Healthgrades Operating Company, Inc. v. Erick Hallick
Claim Number: FA1604001672836
Complainant is Healthgrades Operating Company, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Erick Hallick (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cpm.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2016; the Forum received payment on April 30, 2016.
On May 2, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cpm.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 May 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2016 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 email@example.com. Also on May 3, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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. Policy ¶ 4(a)(i)
Complainant has common law rights in the CPM mark dating back to 1998, or earlier, based upon its continuous use by both Complainant and Complainant’s predecessor in interest. Respondent’s <cpm.com> domain name is identical to the CPM mark because it contains the mark along with the generic top-level domain (“gTLD”) “.com.”
b. Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <cpm.com> domain name, as it is not authorized to use the CPM mark and because the provided WHOIS information is fraudulent, and designed to create an association with Complainant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it acquired the <cpm.com> domain name through fraud and hacking and because it fails to make an active use of the domain name.
c. Policy ¶ 4(a)(iii)
Respondent registered the <cpm.com> domain name in bad faith because it did so through fraud and hacking, and with actual or constructive knowledge of Complainant’s rights in the CPM mark. Respondent uses the <cpm.com> domain name in bad faith because it fails to make an active use of the domain name.
a. Respondent failed to submit a Response in this proceeding.
Complainant is Healthgrades Operating Company, Inc., of Denver, CO, USA. Complainant is the owner of the registered domestic marks, CPM Healthgrades and CPM Healthgrades stylized, which it has consistently used since at least as early as 2012 in connection with its business of providing on-line information regarding the medical field, including hospitals, physicians, health care facilities, and health care providers. Complainant does not own a registration for the mark CPM but claims common law rights dating back to its acquisition of Customer Potential Management Marketing Group, Inc. (CPM) and CPM’s use of the mark at least as early as 1998. Complainant asserts that from 1990 until at the latest, the beginning of January 2016, it or its predecessor owned and operated the disputed domain name <cpm.com> in connection with a website providing information identical to that noted above as associated with Complainant’s registered trademarks.
Respondent is Erick Hallick of Madison, WI, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the <cpm.com> domain name was created on or about November 9, 1990.
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Complainant does not claim to hold a registered trademark for the CPM mark but instead asserts common law rights based on prior use. Past panels have held that registration of a mark is not required when a complainant can show common law rights. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Complainant claims to hold common law rights in the CPM mark dating back to 1998, or earlier based upon the continuous use of the mark by both Complainant and Complainant’s predecessor in interest. Complainant contends that its predecessor in interest was the original registrant of the disputed domain name, and that the domain and mark were continuously used by either Complainant or the predecessor from registration through 2011, when Complainant acquired the previous entity, until December of 2015 or January of 2016, at which point Complainant lost possession of the domain. Complainant has provided evidence to demonstrate original registration of the domain name and CPM mark, sworn declarations from former agents of Complainant’s predecessor in interest attesting to this history of use, WHOIS records to indicate registration status of the <cpm.com> domain, historical screenshots to demonstrate prior use, and Complainant’s trademark registration information for its CPM HEALTHGRADE mark.
Complainant’s evidence establishes the history of the mark’s domain name registration and indicates the original registrant. There is also adequate proof that the domain name has been used by the Complainant or its predecessors. However, enforceable common law rights in a mark usually require a showing beyond mere registration and use. Common law rights indicate the mark has taken on a secondary meaning in relation to Complainant as evidenced by the mark’s public recognition. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Proof of secondary meaning generally requires evidence of use, sales, advertising, or similar methods of communication and interaction with the general populace that results in the public’s recognition of the mark as an indicator of a single source for the goods or services to which the mark is affixed.
The Complainant here has failed to provide evidence of any sales or advertising, or any indication of the extent of use by Complainant or its predecessors, aside from what may be implied from the domain name registration and screenshots indicating isolated uses of the domain name at various times. Self-serving commentary alone from a common law mark claimant is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public. In this case there is no information regarding the public’s recognition of the alleged CPM mark, or the <cpm.com> domain name being associated with any entity. As the Panel cannot speculate on scope of use or other evidence required to prove secondary meaning the Panel finds the Complainant has failed to establish common law rights dating back to 1998. See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Forum Dec. 11, 2001) (finding that, without evidence of common law trademark rights, the complainant did not establish rights to the CYBERIMPRINTS.COM mark within the meaning of Policy ¶ 4(a)(i) by registering its company name CYBERIMPRINTS.COM, INC. with the California Secretary of State).
The Complainant has NOT proven this element.
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (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 (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)).
The Panel declines to analyze this element.
The Panel declines to analyze this element.
The Panel finds that certain facts in this proceeding require comment related to all the elements of Policy ¶ 4(a). Specifically, the Panel finds this matter falls outside the scope of the UDRP. In this case, Respondent Erick Hallick is on the Board of Directors of Complainant and is the representative of the former owners of CPM, Complainant’s predecessor, on that Board. Complainant alleges that Respondent could not have registered the domain name without hacking Complainant’s account and taking over the domain name in an unauthorized manner. Based upon those allegations, and other related facts in the record, the Panel here concludes that the instant dispute contains questions of express or implied contractual interpretation, and thus falls outside the scope of the UDRP. In Bracemart, LLC v. Drew Lima, the Panel declined to make any findings under the UDRP when there was evidence that both the complainant and the respondent at some point acted in an official capacity in the management of the company, and that “[b]ased upon this reasoning, the Panel concludes that the instant dispute relates to contractual interpretation and/or whether the relationship between Complainant and Respondent was one of employer-employee or one of partnership, which determination falls outside the scope of the Policy.” See FA 1494699 (Mar. 28, 2013). Because the question of whether the complainant or the respondent in that case had rights in the domain name relied heavily on the corporate structure of the companies involved, the Panel could not resolve the dispute under the UDRP. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
As the Complainant has NOT established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <cpm.com> domain name be REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: June 9, 2016
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