Complainant is Pick Enterprises, Inc. of Yarmouth, Maine, United States of America (the “United States”), represented by the law firm Bernstein Shur, United States.
Respondent is Domains by Proxy, LLC, DomainsByP of Scottsdale, Arizona, United States / Woman to Woman Healthcare of Norton, Massachusetts, United States / Just Us Women Health Center f/k/a Woman to Woman Health Center of North Attleboro, Massachusetts, United States, internally represented. 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 August 1, 2012. On August 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2012, the Registrar 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. The Center sent an email communication to Complainant on August 6, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 7, 2012.
The Center verified that the amended Complaint1 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 Respondent of the Complaint, and the proceedings commenced on August 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2012. The Response was filed with the Center on August 23, 2012.
The Center appointed Richard G. Lyon as the sole panelist in this matter on September 18, 2012. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 provides health care services to women under the name “Women to Women”. It appears from Complainant’s principal website (though not from the Complaint) that its business involves a wellness program undertaken by its customers, women located throughout the United States, from their homes, using a program devised and tested by Complainant and assisted by personal contact when appropriate. Complainant holds six trademarks registered on the Principal Register of the United States Patent and Trademark Office (USPTO) that include as their dominant feature WOMEN TO WOMEN: one registered in 1997, one in 2001, one in May 2009, two in February 2010, and one in September 2010. The earliest of these has a first use in commerce of 1984. Complainant operates a clinic in Yarmouth, Maine, United States.
Respondent operates a clinic in North Attleboro, Massachusetts, United States, offering certain specified medical services to women. Respondent was founded in 2011 under the name “Woman to Woman Health Center” by two female nurse practitioners who have been duly certified by the Commonwealth of Massachusetts as Women’s Healthcare Nurse Practitioners.
In late 2011 Complainant’s counsel sent Respondent a demand letter, asserting Complainant’s “superior rights” in WOMEN TO WOMEN and notifying Respondent that Complainant intended to contact Respondent about its intellectual property. Following correspondence between counsel for the parties, Respondent agreed to change its business name to Just Us Women Health Center, which Respondent proceeded to do. Other aspects of the settlement discussions are discussed in Section 6-B below. Both parties agree that during their discussions Complainant requested transfer to it of the disputed domain name and that Respondent refused to do so.
When the Panel accessed the disputed domain name he was automatically redirected to and viewed a page describing Respondent’s clinic and its services. 5. Parties’ Contentions
As the Panel resolves this case based only upon the Complaint, only Complainant’s contentions are set out in this Decision. Certain factual matters and evidence provided in the Response are noted in Section 6-B.
Complainant contends as follows:
1. Complainant holds incontestable rights in WOMEN TO WOMEN by reason of its USPTO-registered trademarks. The disputed domain name is confusingly similar to these marks, incorporating as its dominant feature the singular form of the marks.
2. Respondent is not now known as WOMAN TO WOMAN and, because of Complainant’s earlier trademarks, had no right to be known by that name prior to its name change. “Accordingly, it appears that Respondents are intentionally attempting to attract internet users to its site by creating a likelihood of confusion with the Complainant’s trademark as to affiliation and source”.
3. As to registration and use in bad faith, the Panel quotes Complainant’s contentions in full:
“As discussed in VI.B. above, Respondents had both constructive and actual knowledge of the Complainant and its trademark rights, and it selected a confusingly similar, nearly identical domain name to market its directly competitive services. These activities demonstrate Respondents’ bad faith in registering and using the domain.
Upon Complainant’s information and belief, Respondents intentionally attempted to attract internet users to its site by creating a likelihood of confusion with the Complainant’s WOMEN TO WOMEN® trademark as to the source, sponsorship, affiliation, or endorsement of its website and the services advertised therein. Respondents’ attempts to use the goodwill and reputation associated with Complainant’s trademark for its own commercial benefit demonstrates bad faith on the part of Respondents. This bad faith is highlighted by its continued and unnecessary use of the domain name after implementation of a new business name that is dissimilar to the disputed domain name.” 6. Discussion and Findings
As provided in paragraph 4(a) of the Policy, to earn a transfer of the disputed domain name Complainant must establish, by a preponderance of the evidence, each of the following:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In this proceeding the Panel looks no further than the Complaint to determine that Complainant has not proven that Respondent registered the disputed domain name in bad faith. A. Registered in Bad Faith
Panels in UDRP proceedings have generally declined to adopt the United States doctrine of constructive notice to the bad faith requirement. Absent other indicia of cybersquatting or special circumstances not present in this case, a complainant must normally show that the domain name registrant was actually aware of the complainant and its mark and selected the domain name to take some advantage of the mark and any good will attached to it. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.4, and cases there cited. As with any other Policy element, actual knowledge and targeting must be proven with competent evidence.
Complainant provides no evidence of any kind that Respondent knew of Complainant or its mark when Respondent registered the disputed domain name in October 2010. The only basis cited in the Complaint besides the legal notion of constructive notice is a reference to Complainant’s demand letter in December 2011, fourteen months after registration of the disputed domain name. While Complainant (as complainants in these cases are wont to do) duly pleads that its mark is “well-known”, it provides no evidence to back up its conclusionary assertion of Respondent’s actual knowledge. In fact Complainant’s mark consists of an everyday phrase that has obvious descriptive qualities – a relatively weak mark for purposes of establishing Respondent’s knowledge of it prior to registration of the disputed domain name.
There is likewise no evidence, even of facts that if found true by the Panel might allow an inference of bad faith, to support the information-and-belief legal conclusion, quoted above, that Respondent selected the disputed domain name expressly to target Complainant, or otherwise to allow the Panel to infer that Respondents in fact had actual notice. The only evidence provided by Complainant is a screen shot of Respondent’s website, which makes no reference to Complainant and describes a purely local business2 whose services are reasonably accurately described by its registered business name.3
The Complaint fails for lack of evidence under paragraph 4(a)(iii). B. Reverse Domain Name Hijacking.
Panel’s Initiative in Considering Reverse Domain Name Hijacking. On his own initiative the Panel considers whether Complainant has engaged in Reverse Domain Name Hijacking (RDNH). This Panel firmly believes a UDRP panel may make this inquiry in an appropriate case even if not so requested by the respondent, and indeed should do so fully to discharge its obligations under the Rules, see Goway Travel Limited v. Tourism Australia,WIPO Case No. D2006-0344 (citation omitted) (“The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use ‘the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.’“), and to preserve the integrity of the UDRP process, see Credit Europe Bank N. V. v. Peter Yu,WIPO Case No. D2010-0737 (concurring opinion); Bittorrent Marketing GmbH v. Adlntensity Ltd, Adam Smith,WIPO Case No. D2007-1033 (opinion dissenting from denial of RDNH).
Factual Background. To understand the Panel’s discussion of RDNH it is necessary to furnish the pertinent details of the parties’ discussions regarding Respondent’s change of business name. The following is taken from the Response and annexes submitted with the Response, all consisting of email or written communications between counsel for the parties.4 Neither party submitted an agreed settlement agreement and the correspondence indicates that the parties had not yet agreed all terms of a settlement.
In mid-March 2012 Respondent’s counsel advised Complainant’s counsel that its client would change its name and that “for a one year period [after the name change] it will link [the disputed domain name] to its new web address, so its patients can access the correct site.” Complainant’s counsel replied by demanding a transfer of the disputed domain name “within 5 business days.” Email discussions continued through late June, with the parties remaining unable to agree on a domain name transfer; according to the record at no time did Respondent agree to transfer the disputed domain name. Worthy of note is Complainant’s counsel’s threat to institute a Policy proceeding to recover the disputed domain name and Respondent’s counsel’s succinct (and prescient) reply: “Your client [Complainant] won’t prevail on a UDRP claim.”
RDNH Standard. “Paragraph 15(e) of the UDRP Rules provides that, if ‘after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding’. Reverse Domain Name Hijacking is defined under the UDRP Rules as ‘using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name’. . . WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP.” WIPO Overview 2.0, paragraph 4.17.
Ordinarily if the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH. See, for example, Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011; Liquid Nutrition Inc. v. /Vertical Axis Inc.,WIPO Case No. D2007-1598. However a finding of RDNH is always within the Panel’s discretion, see Rudy Rojas v. Gary Davis,WIPO Case No. D2004-1081 (facts justified RDNH but panel determined “to leave the parties as it found them”).
Application to this Case. In his concurring opinion in Credit Europe, cited above, this Panel stated: ““[t]he Policy has been in force for more than a decade and the thousands of cases decided under it now constitute a workable body of (to use a legal term) precedent. In my opinion any complainant, and even more so any professional representative of a complainant, should be at least minimally versed in the Policy, the Rules, their scope, and their limits. It is no excuse that a party or its representative is unfamiliar with clear Policy precedent, much less the clear language of the Policy and the Rules themselves.” In this case Complainant or its representative has simply ignored three longstanding Policy precedents, two of which are recorded as Consensus Views in the WIPO Overview 2.0 and the other of which in this Panel’s opinion approaches that status.
The most serious such issue is the requirement that allegations in a complaint must be proven, not merely stated; “paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.” WIPO Overview 2.0, paragraph 4.6, Consensus View; see also Policy, paragraph 4(a) (“[i]n the administrative proceeding, the complainant must prove that each of these three elements are present”) and Rules, paragraph 3(b)(xv). Here there is no proof at all of registration in bad faith, and almost no proof of use in bad faith.5
While “Panels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP” (Id., paragraph 3.4) is not designated a Consensus View it is at the very least a default rule, variation from which requires explication, supported by evidence, from one who pleads it. Notwithstanding its certification in the Complaint, required by paragraph 3(b)(xiv) of the Rules, that “that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument,” Complainant offers the Panel no reason why in this proceeding the Panel should depart from or modify Policy precedent.
The fact that Complainant is represented by counsel makes the filing of this Complaint all the more inexcusable. The matters identified in the preceding paragraph are not Policy arcana; each is a precedent of long standing and derived from scores of cases, and each addresses a fundamental Policy requirement. Rule 11(b) of the Federal Rules of Civil Procedure, echoed in paragraph 3(b)(xiv) of the UDRP Rules, provides:
“(b) Representations to the Court. By presenting to the court a pleading, written motion, or other paper—whether by signing, filing, submitting, or later advocating it—an attorney or unrepresented party certifies that to the best of the person’s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances:
(1) it is not being presented for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of litigation;
(2) the claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law;
(3) the factual contentions have evidentiary support or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery.”
Maine has a similar provision, see Rule 11(a) of The Maine Rules of Civil Procedure. In this Panel’s opinion in a Policy proceeding paragraph 3(b)(xiv) of the Rules demands no less of an undertaking and no less pre-filing diligence. Honoring any of these undertakings requires at a minimum “an inquiry reasonable in the circumstances” which, as I have stated, includes being or becoming “at least minimally versed” in the relevant precedent and procedure. Complainant’s representative has not met that minimal standard in this case.
The settlement discussions bear on RDNH for two reasons. First, the attorney who signed the Complaint was the same person who was representing Complainant in the discussions, and so was fully aware of the factual background that preceded the filing of the Complaint. There is nothing in the Response that Complainant’s representative was not aware of before making his Rules paragraph 3(b)(xiv) certification; there can be no excuse based upon information solely within the control of Respondent.6 Second, given the circumstances of this case, especially the dearth of evidence supporting the Complaint, it is difficult to avoid an inference that the Complaint was filed at least in part not to obtain the disputed domain name but rather to increase negotiating leverage in the settlement discussions, “a highly improper purpose.” Wall-S, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC,WIPO Case No. D2012-1193.
Regardless of actual intent, Respondent has been put to time and expense to address a Complaint that the Panel finds objectively groundless, one as to which this Panel believes “the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP.”
These circumstances justify a finding of RDNH in this case, which the Panel accordingly makes. 7. Decision
For the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Dated: September 22, 2012
1 The amended Complaint substituted the name of the domain name holder in place of the proxy service used by Respondent. All references in this Decision to the “Complaint” are to the amended Complaint.
2 While Respondent’s clinic is less than 200 miles from Complainant’s, Complainant does not provide evidence to support direct competition between the two clinics.
3 Respondent asserts that it selected its business name in part because “Woman to Woman” was available both as a business name in the Commonwealth of Massachusetts and as a “.com” domain name.
4 Complainant submitted only its December 12, 2011 demand letter.
5 Registration and use in bad faith must be separately proven (WIPO Overview 2.0, paragraph 3.1, Consensus View).
6 Compare Wall-S, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC,WIPO Case No. D2012-1193, cited later in the text above, in which the complainant only learned of certain matters from the response.
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