UMass Memorial HealthAlliance – Clinton Hospital v. Privacy.co.com Privacy ID# 1216460 / Savvy Investments, LLC Privacy ID# 1216460
Claim Number: FA2004001892419
Complainant is UMass Memorial HealthAlliance – Clinton Hospital (“Complainant”), represented by Heather E. Balmat of Bowditch & Dewey, LLP, Massachusetts, USA. Respondent is Privacy.co.com Privacy ID# 1216460 / Savvy Investments, LLC Privacy ID# 1216460 (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <urgentcareleominster.com>, registered with Sea Wasp, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2020; the Forum received payment on April 16, 2020.
On April 17, 2020, Sea Wasp, LLC confirmed by e-mail to the Forum that the <urgentcareleominster.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, 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 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2020 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 April 22, 2020, 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 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
Complainant, UMass Memorial HealthAlliance – Clinton Hospital, provides medical and health care services at multiple medical centers, hospitals and urgent care centers throughout Massachusetts. Complainant claims common law rights in the URGENT CARE LEOMINSTER trademark, which it asserts it has used in connection with providing its medical and health care services openly, widely and continuously since at least as early as 2014.
Respondent’s domain name, <urgentcareleominster.com>, wholly incorporates Complainant’s well-known and distinctive URGENT CARE LEOMINSTER trademark and is meant to create an improper and unauthorized association between Complainant and Respondent.
Respondent should be considered as having no rights or legitimate interests in respect of the domain name, which resolves to a website that creates a false association with Complainant and its trademark to promote health insurance agency services. Respondent has essentially reproduced a website previously operated by Complainant and added its own phone number and a sales pitch for health insurance agency services. The reproduction of Complainant’s web site includes the Complainant’s URGENT CARE LEOMINSTER and UMASSMEMORIAL HEALTHALLIANCE HOSPITAL word marks and associated logos, a photo of the Complainant’s urgent care facility, and descriptions of the services offered at the facility and extends to the layout and look and feel of the Complainant’s web site. Respondent has replaced the page where Complainant had listed the types of insurance and other payment methods it accepts with a sales pitch for health insurance policies. There is nothing on Respondent’s web site to suggest that it offers medical or health care services of any kind; all the references to urgent care services refer to Complainant’s services.
The domain name should be considered as having been registered and being used in bad faith. In using a duplicate of the web site Complainant formerly operated, complete with Complainant’s trademarks, a photo of Complainant’s facility and text taken directly from Complainant’s web site, Respondent intentionally created, for commercial gain, a false association with Complainant and misled Internet users as to the source, sponsorship, affiliation or endorsement of Respondent’s web site. In short, Respondent is trying to benefit from the goodwill Complainant has built up in its marks and reputation by tricking Complainant’s patients into thinking that Complainant endorses the health insurance agency services Respondent is promoting on its unauthorized facsimile of Complainant’s web site.
Respondent failed to submit a Response in this proceeding.
Complainant has failed to establish that it has rights in a trademark.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims common law rights in the URGENT CARE LEOMINSTER trademark, which it asserts it has used in connection with providing its medical and health care services openly, widely and continuously since at least as early as 2014. The Panel notes that Respondent’s domain name <urgentcareleominster.com> was registered on July 23, 2014.
Registration of a trademark is not required to satisfy Policy ¶ 4(a)(i). Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (“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”.), 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).
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Jurisprudential Overview 3.0”), paragraph 1.3:
“1.3 What does a complainant need to show to successfully assert unregistered or common law trademark rights?
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys…
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
Complainant in the present case has provided no evidence to support its assertion that it has common law rights in the descriptive terms URGENT CARE LEOMINSTER in connection with providing medical and health care services. Under these circumstances the Panel is unable to conclude that Complainant has acquired common law trademark rights in those terms.
Accordingly, the Panel finds that Complainant has failed to establish that it has rights in a trademark or service mark as required by Policy Paragraph 4(a)(i).
In light of the above, it is unnecessary to consider whether Respondent has rights or legitimate interests in respect of the domain name under Policy Paragraph 4(a)(ii) nor whether the domain name was registered and is being used in bad faith under Policy Paragraph 4(a)(iii).
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 <urgentcareleominster.com> domain name REMAIN WITH Respondent. However, since this decision is based upon a lack of sufficient evidence presented in this proceeding, this decision is issued without prejudice. Complainant may re-file a complaint involving the same domain name in a new administrative proceeding, provided that any such complaint be supported by evidence establishing that Complainant has common law rights in its claimed mark.
Alan L. Limbury, Panelist
Dated: May 18, 2020
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