The Complainant is Kathleen M. Casacci DDS, P.C of New York, United States of America, represented by The Intellectual Property Group, PLLC, United States of America.
The Respondent is Kacalski and Hannon DDS of New York, United States of America, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2012. On December 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 January 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2013. The Response was filed with the Center on January 23, 2013.
The Center appointed William R. Towns as the sole panelist in this matter on February 4, 2013. 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 and the Respondent each operate general dentistry practices in the Buffalo-Niagra, New York area. Wheatfield is a town located within this region. The Complainant has been doing business under the assumed name, Wheatfield Family Dentistry, registered under New York state law, since 1994. The Complainant also asserts common law trademark rights in Wheatfield Family Dentistry based on continuous and substantially exclusive use since 1994. The Complainant registered WHEATFIELD FAMILY DENTISTRY as a service mark with the State of New York on April 20, 2010.
The Respondent maintains a general dentistry practice located in the town of Wheatfield, New York doing business as Kacalski and Hannon DDS. The record reflects that the Respondent incorporated as a professional limited liability company under New York law in November 2009. The disputed domain name was created on or about April 20, 2010. The Respondent uses the disputed domain name to redirect Internet users to its business website at “’’. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical to its WHEATFIELD FAMILY DENTISTRY service mark. According to the Complainant, it began using this designation as a mark in 1994 concurrent with the state registration of the corresponding assumed business name. The Complainant submits that under New York law the registration of an assumed business name is statutorily required, and the use by others of a confusingly similar name is strictly prohibited by statute. While acknowledging that an assumed name is not a trademark per se, the Complainant maintains an assumed name, when also used exclusively in connection with the sale of goods or services functions as a trademark, and is entitled to common law protection as such.
The Complainant submits that Wheatfield Family Dentistry as a result of continuous and exclusive use since 1994 has acquired secondary meaning and serves as a distinctive identifier of the Complainant’s services. The Complainant has submitted a sworn declaration accompanied by documentation reflecting extensive advertising and marketing of the mark and name on radio, in telephone directories, regional publications, sports arenas, business-to-business communications, patient communications, specialty advertising and signage. According to the Complainant, overall expenditures in excess of USD 200,000 have been incurred in connection with such advertising and marketing since 1994 targeted primarily to the Buffalo-Niagra, New York area. In addition, the Complainant notes that the Wheatfield Family Dentistry name and mark is prominently displayed on its business website at “’’.
The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent has not been commonly known by the disputed domain name and has not acquired trademark rights in the name. The Complainant submits that the Respondent is a dental partnership operating under the name Kacalski and Hannon DDS, and advertises and offers its services only under that name. The Complainant contends that if the Respondent were to actually offer any services under the disputed domain name the Respondent would be in violation of New York laws respecting the use of the assumed names of others. Thus, the Complainant concludes the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant alleges that the Respondent’s sole purpose in registering and using the disputed domain name is to benefit impermissibly from the goodwill developed by the Complainant in its name and mark. Specifically, the Complainant asserts that the Respondent intentionally is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the website and the services offered thereon. Accordingly, the Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent submitted a brief email response, stating that the disputed domain name was registered in 2010 on its behalf by a website service provider, based on availability. According to the Respondent, many variations of this name were available for registration as domain names and had been for some time (“since the dawn of time”). The Respondent maintains it does not advertise on its website, which is “purely for those who search using the web”. The Respondent further questions whether every domain name that includes “wheatfield”, “dentist” and “family” belongs to the Complainant “just because they use those words in their business description”. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that for purposes of paragraph 4(a)(i) of the Policy the disputed domain name is identical to the Complainant’s WHEATFIELD FAMILY DENTISTRY mark, in which the Complainant has established common law rights through continuous and substantially exclusive use in connection with the Complainant’s services since 1994. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218. In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). Although the Complainant’s mark is of a descriptive nature with respect to such services, the Panel is persuaded from the record that the Complainant has demonstrated secondary meaning – in other words, use sufficient that a relevant section of the purchasing public has come to recognize WHEATFIELD FAMILY DENTISTRY as distinctive identifier of the Complainant’s services.
The Panel, in considering the question of identity or confusing similarity, observes that the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this instance, disregarding the “.com” TLD, the disputed domain name is identical to the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The Complainant and the Respondent are direct competitors. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s mark. The Respondent notwithstanding has registered the disputed domain name, which is identical to the Complainant’s mark, and which the Respondent is using to redirect Internet users to the Respondent’s commercial website.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds no indication in the record that the Respondent has been commonly known by the disputed domain name. Indeed, the Respondent makes no such claim. Since the Respondent uses the disputed domain name only to redirect Internet users to the Respondent’s commercial website, neither can the Respondent claim to be making a noncommercial use of the disputed domain name. The Respondent makes no such claim. The Respondent does seem to allege that a descriptive use of the disputed domain name is being made, although the Respondent denies using its website for advertising. On this issue, the Panel recognizes that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant, at least in circumstances indicating that the respondent was not aware of the complainant’s trademark rights. See, e.g., National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424.
In this instance, however, the Respondent, when entering into direct competition with the Complainant, registered a domain name identical to the Complainant’s mark, which the Complainant by that time had used in commerce for more than 15 years. The disputed domain name by the Respondent’s own admission was selected notwithstanding many other variations that were available, and the Respondent has used the disputed domain name specifically and exclusively to redirect Internet users to the Respondent’s website. The Panel simply is not persuaded from the record before it that the Respondent registered the disputed domain name based on a good faith belief that its value lay in its attraction as a descriptive term. To the contrary, the record in the Panel’s view reflects that the Respondent more likely than not targeted the Complainant’s mark, and appropriated the Complainant’s mark for use as a domain name in order to divert Internet users to the Respondent’s website through the creation of initial interest confusion. See Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062.
Having in mind the foregoing, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló CorporaciónEmpresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946; E v. Ult. Search, Inc.,WIPO Case No. D2001-1319. Nor, in the Panel’s view, can it be said from the record in this case that the Respondent otherwise is making any fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers for purposes of paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel is persuaded from the record that the Respondent was aware of the Complainant and the Complainant’s mark when registering the disputed domain name. The Panel concludes that the Respondent most likely registered and has used the disputed domain name with the intent to exploit and profit from the goodwill associated with the Complainant’s mark through the diversion of Internet users seeking the Complainant’s services. The Panel accordingly concludes that the Respondent registered and has used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: February 19, 2013
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
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