WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Care Management Associates, Inc. v. Susan Hagin dba RV Central Case No. D2008-1211 1. The Parties
Complainant is Care Management Associates, Inc. (“Complainant”), a corporation incorporated under the laws of the State of Florida, with a principal place of business located in Clearwater, Florida, United States of America.
Respondent is Susan Hagin dba RV Central (“Respondent”), an individual residing in Huntsville, Alabama, United States of America. 2. The Domain Name and Registrar
The domain name at issue is (the “Disputed Domain Name”). The registrar is R (the “Registrar”). 3. Procedural History
On August 8, 2008, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint via post. The Complainant paid the required fee.
On August 11, 2008, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.
On August 14, 2008, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On August 19, 2008, the Center received the electronic version of the Complaint.
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”).
On August 21, 2008, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy via email to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On September 11, 2008, the Center received the Response of Respondent via email. On September 16, 2008, the Center received the Response of Respondent in hardcopy.
On September 22, 2008, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”) to ensure compliance with the Rules, paragraph 7, the Center notified the parties of the appointment of a single-member panel consisting of the Panel.
On October 10, 2008, the Panel requested that Complainant file verification of fact stated in the Complaint regarding the alleged registration of the service mark claimed by Complainant. On October 13, 2008, the Panel received the verification it had requested from Complainant. 4. Factual Background
Complainant owns the domain name that was registered in December 1999. In addition, Complainant is the owner of a federal service mark registration for FLAASSISTEDLIVING.COM (No. 3,421,804) (the “Mark”) for consulting services, namely, the research and location of qualified long term care and senior residential housing facilities for individuals; marketing and promotional services, namely, providing information about long term care and senior residential housing facilities. The registration was issued on May 6, 2008. Complainant first began conducting business under FLAASSISTEDLIVING.COM in January 2000.
Complainant's president is a registered nurse who consults in the field of placement and referrals to private and public senior living facilities. Complainant has spent approximately USD111,000 in search engine fees and yellow page advertising and promoting its Mark since inception. Complainant's Mark has become associated with its services over the eight years it has used the Mark throughout the State of Florida and in the United States. It has enjoyed sales of USD600,000 under the Mark.
The Disputed Domain Name was registered on March 2, 2000. 5. Parties' Contentions A. Complainant's contentions
i. Complainant contends that it has a registration for the federal service mark FLAASSISTEDLIVING.COM (No. 3,421,804) for consulting services, namely, the research and location of qualified long term care and senior residential housing facilities for individuals; marketing and promotional services, namely, providing information about long term care and senior residential housing facilities.
In addition, Complainant alleges that its domain name is used not just as an Internet address, but as a trademark as well. Complainant contends that it has common law trademark rights by virtue of its use of its domain name.
ii. Complainant argues that the Disputed Domain Name is confusingly similar to the FLAASSISTEDLIVING.COM Mark, pursuant to paragraph 4(a)(i) of the Policy, because Respondent's Disputed Domain Name is which merely spells out the name of the State of Florida abbreviated as “FLA” in Complainant's Mark. The words “assisted” and “living” are identical to Complainant's mark, and the predominant overall commercial impression of the Disputed Domain Name and the Mark are the same.
iii. Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, pursuant to paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Name.
Respondent cannot demonstrate rights or legitimate interest in the Disputed Domain Name under paragraph 4(c)(i) because she has not made use, or demonstrable preparations to use, the Disputed Domain Name in connection with the bona fide offering of goods or services. Complainant alleges that the Disputed Domain Name has remained “parked” with no content.
Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under paragraph 4(c)(ii) because she is not commonly known under the Disputed Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the FLAASSISTEDLIVING.COM Mark in a domain name or in any other manner.
Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under paragraph 4(c)(iii) because it is not making any use of the Disputed Domain Name, including any legitimate noncommercial or fair use without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.
Complainant generally alleges that Respondent, an Alabama resident, has no rights or legitimate interest in respect of the Disputed Domain Name. Respondent conducts no business in connection with the Disputed Domain Name and has no legitimate interest in having the Disputed Domain Name. The Whois database previously listed the web status as “parked.”
iv. Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of Paragraph 4(a)(iii).
Complainant alleges that Respondent has registered the Disputed Domain Name for the sole purpose of using the Disputed Domain Name as a commodity to sell or license to the highest bidder. When Complainant contacted Respondent's agent about what services are provided and what amount they would accept for the transfer of the mark, Respondent's agent ignored the request for information concerning the use of the Mark and instead indicated that he had rejected an offer of USD10,000 to transfer the domain name and only “serious offers” would be considered. In sum there are no bona fide goods or services being offered in connection with Respondent's Disputed Domain Name. Respondent has no good faith basis for use of the Disputed Domain Name and instead appears to be cyber-squatting in order to procure a cash payoff for the Disputed Domain Name in excess of the costs relating to procurement of the Disputed Domain Name in violation of paragraph 4(b)(i) of the Policy.
Complainant further alleges that Respondent represented when she registered her Disputed Domain Name that she was not aware of the FLAASSISTEDLIVING.COM Mark. However, a simple Internet search would have taken her to Complainant's website where the Disputed Domain Name is used in trademark fashion. B. Respondent's contentions
i. Respondent does not dispute that the Complainant has a registration of the FLAASSISTEDLIVING.COM Mark.
ii. Respondent does dispute that the Disputed Domain Name is confusingly similar by asserting that “which [Disputed Domain Name] Respondent points out is a markedly different domain name [from Complainant's Mark].”
iii. Respondent asserts that she only became interested in assisted living when she sought care for her mother and sought to purchase three domain names (including the Disputed Domain Name) with the idea of starting a directory type business. (The Panel notes that Respondent has asserted no other basis for the allegation that she has rights to or legitimate interest in the Dispute Domain Name).
iv. Respondent denies that she registered or used the Disputed Domain Name in bad faith and makes the following allegations: Complainant is attempting to take the Disputed Domain Name by this proceeding in bad faith in that there is absolutely no evidence that Complainant can produce that Respondent has acted in bad faith. First Respondent's Disputed Domain Name was purchased March 2000, only approximately 42 days after the Complainant purchased . As of March 2000, the Complainant a) had no active business, had no registered mark and Respondent had never heard of Complainant, b) the Respondent purchased two other similar domain names at the same time – and , c) as of March 2, 2000, when Respondent's domain names were purchased, Respondent had an elderly mother who was seeking care in an assisted living facility. Respondent was astounded how little directory information there was on the subject and sought to purchase these three domain names with the idea of starting a directory type business. Subsequent to the purchase of these names, Respondent's mother did, in fact, go into as assisted living facility named Somerby Assisted Living in Alabama. The Respondent's mother lived there for the last 5½ years of her life. Further, the domain name of which Complainant now complains was fully available to Complainant when Complainant purchased which Respondent points out is a markedly different domain name. Additionally, it is the Complainant who made contact with the Respondent trying to buy the Disputed Domain Name in 2005. Respondent never interfered, tried to interfere or tried to sell this domain name to any person other than quoting a price to the Complainant when it called asking to buy the name. At no time has Respondent attempted to compete with the Complainant at all. Respondent has not started a business with her Disputed Domain Name at this time and Complainant is using this forum to try to take Respondent's Disputed Domain Name for free. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie,WIPO Case No. D2000-1772, n. 3.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(ii) that the Respondent has no legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith. Enforceable Trademark Rights
Complainant contends that it has a registration for the federal service mark FLAASSISTEDLIVING.COM (No. 3,421,804) for consulting services, namely, the research and location of qualified long term care and senior residential housing facilities for individuals; marketing and promotional services, namely, providing information about long term care and senior residential housing facilities. The Mark was registered on May 6, 2008.
Complainant contends that its registered service mark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the FLAASSISTEDLIVING.COM Mark.
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. Respondent has chosen not to contest the allegation of Complainant regarding its service mark registration.
In addition, Complainant is claiming common law trademark rights. The use of the mark to establish common law rights consisted of the use of the domain name . Complainant also alleges that it expended USD111,000 in search engine fees and advertising and received USD600,000 in revenue. Its services appear to have rendered primarily in Florida.
It is the Panel's belief that Complainant has established enforceable rights under the registration after May 6, 2008. In addition, the Panel finds that Complainant has established some limited common law rights with use beginning January 2000. The Disputed Domain Name was purchased on March 2, 2000.
Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the FLAASSISTEDLIVING.COM Mark by registration after May 6, 2008 and by common law use from January 2000. Identity or Confusing Similarity
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i), because Respondent's Disputed Domain Name is which merely spells out the name of the State of Florida in Complainant's Mark. Complainant further contends that the words “assisted” and “living” are identical to Complainant's mark, and the predominant overall commercial impression of the Disputed Domain Name and the Mark are the same.
Respondent does dispute that the Disputed Domain Name is confusingly similar by asserting that “which [Disputed Domain Name] Respondent points out is a markedly different domain name [from Complainant's Mark].” No reasons for the marked difference between the Disputed Domain Name and the Mark are offered.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding that QUIXTAR and are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant's registered trademark.
The Panel notes that the entirety of the Mark's “assistedliving” portion of the Mark is used in the Disputed Domain Name. The only difference is that the Mark uses the abbreviation “FLA” for the State of Florida, while the Disputed Domain Name spells out “florida.” The Panel finds that difference is non-distinctive.
Generally, a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the FLAASSISTEDLIVING.COM Mark pursuant to the Policy paragraph 4(a)(i). Rights or Legitimate Interest
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii) and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Name.
Complainant generally alleges that Respondent, an Alabama resident, has no rights or legitimate interest in respect of the Disputed Domain Name. Respondent conducts no business in connection with the Disputed Domain Name and has no legitimate interest in having the Disputed Domain Name. The Whois database previously listed the web status as “parked.”
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a complainant establishes a prima facie showing that the Respondent lacks legitimate interests or rights in the domain name, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
Respondent asserts that she only became interested in assisted living when she sought care for her mother and sought to purchase three domain names (including the Disputed Domain Name) with the idea of starting a directory type business. Respondent has asserted no other basis for the allegation that she has rights to or legitimate interest in the Dispute Domain Name and has not asserted that she actually undertook preparations to put content on the website to which the Disputed Domain Name might resolve.
The Complainant has sustained its burden of proving that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Respondent has not offered any persuasive evidence that she undertook the offering of or preparation to offer any good or services.
Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii). Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four non-exclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product
Complainant alleges that Respondent has registered the Disputed Domain Name for the sole purpose of using the Disputed Domain Name as a commodity to sell or license to the highest bidder. When Complainant contacted Respondent's agent about what services are provided and what amount they would accept for the transfer of the domain name, Respondent's agent ignored the request for information concerning the use of the mark and instead indicated that he had rejected an offer of USD10,000 to transfer the domain name and only “serious offers” would be considered. In sum there are no bona fide goods or services being offered in connection with Respondent's Disputed Domain Name. Respondent has no good faith basis for use of the Disputed Domain Name and instead appears to be cyber-squatting in order to procure a cash payoff for the Disputed Domain Name in excess of the costs relating to procurement of the Disputed Domain Name in violation of paragraph 4(b)(i) of the Policy.
Complainant further alleges that Respondent represented when she registered her Disputed Domain Name that she was not aware of the FLAASSISTEDLIVING.COM Mark. However, a simple Internet search would have taken her to Complainant's website where the Disputed Domain Name is used in trademark fashion.
The Panel finds that Complainant has failed to establish a necessary element under Paragraph 4(b)(i). There is no bad faith in the simple registration of a domain name to be sold as a commodity. Paragraph 4(b)(i) requires Complainant to show that the intent of Respondent was to hold the domain name for sale to the Complainant or a competitor. Complainant's and Respondent's domain names were registered within 2-3 months of each other. No evidence has been presented that Respondent had actual knowledge of Complainant's FLAASSISTEDLIVING.COM.
The registration of the FLAASSISTEDLIVING.COM Mark did not take place until May 6, 2008 which was eight years after Respondent purchased the Disputed Domain Name. To establish constructive knowledge, Complainant needs to have a registered trademark or service mark. The mere existence of a domain name “used as a trademark” is not sufficient to attribute constructive knowledge to Respondent. Therefore, constructive knowledge of Complainant's rights cannot be attributed to Respondent at the time she purchased the Disputed Domain Name.
Complainant implies that Respondent has assumed a position of “willful blindness” by not looking for information which was available through a search on the Internet. The Panel finds that these facts are not sufficient to establish willful blindness.
The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
Complainant has alleged that Respondent's lack of use of the Disputed Domain Name is sufficient to establish Respondent's bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In Telstra it was established that registration together with “inaction” and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent panels. Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang,WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric,WIPO Case No. D2000-0042; Sanrio Company Ltd. and Sanrio, Inc. v. Neric Lau,WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eR,WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.,WIPO Case No. D2000-0090; Stralfors AB v. P D S AB,WIPO Case No. D2000-0112; InfoS, Inc. v. Tenenbaum Ofer,WIPO Case No. D2000-0075; Strålfors AB v. P D S AB,WIPO Case No. D2000-0112.
Panel hereby finds that Respondent's lack of use under these circumstances is not sufficient to establish bad faith. Complainant's assertion that its only use of the Mark was in the form of a domain name and the limited scope of the services rendered by Complainant militate against a finding of bad faith.
Therefore, the Panel finds that Complainant has failed to show the necessary element of bad faith under the Policy paragraph 4(b)(i). 7. Decision
The Panel concludes (a) that the Disputed Domain Name is confusingly similar to Complainant's registered trademarks and common law rights in FLAASSISTEDLIVING.COM, (b) that Respondent has not demonstrated her rights or legitimate interest in the Disputed Domain Name, but (c) that Respondent has not registered and used the Disputed Domain Name in bad faith. Therefore, the Panelist declines Complainant's request that the Disputed Domain Name be transferred to Complainant, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules.
The Complaint is denied.
Richard W. Page
Sole Panelist
Dated: October 25, 2008
Full & Egal Universal Law Academy