Complainant is Allergy Partners, P.A. of Asheville, North Carolina, United States of America ("United States"), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
Respondent is ENT and Allergy Specialists of Warminster, Pennsylvania, United States, represented by Lori Broker, United States. 2. The Domain Names and Registrar
The disputed domain names and (the "Domain Names") are registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2017. On October 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 25, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2017. On November 28, 2017, Respondent filed a request for a 45-day extension to file a Response. On December 4, 2017, Complainant sent an email communication to the Center objecting to Respondent's request for extension to file a Response. On December 5, 2017, in accordance with paragraph 5(b) of the Rules, the Center extended the Response due date to December 9, 2017. On December 7 and December 8, 2017, Respondent sent email communications to the Center. The Response was filed with the Center on December 10, 2017. On December 14 and December 15, 2017, Respondent sent further email communications to the Center.
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 28, 2017. 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.
On January 22, 2018, the Panel issued Procedural Order No. 1, which stated:
"The Panel has reviewed the submissions from the Parties in this case. The Panel notes that the Complainant's trademarks have been registered in 2016 claiming first use in 1994, while the disputed domain name registration dates back to 2011. Pursuant to paragraphs 10 and 12 of the UDRP Rules, the Panel issues the following order:
- The Panel requests that the Complainant provide evidence in support of his claim that "since 1994, Allergy Partners has substantially, exclusively and continuously, used the mark ALLERGY PARTNERS to identify itself and the services it offers to the public throughout the United States."
- Specifically, the Complainant should submit documentation evidencing that the ALLERGY PARTNERS mark enjoyed acquired distinctiveness through use at the time the disputed domain name was registered. In particular, such submissions should focus on Pennsylvania and in particular the Philadelphia area where the Respondent is based.
The Complainant should submit the above-requested evidence and comments by the end of February 1, 2018.
The Respondent should submit its response to the Complainant's comments by the end of February 11, 2018.
The Parties' further submissions should be limited to the above request."
On February 1, 2018, Complainant submitted a response to Procedural Order No. 1, including a sworn declaration by its president and chief executive officer (the "Brown Declaration") and hundreds of pages of exhibits to the Brown Declaration. Respondent did not respond to Complainant's response to Procedural Order No. 1. Respondent sent an email on February 16, 2018, simply stating that he had understood that there had been activity in this case and that he had not been informed of that in hard copy. 4. Factual Background
Complainant describes itself as "the [United States'] largest single specialty (allergy, asthma, and immunology) practice with multiple locations across the United States." As respects the history of Complainant, it is alleged:
"Originally founded in 1977 by Dr. Spencer Atwater, Allergy Partners' first office was located in Asheville, North Carolina under the name, J. Spencer Atwater, Jr., M.D., P.A. Dr. David A. Brown joined the practice in 1987 and helped expand the practice across North Carolina and into Spartanburg, South Carolina. In 1994, Drs. Atwater and Brown formulated an aggressive growth strategy and changed the name of the practice to Allergy Partners, P.A. Since that time, Allergy Partners has grown to be the nation's largest single-specialty practice in allergy, asthma and immunology, with a network of 57 practices with over 126 office locations spanning across 23 states. […] Importantly, Allergy Partners has two locations in Pennsylvania, which is the state in which the Respondent resides, as well as, offices in Arizona, California, Colorado, Florida, Georgia, Illinois, Indiana, Iowa, Kentucky, Maryland, Missouri, Nevada, New Jersey, New Mexico, North Carolina, Ohio, Oklahoma, South Carolina, Tennessee, Texas, Virginia, and Wyoming. Within the state of Pennsylvania Complaint's offices are currently located[in Bethlehem and Lewisburg]."
According to the Brown Declaration and exhibits thereto, Complainant's business had a gross income of USD 304 million between 2005 and 2011. Complainant's Lewisburg, Pennsylvania office (located roughly 150 miles from Respondent's business) was opened in 2005, and gross income from that office between 2005 and 2011 was roughly USD 4.6 million. Overall, Complainant spent just under USD 2 million in advertising between 2006 and 2011.
Complainant holds two registrations with the United States Patent and Trademark Office ("USPTO") for the mark ALLERGY PARTNERS (one word mark and one stylized). Both marks were registered on May 10, 2016, and the word mark indicates a date of first use in commerce of February 1994. (The stylized mark has a first use in commerce date of October 2010.) Complainant also owns and uses the domain name in connection with its business. This domain name was registered by Complainant in April 1998 and has been used as a website to advertise Complainant's business since then.
According to the Brown Declaration and its exhibits, Complainant's principals had served on several prominent professional boards prior to Respondent's registration of the Domain Names in 2011. The Brown Declaration also asserts that Complainant's physicians are active participants at conferences within the profession.
The Domain Names were registered on February 28, 2011. The Domain Names appear to have resolved to parking pages for years, never having been used to host a full-blown website. The websites state that they are "under construction – coming soon."
Respondent describes itself as "a medical practice founded in 1999 with offices located in the Philadelphia [Pennsylvania] suburbs. It is alleged in the Response, and supported with an affidavit by Respondent's principal:
"[Respondent's] founder, Dr. Brian Broker and his partners, Drs. Lawrence Cramer and Paul Swanson, specialize in otolaryngology (aka 'ear, nose and throat' or 'ENT' doctors). Otolaryngologists routinely treat allergies as well as other afflictions of the head and neck, including sinus and nasal passages.
In or about 2009-2010, in response to a growing population of allergy sufferers in the Philadelphia corridor […], Drs. Broker and Cramer conceived to grow the allergy treatment aspect of their practices to meet the exploding demand for allergy relief among their patient base. In anticipation of this expansion Drs. Broker and Cramer registered the [Domain Names]."
Respondent asserts that it has not developed websites for the Domain Names, essentially because the Respondent doctors have been too busy with their medical practice.
Complainant's counsel sent a cease-and-desist letter to Respondent on August 4, 2017 in connection with the Domain Names. Complainant's counsel followed up with a chaser on September 6, 2017. Having received no response to either missive, Complainant filed the Complaint in this proceeding. 5. Parties' Contentions A. Complainant
Complainant asserts that it has established all three elements required under the Policy for a transfer of the Domain Names. Among other things, Complainant asserts that its ALLERGY PARTNERS marks are "well-known." According to Complainant, it "has established significant fame and goodwill in its ALLERGY PARTNERS trademarks." Complainant avers that this fact has been "upheld" in another recent decision under the Policy, namely, Allergy Partners, P.A. v. Ekaterina Zaitseva,WIPO Case No. D2017-1380 (the "Zaitseva Case"). B. Respondent
Respondent denies that it or any of its principals had ever heard of Complainant at the time Respondent registered the Domain Names in February 2011. At that time, Respondent notes, Complainant had no registered trademark for ALLERGY PARTNERS.
Respondent raises a number of other arguments, some of which are wrongheaded and in any event are not necessary to a resolution of this case. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark ALLERGY PARTNERS through registration and use. The Domain Names are self-evidently identical to Complainant's mark.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
With respect to each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. The Panel reaches this conclusion for three main reasons. First, Respondent's name is not "Allergy Partners" – it is "ENT and Allergy Specialists." Second, Respondent's business is essentially the same as Complainant's, which undermines Respondent's claim that it has never heard of Complainant at the time it registered the Domain Names. Third, Respondent has never sought to build a website accessible via the Domain Names. As such, none of the bases set forth above for establishing rights or legitimate interests in the Domain Names appears to have been met here, and no other possible bases of legitimacy have been suggested by Respondent.
Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
Based on the record and on a balance of probabilities, the Panel concludes that the Domain Names were registered and are being used in bad faith. In addition to the points raised above in the "legitimate interest" discussion, the Panel also notes here that Complainant appears to have been a major provider of allergy-related medical services around the United States at the time the Domain Names were registered in 2011. It seems unlikely that Respondent, engaged in the same specialized medical field, was unaware of Complainant in 2011, notwithstanding its denial of such awareness.
In further aid of this conclusion, the Panel also observes that the Domain Names have the generic Top-Level Domains ("gTLDs") ".net" and ".org". While these gTLDs are certainly viable, they are almost never as sought after as the ".com" gTLD. One is led to wonder what Respondent thought back in 2011 when it registered these Domain Names. It would be ordinary practice and common sense first to seek out the ".com" version. Respondent did not explain why it (apparently) went straight to the ".net" and ".org" alternatives. Although mere knowledge that the ".com" version of a desired domain name has already been registered does not automatically and in all instances lead to the conclusion that the registrant of a ".net" domain name is duty-bound to investigate why the ".com" version is not available, common sense must inform such circumstances. Here, a group of doctors specializing in allergy treatment very likely noticed that the ".com" version of a domain name featuring the term "Allergy Partners" was already registered. Even a quick investigation would have disclosed that an actual entity called Allergy Partners, P.A. was the owner of that domain name. An equally quick visit to the website at "www." would have made it clear that this entity called Allergy Partners, P.A. was an enterprise of doctors practicing in the same field as Respondent.
Although this case is not necessarily a slam dunk, the Panel finds on this record and on a balance of probabilities (informed in part by inference and resort to common sense) that Respondent had Complainant's ALLERGY PARTNERS mark in mind when registering the Domain Names. The Panel also finds it more likely than not that Respondent's intent was to disrupt the business of a competitor, in violation of the above-quoted Policy paragraph 4(b)(iii).
Complainant has established Policy paragraph 4(a)(iii). 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 Domain Names and be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: February 18, 2018
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