The Complainant is Patient First Corporation of Richmond, Virginia, United States of America, represented by Leading-Edge Law Group, PLC, United States of America.
The Respondent is Raj Kumar, and Abhinav Girdhar, ONS Interactive Solutions Pvt Ltd of Faridabad, Haryana, India and of New Delhi, Delhi, India, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with BigRock Solutions Pvt Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2011. On May 6, 2011, the Center transmitted by email to BigRock Solutions Pvt Ltd. a request for registrar verification in connection with the disputed domain name. On May 9 and 10, 2011, BigRock Solutions Pvt Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on May 13, 2011. The Center verified that the Amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2011. The Response was filed with the Center on June 1, 2011.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 7, 2011. 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
The Complainant operates a business which provides a broad range of healthcare services, including primary healthcare, preventive care and urgent care services to patients in the United States of America. The Complaint operates over 31 medical centers in Virginia and Maryland, Unites States of America, and has announced the opening of 10 more centers, including an expansion into the State of Pennsylvania. The Complainant also provides patient referral services to doctors, specialist physicians, hospitals and other types of medical centers and services. All of the aforesaid services are offered under the trademark PATIENT FIRST.
The Complainant owns a United States of America trademark registration for the mark PATIENT FIRST (Registration No. 1460408, registered on October 6, 1987). The Complaint began using the PATIENT FIRST trademark in November, 1986, and has extensively used and promoted the PATIENT FIRST trademark since that time. The Complainant spent over USD 2,300,000 on advertisements and business development of the PATIENT FIRST trademark in the 2010 year. Since 2005, the Complainant has spent over US D8 million on advertising and promotion of its PATIENT FIRST trademark.
The Respondents purchased the domain name on July 21, 2010 from G through on-line bidding. The Respondents paid USD 3,305.00 for the disputed domain name.
The disputed domain name currently reverts to a website which purports to provide a social networking service which rates physicians who join the service and allows internet users to search for physicians and make appointments. 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar
The Complainant owns the trademark PATIENT FIRST, registered in the United States of America under Registration No. 1460408, and registered on October 6, 1987. The Respondents have registered the domain name which includes the two dominant elements of the Complainant’s trademark, namely the words “patient first”. The Complainant submits that the addition of the descriptive word “join” does not distinguish the domain name from the Complainant’s registered trademark. Furthermore, the pluralizing of the word “patient” by the addition of the letter “s” does not distinguish the domain name from the Complainant’s registered trademark. Accordingly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trademark PATIENT FIRST.
Rights or Legitimate Interests
The Complainant submits that the Respondents cannot have any rights or legitimate interests in the disputed domain name, because the Complainant has exclusive rights to the trademark PATIENT FIRST and the Respondents have no business relationship with the Complainant. The Respondents were never licensed or otherwise authorized to use the Complainant’s trademark. Further, the Respondents are not making a bona fide use of the disputed domain name. The disputed domain name currently reverts to a website that purports to provide a social networking service to Internet users seeking to find a physician. The Complainant submits after attempting to use the Respondents’ services, no substantive content was found. The Complainant contends that the website is a sham and not a legitimate business. The Complainant submits that the Respondents are falsely gathering personal information about Internet users, potentially for monetary gain, which is not making a bona fide use of the disputed domain name. Registered and Used in Bad Faith
The Complainant contends that the Respondents have registered and are using the disputed domain name in bad faith for the following reasons: (i) the Respondents were aware of the Complainant’s rights in the registered trademark PATIENT FIRST based on significant reputation of the PATIENT FIRST trademark and medical centers in the United States of America; (ii) the Respondents are using the confusingly similar domain name to disrupt the Complainant’s business by luring Internet users seeking the Complainant’s website to the Respondents’ website; (iii) the Respondents registered the confusingly similar domain name to operate a website that purports to offer physician referral services, but does not actually provide those services; (iv) the Respondents have changed Registrars in attempt to hide their identity and to avoid UDRP challenges; and (v) the Respondent Kumar has been named as a respondent in other UDRP proceedings and has in those proceedings had domain names transferred to registered trademark owners, thereby establishing a pattern of cybersquatting. B. Respondents
The Respondents submit that they purchased the disputed domain name through Godaddy Auctions, and obtained the domain name through legitimate means. The Respondents contend that the domain name was not the subject of any complaint proceedings, and that Godaddy represented that no claim for copyright or trademark violation had been made.
The Respondents claim that they are the largest database for physicians in the United States of America. They purchased the domain name because it was a perfect fit for their website and business.
The Respondents contend that there are many domain names that contain the words or variations of the word “patient first”.
The Respondents submit that they have registered the business name Join Patient First as an Individual Sole Proprietorship Company as per the laws of India, they have a bank account with ICICI Bank, applied for a Payment Gateway with EBS Services, and have invested USD100,000 in programming for social network services. The Respondents submit that they currently have no business model, but they plan to monetize the website when traffic to the website increases. The Respondents claim that the registration of the domain name and the business is one of “Noblest Cause” (providing a social network for patients looking for information about physicians in the U.S.) and that they did not register the disputed domain name in bad faith.
The Respondents also submit that their business is different than the Complainant’s and that they have not attempted to take advantage of the Complainant’s business, trademark and reputation. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have trademark rights in the mark PATIENT FIRST by virtue of United States of America Trademark Registration No. 1460408 registered on October 6, 1987.
The Panel further finds that the domain name is confusingly similar to the Complainant’s registered trademark PATIENT FIRST, except for the addition of the generic, descriptive word “JOIN” and the pluralizing of the word “patient” through the addition of the letter “s”. The Panel notes that the dominant elements of the Complainant’s trademark and the disputed domain name are the words “PATIENT” and “FIRST”. The Panel finds that the addition of the word “join” and the letter “s” do not serve to distinguish the domain name from the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel finds no evidence that the Respondents were commonly known by the Complainant’s trademark PATIENT FIRST, or that the Respondents were ever authorized or licensed to use the Complainant’s registered trademark.
The Respondents in their submissions did not claim to be unaware of the Complainant’s rights. In fact, the Respondents’ only contention was that no UDRP complaint had been filed against the domain name when they decided to purchase it from G. The Panel finds that the Respondents’ failure to state that they were not aware of the Complainant’s rights is a telling omission, and the Panel is prepared to find that the Respondents were most likely aware of the Complainant’s rights.
The Respondents claim that there are many other domain names that contain the words “patient first” or variations when a Google search is conducted. The Panel notes that the evidence in this regard is weak, as the search results actually include the Complainant’s websites and other non-probative references. One of those references is to a website operated in 2010 by Americans for Prosperity, the predecessor-in-title for the disputed domain name. In fact, Complainant clearly establishes that this prior use of the disputed domain name was wrongful, and was terminated after objection by Complainant’s counsel. In the circumstances, the Panel finds that the existence of a few other domain names that contain the words “patient first” or a similar variation is not sufficient to substantiate the Respondents’ claim for legitimate rights or interests.
The Respondents claim that they have invested over 10,000 hours of programming and over USD100,000 in programming fees to prepare their website for operation. However, the Panel notes that at the time the Complaint was filed, the website was in fact active. The evidence filed in the affidavit of Mr. J. Farmer shows that it is possible to access the website, seeking physician referral information, but that no actual services are available. Respondents’ website has the appearance of an operating website, but this appearance is more of a sham than a reality.
Accordingly, the Panel is prepared to find that the Respondents have not registered and are not using the disputed domain name in association with a bona fide offering of goods and/or services.
The Complainant has therefore satisfied the requirements under paragraph 4(b) of the Policy. C. Registered and Used in Bad Faith
The Panel, upon review of the evidence filed in the Complaint and the Response, finds that the Respondents registered and have used the disputed domain name in bad faith.
The Panel finds that the Respondents were most likely aware of the Complainant’s trademark rights when they registered a confusingly similar domain name. The Panel finds that the failure of the Respondents to deny that they were aware of the Complainant’s registered trademark, together with the use of the disputed domain name in association with a website which purports to offer physician referral services, which are in direct competition to the Complainant’s services, to be compelling evidence of bad faith.
The Panel also notes that the Respondents’ website prominently uses the title “PATIENTS FIRST: USA #1 Social Network Connecting Patients and Doctors” as a header on its web pages, and this same heading appears in Google search results. These examples of actual use of Complainant’s trademark as registered (without the prefix “join”) tend to confirm an intention on the part of the Respondents to trade on the reputation of Complainant in its registered mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(c) 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.
Christopher J. Pibus
Sole Panelist
Date: June 21, 2011
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