Aguayo Chiropractic PC dba Southwest Chiropractic v. Alex Jimenez / IMC
Claim Number: FA1612001707416
Complainant is Aguayo Chiropractic PC dba Southwest Chiropractic (“Complainant”), represented by Eric Bischoff, Texas, USA. Respondent is Alex Jimenez / IMC (“Respondent”), represented by Mattias Johnson of Revision Legal, PLLC, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <southwestchiropractic.com> and <southwestchiropracticelpaso.com>, registered with GoDaddy.com, LLC.
The undersigned 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.
Bart Van Besien as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 14, 2016 (and an amended Complaint on December 16, 2016); the Forum received payment on December 14, 2016.
On December 15, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <southwestchiropractic.com> and<southwestchiropracticelpaso.com> 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 December 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 13, 2017 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@southwestchiropractic.com, postmaster@southwestchiropracticelpaso.com. Also on December 19, 2016, 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 January 12, 2017.
Complainant’s additional submission was received January 17, 2017.
On January 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bart Van Besien as Panelist.
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 has common law rights in the SOUTHWEST CHIROPRACTIC mark as Complainant has conducted its business under the mark since 2000. This mark is on all signs in front of its clinics, on yellow pages listings, and is the name Complainant’s clients associate with the business. SOUTHWEST CHIROPRACTIC is the registered assumed name of Complainant. Additionally, Complainant used the <southwestchiropractic.com> domain name from 2006 until 2014 when its contract with <yp.com> ended. Complainant was not allowed to renew use of this domain name. Respondent’s domain names are confusingly similar to Complainant’s SOUTHWEST CHIROPRACTIC mark as the domain names include the entire mark and merely add the generic top-level domain (“gTLD”) “.com,” and in the case of <southwestchiropracticelpaso.com>, adds the geographic term “El Paso.”
Respondent should not be considered as having rights or legitimate interests in the disputed domain name. Respondent’s business names do not appear to resemble the disputed domain name. Respondent is not and never has been a partner to Complainant.
Respondent should be considered as having registered and having used the disputed domain names in bad faith. Respondent had actual knowledge of Complainant’s rights in the SOUTHWEST CHIROPRACTIC mark. Complainant and Respondent know each other and knew the names of businesses that each operated. Prior to this proceeding, Complainant had a discussion with Respondent regarding Respondent’s Google AdWords advertisements using Complainant’s mark in their headline. Respondent tries to disrupt the business of Complainant and to gain from the reputation of Complainant by driving customers to his own website.
B. Respondent
Complainant lacks rights in the SOUTHWEST CHIROPRACTIC mark because Complainant has failed to register the mark and has not acquired secondary meaning in the mark. Additionally, many other offices besides Complainant utilize the SOUTHWEST CHIROPRACTIC mark in commerce.
Complainant has failed to establish the prima facie elements required to show that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant’s domain names are made up of generic terms and Respondent’s mere ownership of the domain names is sufficient to evince rights and legitimate interests.
Respondent has not registered and used the domain names in bad faith. Registration of a domain name that is comprised of generic terms is not a bad faith use or registration as generic domain names may be registered on a first-come, first-served basis. Respondent was not aware of Complainant’s asserted use of the SOUTHWEST CHIROPRACTIC name.
C. Additional Submissions
Complainant’s business is registered with the Texas Board of Chiropractic Examiners under the name SOUTHWEST CHIROPRACTIC and has been so registered since December 18, 2001. Respondent’s contention that it innocently registered the domain names by choosing a directional or regional name without knowledge of Complainant’s business is hard to support, as Respondent’s business is not in Southwest Texas or Southwest El Paso. Additionally, Respondent agreed in writing to cease and desist from using the <southwestchiropractic.com> domain name.
The <southwestchiropractic.com> domain name was first registered by a third party not involved in this domain name dispute. From 2008 until March 2016, Yellow Pages (or an entity related to Yellow Pages) was the domain registrant for this domain name. During this time, the domain name was used by Complainant. Upon the termination of the contract between Complainant and Yellow Pages, Respondent became the registrant of the domain name through a domain name auction in 2016.
The <southwestchiropracticelpaso.com> domain name was first registered on October 13, 2016 and is currently owned by Respondent.
Neither of the parties involved in this domain name dispute has registered trademark rights in the name SOUTHWEST CHIROPRACTIC.
Complainant has submitted evidence of its use of the name SOUTHWEST CHIROPRACTIC or SOUTH WEST CHIROPRACTIC as a business name. Complainant has also submitted evidence of its registration with the Texas Board of Chiropractic Examiners under the name SOUTHWEST CHIROPRACTIC.
Both Complainant and Respondent operate a business as a chiropractor in El Paso, Texas, USA.
Complainant submitted a letter of December 7, 2016, signed by Respondent, whereby Respondent mentioned that it denied “any wrongdoing”; where Respondent mentioned that it would disconnect www.southwestchiropractic.com and the associated web extensions; and whereby Respondent mentioned that “all ‘Southwest Chiropractic’ (the Mark) will be removed from all published websites”.
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.
Legal Findings regarding Policy Paragraph 4(a)(i): finding for Respondent.
Complainant does not hold trademark registrations for the SOUTHWEST CHIROPRACTIC mark. However, trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Prior panels have found that an official registration is not required so long as the complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (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).
Respondent asserts that Complainant has failed to establish rights in the SOUTHWEST CHIROPRACTIC mark. Respondent claims that Complainant has not registered the mark and has not acquired secondary meaning in the mark that would serve to establish common law rights in the mark.
Panels have held that a complainant has failed to establish secondary meaning in a mark based on a lack of evidence showing a complainant’s efforts to promote and affiliate itself with a mark or otherwise acquire secondary meaning. See WMS Group, Inc. v Molly Jenkins / Brandz Agency Inc., FA 1601220 (Forum Feb. 26, 2015) (holding that Complainant has not shown secondary meaning of the marks in question as it “offered no evidence of consumer or media recognition of its claimed marks as distinctive identifiers.”). Panels have also found that complainants have a higher burden when claiming to have common law rights in a mark comprised of generic terms. See Chicago Rest. & Entm’t Guide, Inc. v. Polat, FA 1310901 (Forum Apr. 22, 2010) (failing to find common law rights as “the claimed mark is comprised of two common and generic, descriptive or geographic terms, requiring very strong evidence in order to establish secondary meaning” and Complainant failed to provide the required evidence to show secondary meaning).
The Panel finds that, in order to successfully assert common law or unregistered trademark rights in the name SOUTHWEST CHIROPRACTIC, Complainant must show that this name has become a distinctive identifier associated with the Complainant or its goods or services. A simple allegation of common law rights does not suffice. Specific assertions of relevant use of the claimed trademark supported by sufficient evidence is required. A secondary meaning is established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The Panel finds that, in cases involving claimed common law trademarks that are comprised of descriptive words such as the words SOUTHWEST and CHIROPRACTIC in the case at hand, there is an even greater onus on the Complainant to present compelling evidence of secondary meaning or distinctiveness. The Panel notes in this regard that both parties operate a business as a chiropractor and that both parties are based in El Paso, Texas, a region often identified as being located in the Southwest of the United States. The Panel finds that the letter of December 7, 2016, submitted by Complainant does not serve as sufficient evidence that Complainant has common law trademark rights in SOUTHWEST CHIROPRACTIC. The Panel finds that Complainant has not established sufficient secondary meaning in the SOUTHWEST CHIROPRACTIC mark to create common law rights in the mark. See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark); see also Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning).
Therefore, the Panel finds that Complainant has not established common law rights in the SOUTHWEST CHIROPRACTIC mark. The Panel concludes that the disputed domain names registered by Respondent are not identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i).
Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze Policy ¶ 4(a)(ii). Indeed, since Complainant must prove all three elements of Policy ¶ 4(a) under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006).
Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze Policy ¶ 4(a)(iii). Indeed, since Complainant must prove all three elements of Policy ¶ 4(a) under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <southwestchiropractic.com> and <southwestchiropracticelpaso.com> domain names REMAIN WITH Respondent.
Bart Van Besien, Panelist
Dated: February 8, 2017
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