WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eM, Inc. v. Aspen Grove Consulting
Case No. D2001-0147
1. The Parties
The Complainant is: eM, Inc., a Delaware corporation with principal place of business at 875 Pasadena Ave. S., St. Petersburg, Florida 36707, U.S.A. Complainant is represented in this proceeding by Anne S. Mason, Esq., Mason & Associates, P.A., 17757 U.S. Hwy 19 N., Suite 500, Clearwater, Florida 33764, U.S.A.
The Respondent is: Aspen Grove Consulting, an entity whose address, as corrected by the Respondent itself, is 580 Harrison Avenue, 4th fl., Boston, MA 02118, U.S.A. Respondent's administrative contact is Eric Patrick.. Respondent is represented by James Newton, Esq., Whitman Breed Abbott & Morgan, 100 Field Point Road, Greenwich, Connecticut 06830, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is:
The registrar for the disputed domain name is Network Solutions, Inc. (NSI), 595 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).
The Complaint was filed on January 26, 2001. On February 12, 2001, the Center requested that the registrar, NSI, conduct a check to determine the registrant for the disputed domain name . On February 13, 2001, NSI reported to the Center that the registrant was the Respondent in this proceeding, Aspen Grove Consulting.
On February 22, 2001, the Center informed the Complainant of deficiencies in the Complaint involving notifying the Respondent and submitting to jurisdiction either at the Respondent's location or the location of the principal office of the registrar. On March 15, 2001 (e-mail) and March 19, 2001 (hard copy), the Complainant submitted a satisfactory Complaint amendment.
On March 21, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. Respondent's Response was received by the Center on April 9, 2001.
The Administrative Panel submitted a Declaration of Impartiality and Independence on May 7, 2001, and the Center then appointed the Panel on May 11, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by May 25, 2001.
4. Factual Background
The Complainant states that it first used its "EMEDICINE" mark in commerce in June, 1997. The Complainant does not specify what that use was, but the Panel presumes it was in line with the Complainant's stated use in its trademark registrations, ie, on-line medical publishing.
The Respondent characterizes itself as a a provider of workflow and process management systems. The Respondent registered the disputed domain name, , on August 8, 1998. There is no proof of what the Respondent was actually doing with the disputed domain name at that time, although the Respondent states the domain name was to be used in connection with a medical services client in San Francisco, California, U.S.A.
The Complainant wrote to the Respondent on September 20, 2000, alleging trademark infringement and demanding that the Respondent either transfer the disputed domain name to the Complainant or furnish the Complainant with detailed information that would allow the Complainant to assess the effects of the Respondent's domain name on the Complainant's trademark rights (Complaint Exhibit D).
The Respondent did not reply to the Complainant, and the Complainant now seeks transfer of the disputed domain name in this proceeding.
5. The Parties' Contentions
Complainant's Contentions:
- The Respondent is the unauthorized owner of the domain name , which is confusingly similar to Complainant's U.S. trademark registrations.
- Respondent has used the domain name intentionally to attract for commercial gain Internet users to its web site by creating a likelihood of confusion with the Complainant's marks as to the source of the products or services offered on the website.
- Respondent is not engaging in fair use and Complainant knows of no legitimate, non-commercial use of the domain name of Respondent.
- The domain name is confusingly similar to Complainant's marks and was adopted after Complainant's date of first use. The domain name was registered and is being used in bad faith.
- The Respondent appears to be in the career counseling business and has no legitimate use for the EMEDICINE mark.
- The Complainant, as the original user of the marks, has superior rights in the marks particularly as they pertain to medical publishing.
- Complainant seeks transfer of the domain name from the Respondent to the Complainant.
Respondent's Contentions:
- Respondent first acquired the domain name on August 8, 1998, one month prior to the Complainant's registration of its service marks.
- Commencing in March, 1998, Respondent was engaged by a professional medical services client in San Francisco, California, U.S.A. to design and program a medical billing system as an e-commerce solution for the transmission of billings to insurance companies and government agencies (Response p. 3).
- While the domain name has not been placed in use, Respondent subsequently has developed an e-commerce process management system and is currently engaged in or seeking business with several vertical markets, including the medical and pharmaceutical industries. Respondent intends to use the domain name in the future in conjunction with specialized medical or pharmaceutical internet applications.
- Complainant's principal business is in the area of publications, text books and related materials and is operated primarily as a business-to-consumer internet service marketing directly to physicians.
- Respondent's principal business is in the area of software development and is operated primarily as a business-to-business internet service marketed to professional service companies and large corporations. Given the dissimilar markets and method of providing services between the two businesses, it is highly unlikely that their sophisticated consumers would confuse the domain name with Complainant's marks.
- Respondent had a legitimate business reason for acquiring the domain name and did not acquire it primarily for the purpose of selling, renting, or otherwise transferring it to Complainant.
- Respondent has never contacted any entity with regard to selling the domain name. Rather, Respondent has chosen to hold the name for future use.
- The domain name was not registered by Respondent to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant's mark as to the source of Respondent's products or services.
- The Panel should deny the remedies requested by the Complainant.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name
transferred to it, Complainant must prove the following (the Policy, para 4(a):
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has produced exemplary copies of its two "EMEDICINE" service mark/trademark registrations on the principal register of the Patent and Trademark Office of the United States of America. They are service mark no. 2,187,823 dated September 8, 1998 in int. class 42 for on-line educational texts; and no. 2,369,912 dated July 25, 2000, trademark and service mark in int. classes 9 and 42 for electronic medical publications (Complaint Exhibits A and B).
The Panel finds the disputed domain name, , is identical to the Complainant's marks. It is well settled in these proceedings that top level indicators such as "net" are neutral for trademark similarity analysis.
Rights or Legitimate Interests
The Complainant contends the Respondent's use of its mark in the disputed domain name is "unauthorized." The Complainant also contends the Respondent is not making fair or non-commercial use of the disputed domain name.
In counterpoint, the Respondent claims that at the time it registered the domain name it had in mind the needs of a professional medical services client. However, the Respondent has not provided a shred of proof to back up this contention. Moreover, the Respondent itself states it currently has no use at all for the domain name (Response p. 4).
The Panel finds the Respondent has no legitimate rights or interests in the domain name.
Registered and Used in Bad Faith
The Complainant contends the Respondent was using the domain name in violation of the bad faith provisions of the Policy at 4b(iv), ie, the Respondent was using the Complainant's mark to attract the public to the Respondent's website for commercial gain. There is no evidence whatever to support the Complainant's contention, and the Panel therefore can not accept it.
Furthermore, it does not appear to the Panel that the Respondent had any knowledge of the Complainant's trademark rights when Respondent registered the disputed domain name, . Complainant states it first used "EMEDICINE" in commerce in June 1997 and the Respondent registered the domain name on August 8, 1998. This would have give the Complainant's mark very little time to acquire notoriety to put the Respondent on notice, and the Complainant's two trademarks were both registered after the Respondent registered the domain name.
The Panel finds the Complainant has not met its burden of proof to show the Respondent registered and was using the domain name in bad faith.
7. Decision
The Panel has found the Complainant showed the Respondent registered a domain name identical to the Complainant's valid trademark and that the Respondent had no legitimate rights or interests in the domain name. However, the Complainant failed to show the Respondent registered and was using the domain name in bad faith.
Hence, per the Policy 4(i) and Rule 15, the Panel orders that the Complainant's request to transfer the disputed domain name, , to the Complainant be denied.
Dennis A. Foster
Sole Panelist
Date: May 25, 2001
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