Complainant is LifePoint Health, Inc. of Brentwood, Tennessee, United States of America (“United States”), represented by Waller Lansden Dortch & Davis, LLP, United States.
Respondent is Life PT Medical, Inc., Lexie Morgan Luckner of Highlands Ranch, Colorado, United States / Gary Luckner, Cory of Highlands Ranch, Colorado, United States. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2017. On October 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 27, 2017, the Registrar transmitted by email to the Center its verification 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 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2017. Respondent submitted informal email communications on November 29, 2017 and December 5, 2017. Complainant submitted an unsolicited supplemental filing on December 8, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 13, 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. 4. Factual Background
According to Complainant, it has provided hospital management and healthcare services in the United States since 1999 under the marks LIFEPOINT, LIFEPOINT HOSPITALS, and LIFEPOINT HEALTH. Complainant alleges that it operates at least 72 hospital campuses, 40 post-acute facilities, and 30 outpatient centers in 22 states. Complainant maintains relationships with more than 6,300 physicians.
Complainant has annexed to the Complaint several registered trademarks, including the mark LIFEPOINT registered with the United States Patent and Trademark Office of June 15, 2010 under Reg. No. 3,802,200, for “management of hospitals and other healthcare provider institutions” with a first use in commerce date of May 11, 1999.
Complainant originally maintained a website at the domain name from 1999 onward, but since 2015 its main website has been located at .
The Domain Names were registered on March 9, 2017. The Domain Names resolved to websites apparently offering various medical devices. On January 17, 2017, Respondent filed Articles of Incorporation with the State of Colorado Secretary of State for the corporation Life Point Medical, Inc.
Complainant sent Respondent a cease-and-desist letter on August 31, 2017, and a second letter on September 11, 2017. Evidently, there had been some telephonic discussion between the parties between the two letters, as the second letter refers to such discussions. It appears that Respondent’s representative had told Complainant that Respondent that “Life PT Medical” could mean “Life Pulmonary Therapy Medical.” In its second letter (September 11, 2017), Complainant told Respondent that it could retain the Domain Name provided that Respondent abided by certain conditions, including: (1) changing its name with the Colorado Secretary of State to remove any reference to “Life Point”; (2) transferring to Complainant the Domain Name ; and (3) agreeing not to use the term or mark “Life Point” in any manner.
Respondent did not countersign the terms laid out in Complainant’s September 11, 2017 letter. On October 10, 2017, Respondent changed its name with the Colorado Secretary of State to Life PT Medical, Inc. Respondent also slightly modified the content of its website at the Domain Name , but continued to use the LIFEPOINT mark on the website. With respect to the Domain Name , Respondent removed the infringing content from the site, but did not transfer that Domain Name to Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. According to Complainant, Respondent registered both Domain Names on the same day in order to trade off of the goodwill associated with Complainant’s trademarks in the healthcare and medical field. Complainant asserts that “PT” is a common abbreviation for the word “point.” B. Respondent
Respondent did not file a formal Response to the Complaint, but on November 29, 2017 and December 5, 2017 sent the Center the following email:
“I'm not an attorney and I have to defend myself from a large company that wants my url. We did everything that was asked of us to stop using and changed to . Our P.T. stands for Pulmonary Therapy and they say that P.T. is the abbreviation for Point. I'm not sure how that works.
There are other companies that use P.T. as well. For expample: AbsolutePT is a company that does physical therapy. I don't want to come in one day to see that they put our company out of business.
What is my next step?” 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 LIFEPOINT through registration and use. The Panel further concludes that both Domain Names are confusingly similar to the LIFEPOINT mark. The Domain Name incorporates Complainant’s mark in its entirety and adds the descriptive term “medical,” a word closely associated with the healthcare-related services offered by Complainant.
The Domain Name is also confusingly similar to Complainant’s LIFEPOINT trademark. The Panel agrees with Complainant that the letters “pt” constitute a common abbreviation of the word “point”, one of the two components of the mark LIFEPOINT. The confusing similarity is reinforced by the fact that the characters “lifept” are followed with the descriptive term “medical”. The aural and visual similarity between the LIFEPOINT mark and the Domain Name is strong.
Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
For 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 finds that Respondent lacks rights or legitimate interests in respect of the Domain Names. Despite Complainant’s longstanding registered trademarks, which appear to be well-known marks at least in the healthcare and medical field in which Respondent apparently seeks to operate, Respondent registered – on the same day – a Domain Name that entirely incorporated the LIFEPOINT mark and added the word “medical” and a Domain Name similar to the first, except the word “point” is abbreviated (as is not uncommon) to the letters “pt.” It is not legitimate to appropriate another’s established trademark and seek to exploit it commercially in the same general field of commerce.
The fact that Respondent had registered as a Colorado corporation under the name Life Point Medical, Inc. several months prior to registering the Domain Names does not necessarily confer upon Respondent a legitimate interest. Although such measures as registering as a corporation may in certain circumstances serve as evidence of demonstrable preparations to use a Domain Name in connection with a bona fide offering of goods or services, they do not automatically establish bona fide under the Policy.
In the context of this dispute, the filing of articles of incorporation does not overcome the credibility gap that Respondent suffers in this case. Respondent apparently explained to Complainant, in response to the initial cease-and-desist letter, that the initials “pt” could mean “pulmonary therapy”. This explanation, however, is undermined by the fact that Respondent also registered, on the same day, the Domain Name .
Moreover, Respondent’s conduct after the correspondence with Complainant does not inspire confidence in Respondent’s bona fide. Respondent continued to use the mark LIFEPOINT on its website, and refused to transfer the Domain Name despite such a transfer forming part of the proposal laid out by Complainant and despite changing its corporate name to Life Pt Medical, Inc.
In sum, because Respondent’s credibility does not emerge from this record as strong, Respondent’s motivations vis-à-vis the Domain Names are not accepted as legitimate.
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.
For much the same reason as the Panel finds that Respondent lacks rights or legitimate interests here, the Panel also concludes, based on this record and on a balance of probabilities, that Respondent registered and used the Domain Names in bad faith, within the meaning of Policy paragraph 4(b)(iv). Despite receiving two letters from Complainant and having a phone discussion with Complainant, Respondent failed to transfer one of the Domain Names and continued to use Complainant’s LIFEPOINT trademark at its website.
Based on this record, the Panel finds it more likely than not that Respondent registered the Domain Names with Complainant’s LIFEPOINT mark in mind, and sought to capitalize on the goodwill associated with that mark by attracting Internet users to Respondent’s websites by means of Domain Names confusingly similar to Complainant’s mark.
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: December 20, 2017
Full & Egal Universal Law Academy