WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Referral Experts LLC v. Integrated Medical Solutions Corporation
Case No.�D2007-0231
1. The Parties
The Complainant is Referral Experts LLC, Pleasant Grove, Utah�United�States�of�America, represented by Abbott Walker PC, United�States�of�America.
The Respondent is Integrated Medical Solutions Corporation, 505 White Plains Rd., Tarrytown, New York, United�States�of�America.
2. The Domain Name and Registrar
The disputed domain name is registered with Go�Daddy�Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on February�16,�2007. On February�16,�2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February�19,�2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the�“Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February�26,�2007. In accordance with the Rules, paragraph�5(a), the due date for Response was March�18,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March�28,�2007.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on April�10,�2007. 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 Referral Experts, LLC is in the business of referring individuals interested in plastic surgery to qualified surgeons. On May�10,�2002, Complainant registered the domain name . On August�5,�2003, Complainant filed an application with the United States Patent and Trademark Office (USPTO) to register the mark LOOKINGYOURBEST.COM. The mark, as used in connection with “online physician referral service for plastic surgeons; cooperative advertising and marketing provided via the internet”, was registered (Registration No.�2,964,902) by the USPTO on July�5,�2005. See Complaint, Annex 4.
The disputed domain name was registered on September�9,�1998. From April�28,�1999 until October�8,�2000, the domain name was used by a third party to sell hair and beauty products. From October�8,�2000 until May�5,�2004, the site was used to sell a topical hair loss treatment. Respondent acquired the disputed domain name in January 2005, and around that time began using the site to engage in the business of creating referrals for plastic surgeons.
5. Parties’ Contentions
A. Complainant
Complainant alleges that the disputed domain name is confusingly similar to its registered mark and domain name LOOKINGYOURBEST.COM. It�contends that Respondent’s domain name consists simply of Complainant’s registered mark with the nondistinctive letters “ing” and “your” removed. “This�similarity …, combined with the fact that both the Complainant and Respondent are now participants in the same type of business, render the Respondent’s registered domain name… confusingly similar to Complainant’s registered trademark”.
Complainant further alleges that it has rights in the mark LOOKINGYOURBEST.COM by virtue of its use and registration of such mark.
Complainant asserts that Respondent has no legitimate interest or right to the disputed domain name as it is currently used. According to Complainant, Respondent’s actions indicate a deliberate intent to misleadingly divert customers from the Complainant and to tarnish Complainant’s registered mark. Complainant emphasizes that while the domain name was originally registered to sell makeup and hair care products, Respondent currently uses the domain name to generate referrals to plastic surgeons; in other words, Respondent now uses the disputed site to compete with Complainant. Complainant notes that the site went unused by Respondent for several months before it began using the site for its surgeon referral business. Under such circumstances, Complainant contends, Respondent should be found to have engaged in a deliberate attempt to transform its then unused domain name in order to misleadingly divert customers from Complainant’s website and thus tarnish Complainant’s mark.
Complainant further maintains that, given that the domain name is confusingly similar to Complainant’s registered mark, Respondent may not be found to being using the domain name in connection with a bona fide offering of goods or services.
According to Complainant, the fact that the disputed domain name was probably originated in good faith by its original owner does not prevent a determination that Respondent registered and is using the domain name in bad faith. Complainant contends that the term “registered” includes registration on acquisition by the current owner.
Complainant contends that Respondent, through its use of the disputed domain name, is intentionally attempting to attract, for commercial gain, internet users to its site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the site or of the services offered at such site, within the meaning of paragraph�4(b)(iv) of the Policy. “Respondent’s use of a domain name, which is confusingly similar to Complainant’s registered trademark LOOKINGYOURBEST.COM, is purposefully intended to take business from the Complainant. It is clear that both websites are directed to the same public, provide the same services, and that [Respondent] is using the domain name to attract customers familiar with the Complainant’s established trademark. This confuses the Complainant’s mark, and disrupts Complainant’s business.”
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the mark LOOKING YOUR BEST.COM. As noted by Complainant, Respondent’s domain name consists of Complainant’s registered mark with the non-distinctive letters “ing” and “your” deleted. Such differences do not render the domain name dissimilar from the mark in either appearance, sound or meaning.
The Panel further determines that Complainant has rights in the mark LOOKING YOUR BEST.COM. Such rights are manifested by Complainant’s use of the mark since November 20021 and its ownership of a corresponding U.S. trademark registration.
B. Rights or Legitimate Interests
The Panel finds that Complainant has met its burden of proving that Respondent does not have rights or legitimate interests in the domain name . There is no evidence that Respondent is commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name. Further, while the evidence establishes that the domain name may have been used by Respondent’s predecessor in interest in connection with a bona fide offering of goods or services, the Panel agrees with Complainant’s assertion that Respondent’s use of such site for plastic surgery referrals is not bona fide, within the meaning of paragraph�4(c)(i) of the Policy. Numerous UDRP panels have held that the use of a domain name that is confusingly similar to a complainant’s mark in connection with the offering of goods or services that are competitive with that offered by complainant is not a bona fide offering. See,�e.g. Am. Online v. Fu, WIPO Case No. D2000-1374; Am Online, Inc. v. Shenzhen JZT Computer Software Co., WIPO Case No. D2000-0809.
C. Registered and Used in Bad Faith
It is clear that the domain name in issue is being “used” by Respondent in bad faith insofar as it is currently being used in an intentional attempt, for commercial gain, to attract internet users to the “www.” site by creating a likelihood of confusion as to the source of such site or of the services offered therein. Given the similarities between the mark and the domain name and the identity of services offered by the parties, the Panel has little difficulty in finding the requisite likelihood of confusion.
The Policy, however, also requires that the domain name have been “registered” in bad faith. Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name is not in bad faith because the registrant could not have contemplated the complainant’s non-existent right. See WIPO�Overview of WIPO Panel Views on Selected UDRP Questions and cases cited therein. In this regard, the evidence indicates that the disputed domain name was registered in 1998, and the earliest date Complainant may rely upon to establish trademark rights is November�2002, its date of first use of the LOOKINGYOURBEST.COM mark.2
However, previous UDRP panels have held that the term “registered” may cover registration on acquisition. See, e.g., Therapro, Inc. v. Administrator, Domain/Therapro, WIPO Case No. D2006-0883; General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online, WIPOCase No. D2003-0845. “The�question, then, is whether the acquisition of the disputed domain name by the [r]espondent … can be said to have [been] done in bad faith.” See Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No.�D2000-1406. Moreover, the Policy itself seems to contemplate this result. In particular, paragraph�4(b)(i) provides as an example of bad faith registration and use evidence that the current registrant has registered or acquired the domain name primarily for the purpose of selling it to the complainant for valuable consideration in excess of its costs.
The evidence establishes that Respondent acquired the disputed domain name in January�2005, a little over two years after Complainant commenced use and established rights in its mark. The evidence further indicates that Respondent, upon acquisition of the domain name, changed the nature of the site to one that offered services competitive with that offered by Complainant under its mark and domain name.
In view of such facts, as well as Respondent’s failure to present any evidence or argument, the Panel concludes that the disputed domain name was registered and is being used in bad faith. More particularly, the Panel finds that Respondent, through its use of the disputed domain name, is intentionally attempting to attract, for commercial gain, internet users to its site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the site or of the services offered at such site, within the meaning of paragraph�4(b)(iv) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs�4(i) of the Policy and 15�of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Jeffrey M. Samuels
Sole Panelist
Dated: April�24,�2007
1 This is the date of first use set forth in Complainant’s trademark registration certificate.
2 The Panel has reviewed the automated records of the USPTO with respect to the application that matured into Complainant’s registration. Based on such review, it appears that the USPTO determined that Complainant’s mark is inherently distinctive. Inherently distinctive marks are protectable upon their use in commerce.
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