Becton, Dickinson and Company v. BD Health Services / Baltimore Health Solutions
Claim Number: FA2306002051643
Complainant is Becton, Dickinson and Company (“Complainant”), represented by Rebeccah Gan of Muncy, Geissler, Olds & Lowe, P.C., Virginia, USA. Respondent is BD Health Services / Baltimore Health Solutions (“Respondent”), represented by Marvin A. Glazer of Haynes and Boone, LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bdhealthservices.com>, registered with Domain.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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2023; the Forum received payment on June 30, 2023.
On July 3, 2023, Domain.com, LLC confirmed by e-mail to the Forum that the <bdhealthservices.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC 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 July 5, 2023, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 2023 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@bdhealthservices.com. Also on July 5, 2023, 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 July 24, 2023.
An Additional Submission was received from Complainant on July 31, 2023. That submission complied with all Supplemental Rules and will be considered by the Panel in making its decision below. On August 3, 2023, Respondent filed an Additional Submission which complied with all Supplemental Rules and which will also be considered by the Panel in reaching its decision. On August 4, 2023, the Complainant filed another Additional Submission which complied with the Supplemental Rules and which also will be considered in the Panel’s decision below.
On July 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster 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 name be transferred from Respondent to Complainant.
A. Complainant
- Complainant and its related companies manufacture and offer a wide range of health technology products and provide related health services. Complainant has conducted its operations under its registered BD trademark for over seventy years and in connection with its registered domain name, <bd.com>, since 1990.
- The disputed domain name, <bdhealthservices.com>, is confusingly similar to Complainant’s BD trademark because it contains that mark in full and merely adds the generic words “health” and “services” and the “.com” generic top-level-domain name (“gTLD”).
- Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not been authorized by Complainant to use the BD mark. Moreover, Respondent has used the disputed domain name neither in connection with a bona fide offering of goods or services nor for legitimate noncommercial or fair use. Respondent uses the disputed domain name to confuse and mislead users with respect to a suggested affiliation between Complainant and Respondent, which affiliation does not exist.
- Respondent registered and uses the disputed domain name in bad faith. Respondent’s website attached to the disputed domain name creates confusion in the marketplace among internet users, from which Respondent benefits financially by trading off of Complainant’s mark and name. Moreover, Respondent has repeatedly ignored Complainant’s requests to discontinue use of the disputed domain name and end the confusion in respect of Complainant’s BD trademark.
B. Respondent
- Respondent formed one of its two companies, BD Health Services Inc., on April 13, 2006, with the intention of operating a clinic to provide opioid addiction treatment services. About eleven years after Respondent began offering its opioid addiction treatment services under the business name “BD Health,” Respondent registered the disputed domain name <bdhealthservices.com>.
- The disputed domain name is not identical or confusingly similar to Complainant’s BD trademark.
- Respondent has rights and legitimate interests in the disputed domain name. Respondent uses the disputed domain name in connection with a bona fide offering of goods or services, since Respondent uses the domain name to promote its opioid addiction treatment services.
- Respondent registered and uses the <bdhealthservices.com> domain name in good faith. Respondent was not aware of Complainant until it received a letter dated April 30, 2020 from Complainant’s attorney. Respondent’s use of the disputed domain name is not in bad faith or otherwise improper, as the services offered by Respondent are different from the goods marketed by Complainant. Thus, there is no likelihood of confusion between the disputed domain name used to promote addiction treatment services versus Complainant’s use of its BD mark.
C. Additional Complainant Submissions
- Complainant’s trademark is well-known within Respondent’s location due to Complainant’s distribution of COVID tests in that area. Moreover, Complainant has evidence of actual internet user confusion with respect to the disputed domain name and Complainant’s BD trademark, which demonstrates the confusing similarity between the disputed domain name and the mark.
- Respondent knowingly chose a business name that incorporated Complainant’s BD trademark. which has been in use for more than seventy years. Furthermore, Complainant’s mark was in use in Respondent’s home state of Maryland as evidenced by Complainant’s opening of its “BD Innovation Center” in Baltimore, Maryland.
- Complainant attempted to work with Respondent to terminate marketplace confusion resulting from similarity between the disputed domain name and Complainant’s trademark, but Respondent refused to respond.
D. Additional Respondent Submission
- In 2020, Complainant may have distributed COVID tests in an area where Respondent is located, but that has no bearing on this case because that was some fourteen years after Respondent initiated its "BD Health" brand name and three years after its registration of the disputed domain name. The same is true of Complainant’s contention regarding a newspaper article, published in September, 2022, which reported that Complainant opened a center near Respondent’s location.
- Respondent rejects Complainant’s contention that Respondent knowingly chose an infringing business name that included Complainant’s BD trademark.
- Complainant’s letter to Respondent, sent in April, 2020, did not object to Respondent’s use of the disputed domain name.
For more than seventy years, Complainant has manufactured and sold heath care products and provided related health services in the United States. Complainant has done so under its BD trademark, which has been registered by many trademark authorities, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,802,461; registered Sept. 1, 2015).
Respondent owns the disputed domain name, <bdhealthservices.com>, which was registered on April 5, 2017. The disputed domain name is used for a website that promotes Respondent’s offerings of opioid addiction treatment services.
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 prove each of the following three elements to obtain an order that a domain name 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 Complainant having submitted convincing evidence that Complainant has a valid USPTO registration for the BD trademark, the Panel finds that Complainant has established rights in that mark per Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 1954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i).”); see also DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Clearly the disputed domain name, <bdhealthservices.com>, is not identical to Complainant’s BD trademark. However, the disputed domain name does include the full mark and adds merely the descriptive terms, “health” and “services,” and the “.com” gTLD. The Panel, in agreement with the consensus of prior UDRP cases, believes that the addition of such descriptive terms does not prevent a finding of confusing similarity between the disputed domain name and the mark. Moreover, possible confusion is increased because Complainant’s business operates in the field of “health services.” Also, the addition of the “.com” gTLD is meaningless in this comparison. As a result, the Panel finds that the disputed domain name is confusingly similar to Complainant’s valid trademark. See, DX Network Services Limited v. Fang Jennifer, D2022-3331 (WIPO Nov. 23, 2022) (finding <dxfreightservices.com> to be confusingly similar to the DX mark, and noting that “the generic Top-Level Domain (̒gTLD’) ̒.com’ is a standard registration requirement, and as such is generally disregarded under the first element confusing similarity test.”); see also EMVCo, LLC c/o Visa Holdings v. William DePaul, FA 1787853 (Forum June 25, 2018) (finding <emvchipservices.com> to be confusingly similar to the EMV mark).
Accordingly, the Panel finds that Complainant has proved that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
It has been established in prior Policy decisions that a complainant must establish a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name before the burden of providing a reasonable claim to such rights or legitimate interests transfers to that respondent. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”); see also Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011).
Complainant has supplied the Panel with sufficient evidence that the disputed domain name is confusingly similar to Complainant’s BD trademark and that Complainant has not authorized Respondent to use that mark in any manner. Therefore, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, meaning that Respondent should produce evidence to rebut that prima facie case.
The Panel notes that Respondent contends that a portion of its business has been known as “BD Health” since 2006. Moreover, the Panel is aware from one of Respondent’s filings that the business entity incorporated by Respondent in that same year has the corporate name of “BD Health Services, Inc.” Except for the elimination of spaces between terms, the abbreviation “Inc.,” and the addition of the obligatory “.com” gTLD, that name is identical to the disputed domain name <bdhealthservices.com>.
From this evidence presented by Respondent, the Panel is motivated to conclude that, in the relevant area in which Respondent operates its opioid addiction treatment services, Respondent, as a business, has been commonly known as the disputed domain name by a substantial number of people for years before registration of the disputed domain name in 2017 (and also before Complainant’s USPTO registration of its BD trademark in 2015). Therefore, the Panel is moved to apply Policy ¶ 4(c)(ii) in Respondent’s favor and determine that Respondent has offered a successful rebuttal to Complainant's prima facie case. See, Pinnacle Intellectual Property v. World Wide Exports, D2005-1211 (WIPO Feb. 17, 2006) (finding that the respondent had legitimate interests in the disputed domain name, <canadamedicineshop.com>, stating “...Respondent engages in the sale of pharmaceutical products under the name CanadaMedicineShop. The Panel concludes that the name is an apt descriptive choice for Respondent’s business, and that Respondent has demonstrated a legitimate interest in the name.”).
Accordingly, the Panel finds that Complainant has failed to prove that Respondent has no rights or legitimate interests in the disputed domain name.
As the Panel has determined above that Complainant failed to prove the second element required under the Policy, the Panel need not proceed to a decision regarding the third bad faith element under the Policy.
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 <bdhealthservices.com> domain name REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: August 14, 2023
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