Complainant is Wisconsin Emergency Medical Technicians Association, Inc. DBA Wisconsin Emergency Medical Services Association, Inc. (WEMSA) of Wind Lake, Wisconsin, United States of America (“United States”), represented by Marjory S. Stewart, United States.
Respondent is Marsha Everts, EMS Professionals, Inc. of Jefferson City, Missouri, United States, represented by Bandre’ Hunt & Snider, LLC, United States. 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 December 12, 2018. On December 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2018, 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 December 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2019. The Response was filed with the Center on January 8, 2019.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on January 23, 2019. 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
Complainant, Wisconsin Emergency Medical Technicians Association, Inc. DBA Wisconsin Emergency Medical Services Association, Inc. (WEMSA), is a non-profit member based organization for emergency medical professionals and first responders in the State of Wisconsin, United States. Complainant is a lobbying and educational organization which promotes education, information sharing and legislative action and advocacy in the field of emergency medical services (“EMS”). As part of Complainant’s activities, Complainant publishes a bi-monthly magazine under the name and mark EMS PROFESSIONALS. The magazine is only available to members of Complainant’s association and provides information and articles of interest regarding emergency medical services. Complainant also hosts an annual conference and trade show under the name and mark WEMSA which is dedicated to EMS services and issues.
Complainant is the owner of two trademark registrations for EMS PROFESSIONALS in the United States in connection with its educational materials and services (Registration Nos. 3,840,720 and 4,072,720, which issued to registration on August 31, 2010 and December 20, 2011 respectively).
Respondent Marsha Everts is the sole corporate officer and shareholder of Emergency Medical Supply Professionals, Inc., a corporation in the State of Missouri, United States. Respondent’s company sells online a variety of products manufactured by other parties for use by emergency medical providers and first responders such as firefighters, paramedics and law enforcement professionals. Respondent registered the disputed domain name on March 12, 2012, and at some point thereafter started using the disputed domain name with a website to promote and sell products to emergency medical providers and first responders. Respondent’s website is currently operational. On or about April 21, 2015, Respondent registered with the Secretary of State in the State of Missouri the fictitious business name “EMS Professionals, Inc.” as an assumed name for Emergency Medical Supply Professionals. Respondent has prominently featured the name and mark EMS PROFESSIONALS on the home page of Respondent’s website at the disputed domain name.
On or about October 8, 2018, Complainant sent Respondent a demand letter regarding Respondent’s use of the name and mark EMS PROFESSIONALS and the disputed domain name. While it does not appear that Respondent provided a formal written response to Complainant’s demand letter, the Parties apparently engaged in some limited discussions but could not resolve the matter. 5. Parties’ Contentions A. Complainant
Complainant contends that it owns rights in the trademark EMS PROFESSIONALS on the basis of its continuous use of the mark since November 1, 2002 and on account of its United States trademark registrations for EMS PROFESSIONALS. Complainant also contends that the EMS PROFESSIONALS mark has acquired secondary meaning as a unique identifier of Complainant.
Complainant asserts that the disputed domain name causes confusion and is infringing as it is identical to Complainant’s EMS PROFESSIONALS mark. Complainant further asserts that confusion is likely as the third party companies who sell products through Respondent’s website at the disputed domain name are in the same EMS field as those companies who advertise products and services through Complainant’s publication.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) has no authorization or license from Complainant to use the EMS PROFESSIONALS mark, (ii) is not an affiliate of or in a business relationship with Complainant, (iii) has no rights in the EMS PROFESSIONALS mark, and (iv) only used the disputed domain name based on the EMS PROFESSIONALS mark to promote Respondent’s business and to divert consumers from Complainant’s website for Respondent’s commercial gain.
Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith as Respondent registered and used the disputed the domain name well after Complainant acquired rights in the EMS PROFESSIONALS mark. Complainant also maintains that Respondent must have known of Complainant and Complainant’s prior rights in the EMS PROFESSIONALS mark given that Respondent attended Complainant’s WEMSA trade show and conference in 2018. Finally, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith to trade upon the goodwill Complainant has developed in the EMS PROFESSIONALS mark. B. Respondent
Respondent asserts that it is an online supplier of products utilized by emergency medical technicians (“EMTs”), firefighters, and law enforcement professionals. Respondent contends that it has been in business since 2011 and that it has registered and used the assumed business name EMS PROFESSIONALS since at least as early as April 21, 2015. Respondent also maintains that it registered the disputed domain name in March 2012, and has only used it in conjunction with Respondent’s website to promote and sell products of third party manufacturers to EMTs, firefighters, and law enforcement professionals.
Respondent does not contest that the disputed domain name is identical to Complainant’s EMS PROFESSIONALS mark, but contends that Complainant’s rights in EMS PROFESSIONALS are limited and only extend to Complainant’s educational publication and related services. Respondent contends that its use of EMS PROFESSIONAL is in a completely different industry and specialization from those of Complainant. Based on such differences in the use of the respective marks, Respondent rejects Complainant’s contention that confusion between the marks is likely. Respondent also argues that the Parties’ respective marks have existed for a number of years without any evidence of confusion.
Respondent contends that is has legitimate interests in the disputed domain name. Respondent maintains that (i) Respondent operates a legitimate business, (ii) registered for its business the fictitious name EMS Professionals Inc. with the Missouri Secretary of State in 2015, and (iii) has coexisted with Complainant in their separate fields for many years. Respondent also contends that Complainant has provided no evidence that Respondent has diverted any online consumers looking for Complainant to Respondent’s website at the disputed domain name, particularly as Complainant offers no goods for sale and is a not-for-profit association whose activities are primarily focused on lobbying.
Lastly, Respondent rejects the contention that it registered and used the disputed domain name in bad faith. Respondent argues that Respondent (i) has never sought to profit from the disputed domain name by attempting to sell it, (ii) has never prevented Complainant from reflecting EMS PROFESSIONALS in a domain name, as Complainant had the opportunity to do so many years before Respondent registered the disputed domain name but elected not to do so, and (iii) is not a competitor of Complainant as the parties are in different fields of interest. Respondent also argues that the Parties have used their respective EMS PROFESSIONALS marks for completely different purposes, and only in their respective zones of interests, and that EMS PROFESSIONALS is not exclusively associated with Complainant or widely recognized as a product, trade name or associated moniker of Complainant. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns trademark registrations for the EMS PROFESSIONALS mark in connection with its educational materials and services.
As the threshold for satisfying this first element is sometimes expressed as a “low” one, the Panel finds that Complainant has established sufficient rights for purposes of the first element and that the disputed domain name is confusingly similar to Complainant’s EMS PROFESSIONALS mark, as it fully incorporates and solely consists of EMS PROFESSIONALS. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name (Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393). Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Complainant argues that Respondent lacks legitimate interests in the disputed domain name as Complainant acquired rights in the name and mark EMS PROFESSIONALS prior to Respondent’s registration and use of the disputed domain name. The evidence of record, though, shows that Complainant’s rights in the EMS PROFESSIONALS mark are limited to its use of EMS PROFESSIONALS in connection with Complainant’s publication and related educational services. Indeed, Complainant’s two United States trademark registration for EMS PROFESSIONALS are limited to Complainant’s educational products and services. The evidence before the Panel does not show use of EMS PROFESSIONALS by Complainant beyond Complainant’s use of that mark with Complainant’s EMS PROFESSIONALS publication, nor does it show that Complainant’s EMS PROFESSIONALS mark is well-known to consumers or in the EMS field.
Given that Complainant’s rights in EMS PROFESSIONALS appear to be limited, the issue before the Panel is whether Respondent’s use of EMS PROFESSIONALS in the disputed domain name in connection with a website that promotes the online sale of products to emergency medical providers, first responders and the like establishes a bona fide use or legitimate interests on the part of Respondent. Put another way, the issue here is whether Respondent’s activities show that Respondent is acting in a legitimate manner or has opportunistically sought to exploit Complainant’s rights in the EMS PROFESSIONALS trademark for commercial gain.
In answering that question based on the evidence provided, the Panel first notes that the expression “EMS professionals” also has a descriptive connotation to refer to professionals in the EMS field, such as first responders and emergency medical technicians. Consequently, a descriptive use of “EMS professionals” does not in and of itself establish a lack of legitimate interests on the part of Respondent. Here, though, Respondent essentially rebranded itself as EMS PROFESSIONALS in 2015 and has used EMS PROFESSIONALS not only in a descriptive sense but as the name and mark for Respondent’s business, website and disputed domain name.
Importantly, Respondent’s use of the name EMS PROFESSIONALS has been in connection with a bona fide business that promotes and sells online the products of third parties to emergency medical providers, first responders and law enforcement professionals. Complainant, on the other hand, does not use EMS PROFESSIONALS to sell products or services, but only as the name for its publication that provides information and articles of interest regarding emergency medical services. The respective uses appear to be completely different and for different purposes. Although there may be some overlap between (i) the consumers who purchase products from Respondent and those who receive Complainant’s publication and/or (ii) manufacturers who sell products through Respondent’s website and who may advertise in Complainant’s publication, the evidence before the Panel shows the use of EMS PROFESSIONALS by the respective Parties to have been in distinct zones of interest.
The fact that there may be some overlap of consumers or advertisers does not mean, without more, that Respondent lacks a legitimate interest in using the name EMS PROFESSIONALS to promote and sell products online to emergency medical providers, first responders and law enforcement professionals. Given that Complainant has only established that it owns rights in EMS PROFESSIONALS in a limited context (namely for a publication and related educational services) and not in a broad sense that would cover a wide array of legitimate uses that would include the expression “EMS professionals,” it does not readily appear to the Panel, nor can the Panel infer, based on the evidence provided that Respondent made or is now making use of EMS PROFESSIONALS to take advantage of the limited rights Complainant enjoys in EMS PROFESSIONALS as the name of a publication. What is lacking is evidence that Respondent, who is based in Missouri and who sells products nationally, has been using EMS PROFESSIONALS to take advantage of Complainant’s rights in EMS PROFESSIONALS as it relates to a publication that circulates only to members of Complainant’s association, a not-for-profit association that is primarily focused on education and advocacy for emergency medical providers and first responders in the State of Wisconsin.
Complainant attempts to side-step this issue by arguing that Respondent lacks legitimate interests in the disputed domain name because Respondent has circulated a sales catalog that bears the name EMS PROFESSIONALS for the products Respondent’s company sells. Complainant assert that by circulating a sales catalog with the name EMS PROFESSIONALS Respondent is infringing Complainant’s rights in the EMS PROFESSIONALS mark in connection with publications. Although it is possible that Complainant may have a basis for a claim for trademark infringement or unfair competition against Respondent and its use of EMS PROFESSIONALS, whether as a business name or on a sales catalog, such a claim belongs in another forum and is beyond the scope of a UDRP proceeding. The mere use by Respondent of EMS PROFESSIONALS as a name on a sales catalog related to Respondent’s legitimate business does not establish, without more, that Respondent lacks legitimate interests in using the name EMS PROFESSIONALS for the completely different purpose of selling products online, nationwide, to emergency medical providers, first responders and law enforcement professionals. Again, what is missing is evidence that Respondent’s use of EMS PROFESSIONALS with its online supply services is being done to take advantage of Complainant’s rights in EMS PROFESSIONALS as the name of a publication with a limited distribution.
In sum, the Panel concludes that Complainant has failed to establish that Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Given that Complainant has not established the second element of lack of legitimate interests or bona fide use, the Panel does not need to address the issue of bad faith registration and use. That being said, though, the Panel notes that in view of Complainant’s limited rights in the trademark EMS PROFESSIONALS, it seems more likely than not, based on the evidence before the Panel, that Respondent was not acting in bad faith when Respondent registered and started using the disputed domain name for its EMS PROFESSIONALS online retail service. Complainant has simply not provided any evidence that Respondent, who is based in Missouri, sought to exploit Complainant’s rights in EMS PROFESSIONALS as the name of Complainant’s publication. The mere similarity of the disputed domain name and Complainant’s EMS PROFESSIONALS mark does not in itself establish bad faith, particularly when, as here, the mark has a descriptive connotation and the parties’ respective uses are in separate zones of interest.
The Panel again notes that to the extent Complainant may have evidence that would support a possible claim against Respondent for trademark infringement or unfair competition for using the mark and name EMS PROFESSIONALS, such a claim belongs in another forum and is beyond the scope of this UDRP proceeding. 7. Decision
For the foregoing reasons, the Complaint is denied.
Georges Nahitchevansky
Sole Panelist
Date: February 7, 2019
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