WIPO Domain Name Decision D2018-2841 for emsprofessionals.net
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Wisconsin Emergency Medical Technicians Association, Inc. DBA Wisconsin Emergency Medical Services Association, Inc. (WEMSA) v. Marsha Everts, EMS Professionals, Inc. Case No. D2018-2841 1. The Parties
Complainant is Wisconsin Emergency Medical Technicians Association, Inc. DBA Wisconsin Emergency Medical Services Association, Inc. (WEMSA) of Wind Lake, Wisconsin, United States of America (“United States”), represented by Marjory S. Stewart, United States.
Respondent is Marsha Everts, EMS Professionals, Inc. of Jefferson City, Missouri, United States, represented by Bandre’ Hunt & Snider, LLC, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2018. On December 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2019. The Response was filed with the Center on January 8, 2019.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on January 23, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant, Wisconsin Emergency Medical Technicians Association, Inc. DBA Wisconsin Emergency Medical Services Association, Inc. (WEMSA), is a non-profit member based organization for emergency medical professionals and first responders in the State of Wisconsin, United States. Complainant is a lobbying and educational organization which promotes education, information sharing and legislative action and advocacy in the field of emergency medical services (“EMS”). As part of Complainant’s activities, Complainant publishes a bi-monthly magazine under the name and mark EMS PROFESSIONALS. The magazine is only available to members of Complainant’s association and provides information and articles of interest regarding emergency medical services. Complainant also hosts an annual conference and trade show under the name and mark WEMSA which is dedicated to EMS services and issues.
Complainant is the owner of two trademark registrations for EMS PROFESSIONALS in the United States in connection with its educational materials and services (Registration Nos. 3,840,720 and 4,072,720, which issued to registration on August 31, 2010 and December 20, 2011 respectively).
Respondent Marsha Everts is the sole corporate officer and shareholder of Emergency Medical Supply Professionals, Inc., a corporation in the State of Missouri, United States. Respondent’s company sells online a variety of products manufactured by other parties for use by emergency medical providers and first responders such as firefighters, paramedics and law enforcement professionals. Respondent registered the disputed domain name on March 12, 2012, and at some point thereafter started using the disputed domain name with a website to promote and sell products to emergency medical providers and first responders. Respondent’s website is currently operational. On or about April 21, 2015, Respondent registered with the Secretary of State in the State of Missouri the fictitious business name “EMS Professionals, Inc.” as an assumed name for Emergency Medical Supply Professionals. Respondent has prominently featured the name and mark EMS PROFESSIONALS on the home page of Respondent’s website at the disputed domain name.
On or about October 8, 2018, Complainant sent Respondent a demand letter regarding Respondent’s use of the name and mark EMS PROFESSIONALS and the disputed domain name. While it does not appear that Respondent provided a formal written response to Complainant’s demand letter, the Parties apparently engaged in some limited discussions but could not resolve the matter. 5. Parties’ Contentions A. Complainant
Complainant contends that it owns rights in the trademark EMS PROFESSIONALS on the basis of its continuous use of the mark since November 1, 2002 and on account of its United States trademark registrations for EMS PROFESSIONALS. Complainant also contends that the EMS PROFESSIONALS mark has acquired secondary meaning as a unique identifier of Complainant.
Complainant asserts that the disputed domain name causes confusion and is infringing as it is identical to Complainant’s EMS PROFESSIONALS mark. Complainant further asserts that confusion is likely as the third party companies who sell products through Respondent’s website at the disputed domain name are in the same EMS field as those companies who advertise products and services through Complainant’s publication.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) has no authorization or license from Complainant to use the EMS PROFESSIONALS mark, (ii) is not an affiliate of or in a business relationship with Complainant, (iii) has no rights in the EMS PROFESSIONALS mark, and (iv) only used the disputed domain name based on the EMS PROFESSIONALS mark to promote Respondent’s business and to divert consumers from Complainant’s website for Respondent’s commercial gain.
Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith as Respondent registered and used the disputed the domain name well after Complainant acquired rights in the EMS PROFESSIONALS mark. Complainant also maintains that Respondent must have known of Complainant and Complainant’s prior rights in the EMS PROFESSIONALS mark given that Respondent attended Complainant’s WEMSA trade show and conference in 2018. Finally, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith to trade upon the goodwill Complainant has developed in the EMS PROFESSIONALS mark. B. Respondent
Respondent asserts that it is an online supplier of products utilized by emergency medical technicians (“EMTs”), firefighters, and law enforcement professionals. Respondent contends that it has been in business since 2011 and that it has registered and used the assumed business name EMS PROFESSIONALS since at least as early as April 21, 2015. Respondent also maintains that it registered the disputed domain name in March 2012, and has only used it in conjunction with Respondent’s website to promote and sell products of third party manufacturers to EMTs, firefighters, and law enforcement professionals.
Respondent does not contest that the disputed domain name is identical to Complainant’s EMS PROFESSIONALS mark, but contends that Complainant’s rights in EMS PROFESSIONALS are limited and only extend to Com