which these proceedings are applicable.
Furthermore, in these proceedings Complainant must prove each of three elements to prevail and in fact none of them is present, e.g.
a. The disputed domain name is not identical or confusingly similar to a trademark or a
service mark to which Complainant has rights and no such claim has been made.
b. At the time this registration was made Respondent had legitimate rights, and interests
with respect to the disputed domain name;
c. The disputed domain name is not being used at all, let alone in bad faith.
There is no evidence of use in bad faith of the disputed domain name by Respondent. It was not obtained for the purpose of selling, renting or otherwise transferring the disputed domain name registration; rather it was obtained as part of a contract which was not performed by Complainant, and has not been paid for by them (Respondent annexed to the Response copies of a check from Complainant, and a letter from the Bank of
America confirming that Complainant had stopped payment on this check). That failure to pay is the subject, in part, of the current litigation in Virginia between the parties. There has certainly been no registration of the disputed domain name in order to prevent Complainant from using any trademark or service mark, nothing was done to disrupt the business of any of Complainant’s competitors, and there has been no attempt to attract for commercial gain any of Complainant’s business.
Respondent disagrees with the allegation by Complainant that the information in the
Complaint is complete and accurate and denies that it is being presented for a proper purpose. Respondent contends that in fact it is designed to delay Respondent from collecting its just debt, which is an improper purpose.
FINDINGS
Under Rule 18 of the Policy, a Panel has the
discretion to decide whether to suspend or terminate a case brought under the
Policy, or to proceed with a decision in the event that there are any legal
proceedings in progress in respect of a domain name that is the subject of a
Complaint. In these proceedings, the parties are indeed engaged in litigation
which, among other things, concerns the proper ownership of the disputed domain
name. Consequently the Panel has concluded that the matter is not suitable to
be decided under the Policy.
The existence of the litigation between the
parties was referred to in the Complaint and confirmed in the Response, to
which were attached copies of Respondent’s Motion for Judgement and Injunctive
Relief filed before the Circuit Court of the County of Chesterfield in Virginia
and of Complainant’s Motion for Judgement filed in the same Court. There seems
to be some disagreement over the dates on which these Motions were filed.
Respondent claims to have filed its Motion on September 20, 2005 with
Complainant’s Motion being filed a day later, whereas Complainant alleges it
was the first to file – on September 21, 2005, with Respondent’s Motion being
filed “a few days thereafter”. The dispute is primarily concerned with alleged
breach of contract, defamation and fraud but, as Respondent has pointed out,
the issue of the disputed domain name and the website associated with it are
very much a part of it.
This Panel is charged only with determining
(1) whether Complainant has a trademark or service mark which is identical or
confusingly similar to Respondent’s domain name; (2) whether Respondent has any
rights or legitimate interest in that domain name; and (3) whether the domain
name was registered and is being used in bad faith. It is not the Panel’s job
to express an opinion on the merits of any litigation between the parties and
it is certainly not qualified to pass judgement on it.
There are an ample number of precedents for a
Panel refusing to proceed with a Complaint when the parties are locked in a
legal dispute. Just by way of example see, for instance, Discover New England v. The Avanti Group, FA 123886 (Nat. Arb. Forum Nov. 6, 2002) in which the panel held that “this
is a contract dispute and not suitable for consideration in this forum and by
this Panel”; see also Verilux,
Inc. v. Verilux Canada Corporation,
FA 105946 (Nat. Arb. Forum May 2, 2002) in which the panel held that: “Any right or legitimate interest of
Respondent in <verilux.com> is inextricably entwined in the larger
dispute between the parties arising out of their Distribution and Trademark
Licence Agreements. This UDRP proceeding is neither designed nor equipped to
resolve those issues, and without the ability to do so it cannot resolve the
matter of Respondent’s right or legitimate interest in that domain.”; see
also Thread.com LLC v. Poploff, D2000-1470 (WIPO Jan. 11, 2001) in which the Panel refused to transfer
the domain name and stated that the Policy does not apply because “attempting to shoehorn what is essentially
a business dispute between former partners into a proceeding to adjudicate
cybersquatting is, at its core, misguided, if not a misuse of the Policy.”
In all of these circumstances therefore, the
panel declines to consider the issue further.
However, it is worth noting that had there
been no ongoing litigation between the parties, this Panel would probably have
rejected the Complaint on the basis of the fact that Complainant has not
established any rights in the name YOUR DOC’S IN. The two trademark
applications for this name were filed only 7 days before the Complaint was
filed and, although they both claimed that they had been first used in commerce
since at least August 2005, no proof thereof was filed in these proceedings and
in any case a mere 7 months’ use is hardly sufficient to establish sufficient
common law rights in a name to satisfy the requirements of the Policy.
DECISION
Having regard to the above circumstances, the Panel concludes that the
relief requested by Complainant shall be DENIED.
David H Tatham, Panelist
Dated: April 10, 2006
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