LA LASER CENTER, P.C. and DR. DANIEL TAHERI, M.D. v. EMC2
Claim Number: FA1303001491309
Complainant is LA LASER CENTER, P.C. and DR. DANIEL TAHERI, M.D. (“Complainant”), represented by Michael N. Cohen of COHEN IP LAW GROUP, P.C., California, USA. Respondent is EMC2 (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <taheridermatology.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.
Jonas Gulliksson (chair), Paul M. DeCicco and Kendall C. Reed as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 23, 2013; the National Arbitration Forum received payment on March 25, 2013.
On March 25, 2013, GoDaddy.com, LLC, confirmed by e-mail to the National Arbitration Forum that the <taheridermatology.com> domain name is registered with GoDaddy.com, LLC, and that Respondent is the current registrant of the name. 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 April 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2013 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 firstname.lastname@example.org. Also on April 1, 2013, 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 April 15, 2013.
A timely Additional Submission with annexes was received from Complainant on April 22, 2013.
On April 24, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jonas Gulliksson (chair), Paul M. DeCicco and Kendall C. Reed as Panelists.
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" 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 LA Laser Center, P.C.
Complainant LA Laser Center, P.C. is the trademark owner of the TAHERI DERMATOLOGY mark and uses it in its medical practice. Complainant asserts that it has used the TAHERI DERMATOLOGY mark in connection with its medical practice since at least 2002. Complainant Dr. Daniel Taheri’s use of the TAHERI DERMATOLOGY mark in his medical practice for over a decade has established rights in the mark. Dr. Daniel Taheri is the only person with the surname “Taheri” who practices in the medical field of dermatology. This further shows that Complainant’s use of the mark is stronger than any other purported use of this mark.
The disputed domain name contains Complainant’s entire trademark, with Respondent electing to make the indistinguishable deletion of the spacing in the mark.
Respondent has not been commonly known by the disputed domain name. Respondent is in fact one “Sean Erenstoft” who is a former attorney who specialized in medical malpractice. Respondent has no intention to make a bona fide offering of goods or services through the domain name. Respondent is a lawyer who has filed non-UDRP actions against Complainant in the past. Respondent sent a letter to Complainant, claiming that the domain name was registered for “the singular purpose to utilize that domain to serve as a public service and not for profit.” Further correspondence between the parties showed that Respondent intended to turn the domain name into a “gripe site” for lodging complaints against Complainant. Respondent’s use is not a legitimate or noncommercial use however, because Respondent registered this domain name in 2007 after filing an unrelated lawsuit against Complainant alleging that Complainant had harmed Respondent’s client.
Respondent seeks to sell the domain name for $11,290.00. Respondent sent a series of letters to Complainant. In these letters, Respondent first invited Complainant to “give [him] a call to discuss the terms of a settlement that will accommodate [their] respective purposes.” Respondent then backed away from this statement, couching his desire as being merely to discuss Complainant’s concerns about the domain name. Nonetheless, on March 25, 2013, Respondent made the offer to sell the domain name for $11,290.00.
Respondent claims to use the domain name as a “gripe site,” yet the domain name includes no term to give that impression, such as “sucks.” Internet users entering the domain name will have no reason to anticipate that they will be taken to any website other than websites owned by Complainant.
Respondent registered the disputed domain name with the intent and objective of causing harm and disruption to Complainant’s business. Even though Respondent has not yet launched the “gripe site” the language in his response to Complainant’s cease and desist letter shows that he likely will.
The disputed domain name is likely to confuse Internet users into believing the content therein is affiliated, connected, or associated with Complainant.
Complainant’s pending trademark application does nothing to establish its rights in the TAHERI DERMATOLOGY mark. The disputed domain name does not infringe upon a trademark as Complainant has failed to show any convincing evidence that the TAHERI DERMATOLOGY mark otherwise exists.
The purchase of the disputed domain name was the first step in forming a public service gripe site about Complainant. Respondent sought statements from Complainant’s former patients, as well as correspondence of former attorneys in connection with an SEC investigation of Complainant’s infringement on various patents. Respondent is planning to use the domain name and has been working with a web designer to design a multi-faceted gripe site.
Complainant does not adequately show that Respondent’s discussion of the sale of the domain name constitutes bad faith under the Policy. Respondent’s price was nothing higher than the costs and time that Respondent took in finding the information for the domain name’s content pages and there is no evidence of any profit motive.
Respondent is not a business competitor of Complainant. Respondent is not seeing any commercial gains nor acquires any profits through the website. Respondent’s intended use of the domain name to host a gripe site will make it inherently clear that the domain name is not associated with Complainant. Respondent cannot be found to be confusing Internet users to attract a commercial gain.
C. Additional Submissions
The TAHERI DERMATOLOGY trademark application was approved and published for opposition on April 2, 2013. No one has opposed the trademark. The domain name is a violation of Complainant’s trademark.
Respondent has failed to post a single page or update on the website since the registration in 2007. The information on Complainant submitted by Respondent in this case is easily obtainable information and it is therefore not credible that the Respondent has been gathering information regarding Complainant since the registration. The true purpose of the registration is to extort money from Complainant by selling the domain name.
Respondent is a cyber-squatter that owns 321 domain name registrations.
Two attempts to sell the disputed domain name to Complainant have been made by the Respondent, the first on September 10, 2012, and the second on March 25, 2013.
The <taheridermatology.com> domain name was registered on January 4, 2007.
The disputed domain name is not identical or confusingly similar to a trademark in which Complainant holds rights.
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.
Complainant claims that LA Laser Center P.C. is the trademark owner of the TAHERI DERMATOLOGY mark and uses it in its medical practice. Complainant states that the TAHERI DERMATOLOGY trademark application was approved and published for opposition on April 2, 2013 and that no one has opposed the trademark. Complainant asserts that it has used the TAHERI DERMATOLOGY mark in connection with its medical practice since at least 2002. Complainant contends that its use of the TAHERI DERMATOLOGY mark in Dr. Daniel Taheri’s medical practice for over a decade has established rights in the mark. Complainant notes that Dr. Daniel Taheri is the only person with the surname “Taheri” that could be found who practices in the medical field of dermatology. Complainant argues that this further shows that Complainant’s use of the mark is stronger than any other purported use of this mark.
Respondent argues that Complainant’s pending trademark application does nothing to establish its rights in a mark. Respondent further contends that the domain name does not infringe upon a trademark as Complainant has failed to show any convincing evidence that a TAHERI DERMATOLOGY mark otherwise exists.
The Panel notes that Complainant does not have evidence of a registered trademark pertaining to this dispute. The Panel agrees with prior UDRP-panels that a registered trademark is not required under the Policy, so long as Complainant can show some form of rights in a mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
The only evidence submitted of Complainant’s use of the TAHERI DERMATOLOGY mark is at the last page of a brochure where it says “Copyright © 2002, Taheri Dermatology”. No relevant evidence, such as length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition has been presented by Complainant. Therefore, the Panel finds that Complainant has not met its burden in showing that TAHERI DERMATOLOGY has become a distinctive identifier associated with Complainant’s goods or services and thereby acquired secondary meaning. See R.E. Ted Turner et al. v. Fahmi, D2002-0251 (WIPO July 4, 2002) (“None of these facts amounts to evidence that the name ‘Ted Turner’ is a trademark or service mark, so that Mr. Turner has not satisfied Paragraph 4(a)(i) of the Policy…”).
With the conclusion that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark TAHERI DERMATOLOGY, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
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 <taheridermatology.com> domain name REMAIN WITH Respondent.
Jonas Gulliksson (chair), Paul M. DeCicco and Kendall C. Reed, Panelists.
Dated: May 6, 2013
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