Complainant is MD Now Medical Centers, Inc, United States of America, represented by Waller Lansden Dortch & Davis, LLP, United States of America.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. / Kelly Jurado, United States of America. 2. The Domain Name(s) and Registrar(s)
The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2019. On July 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 19, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 25, 2019.
The Center verified that the Complaint together with the amendment to 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 July 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 19, 2019.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 22, 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
Since 2003, Complainant has provided urgent care medical services under the MD NOW trademark to patients in southern Florida, including services such as X-rays; EKG tests; sutures/stitches; minor surgical procedures; physical therapy; DNA testing; flu/strep mono tests; physical exams; immunizations and vaccines; audio/vision tests. Complainant is the owner of the following registered marks in class 44, dating from 2005:
- MD NOW, registration no. 3036818, December 27, 2005
- MD NOW [with design], registration no. 3093846, May 16, 2006
- WWW.MYMDNOW.COM, registration no. 4513604, April 15, 2014
- MDNOW [with design], registration no. 4695046 March 3, 2015
Complainant registered the domain name on July 21, 2003 and has used it to operate its website at “www..”
The Domain Name was registered on February 8, 2017. 5. Parties’ Contentions A. Complainant
(i) Identical or confusingly similar
Complainant states that the MD NOW mark has become well-known to consumers, physicians and the public at-large, tracing Complainant’s services back more than fifteen years. Complainant has invested substantial time, expense, and effort in the creation of goodwill surrounding the mark and has acquired common law trademark rights.
Complainant contends the Domain Name is confusingly similar to Complainant’s MD NOW marks. Complainant has widely used the marks in commerce since 2003, which is prior to Respondent’s registration of the Domain Name. During this time, Complainant accrued substantial common law rights. Complainant’s ownership of United States trademark registrations for the MD NOW mark is additional evidence that Complainant has valid trademark rights in its marks.
Complainant claims that Respondent registered the Domain Name to capitalize on Complainant’s established goodwill and brand recognition, merely adding the common descriptive term “green.” Respondent is operating its business in southern Florida, in the same geographic region as Complainant. The addition of the descriptive term “green” is insufficient to distinguish the Domain Name and associated website from Complainant’s marks. The only relevant element of the Domain Name is the MD NOW mark.
Complainant claims that Respondent’s use of the Domain Name is likely to cause deception, mistake, and confusion among consumers seeking information about Complainant’s goods and services. Complainant contends that the addition of “green” to its MD NOW mark is likely to cause consumers to believe that Complainant has expanded its traditional urgent care services to include alternative medicinal treatments, such as medical marijuana, as shown on Respondent’s website. Complainant states that UDRP panels have considered cases similar to this one, in which one party registers a domain name wholly incorporating a complainant’s registered trademark in a manner calculated to unfairly trade on the established prior rights of the trademark owner.
For the foregoing reasons, Complainant submits that the Domain Name is confusingly similar to Complainant’s marks and domain name, and that confusion is the main intent of Respondent, who set up a mechanism to unfairly trade off Complainant’s brand names and well-established trademark rights.
(ii) Rights or legitimate interests
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name. Respondent is not related to, affiliated with, endorsed by, connected to, or otherwise associated with Complainant. Respondent has not sought from Complainant, nor has Complainant granted to Respondent, authorization, permission, or license to use Complainant’s marks. Complainant explains that section 32(1) of the Lanham Act imposes liability for infringement of a registered mark on any person who uses the mark without permission in in connection with the sale or advertising of confusingly similar goods or services. Following from application of the Lanham Act, Complainant claims that Respondent cannot have any rights or legitimate interests in the Domain Name because Respondent’s use violates Complainant’s trademark rights.
Complainant further states that Respondent cannot claim in good faith that it registered and subsequently began to use the Domain Name without notice of Complainant’s trademark rights. Complainant’s use of its marks, and its federal registrations, all pre-date Respondent’s use of the Domain Name. In addition, Respondent’s use of the Domain Name cannot be a bona fide use because Respondent trades on Complainant’s goodwill by making use of Complainant’s trademark within the Domain Name. Respondent effectively hijacks the MD NOW mark and uses it to offer alternative medicinal treatments from facilities that operate in the same geographical area as Complainant, in a manner that is likely to cause consumer confusion, so that consumers are likely to believe that the services provided by Respondent are authorized, endorsed, licensed, or otherwise approved by Complainant. Furthermore, if Respondent is allowed to continue misusing the MD NOW mark, Complainant could be effectively blocked from using its own marks to offer similar alternative medicinal treatments in the future. Any rights resulting from Respondent’s misappropriation of the MD NOW mark over the past year and a half should accrue to Complainant by operation of law.
Complainant contends that Respondent cannot show that it has been commonly known by the Domain Name. Further, Respondent cannot satisfy the requirement that it is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. The Domain Name leads to Respondent’s website, which advertises Respondent’s alternative medicinal services, services which fall under healthcare. Complainant offers healthcare services to its patients. Thus, Respondent’s misappropriation of the MD NOW mark results in an illegitimate and commercial use of the Domain Name. Respondent is misleading consumers for commercial purposes and its own financial gain.
Complainant argues that Respondent has no viable claim that its use of Complainant’s mark in the Domain Name constitutes any variety of fair use as that term is understood in trademark law. Any prior use of the mark MD NOW constituted unlawful infringement, not fair use. For example, Respondent did not merely reference Complainant’s trademarked term, i.e., a “nominative fair use.” Instead, Respondent has used the Domain Name in an effort to trade off of the established goodwill associated with Complainant’s marks. The result of these actions by Respondent is to capitalize, unlawfully, on Complainant’s well-established trademark rights. Such actions are inapposite to the principles embodied in the fair use exception.
For these reasons, Complainant submits that Respondent has no right or legitimate interests in the Domain Name.
(iii) Registered and used in bad faith.
Complainant states that on February 8, 2017, nearly fourteen years after Complainant first used its MD NOW mark in commerce, and nearly twelve years after Complainant first used this mark on its website, Respondent, without Complainant’s permission, registered the Domain Name. By using the MD NOW mark, Respondent’s actions are calculated to trade-off of Complainant’s established trademark rights, reputation, and goodwill, resulting in the infringement of the MD NOW mark. Complainant is concerned that Respondent’s actions will confuse consumers and damage Complainant’s brand. Complainant asserts that Respondent has registered the Domain Name to exploit Complainant’s federally protected trademark rights for Respondent’s own benefit and commercial gain.
In this case, Respondent knowingly chose the Domain Name incorporating the entirety of Complainant’s mark. Additionally, the mere addition of a descriptive term to the Complainant’s mark is not sufficient to distinguish the Domain Name; in fact, such a term only increases the likelihood of confusion between Complainant’s marks and the Domain Name such that consumers would be likely to mistakenly believe the actions of Respondent are associated with, or otherwise approved by, Complainant.
Complainant has offered incontrovertible evidence that Respondent is trading on Complainant’s trademark rights and creating a likelihood of consumer confusion. The entirety of Respondent’s actions with respect to the Domain Name - from its initial registration to the offer of services in the healthcare field – have all been acts in bad faith. Thus, as prior UDRP panels have ruled, attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under the Policy.
Respondent has chosen to set up an alternative medicinal business under Complaint’s mark. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the Domain Name. Prior UDRP panels have found that where a respondent has registered a confusingly similar domain name and offered goods or services similar to that of the trademark owner, such actions constituted bad faith.
Finally, multiple panels have previously held that simply registering a domain name, which incorporates an established trademark, can support a showing of bad faith action by the respondent. Complainant respectfully submits that Respondent is intentionally attempting to attract, for commercial gain, consumers by using Complainant’s marks combined into a single domain name, which has been calculated to create a likelihood of confusion with Complainant’s marks. Thus, the Domain Name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its MD NOW trademark, based on its trademark registrations and use of the mark in the United States.
Further, the Panel determines that the Domain Name is confusingly similar to the MD NOW mark, as the Domain Name incorporates the mark in its entirety, while merely adding the descriptive word “green.” The addition of this word does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see e.g., Accenture Global Services v. Name Redacted,WIPO Case No. D2018-1038 (panel found that “investments” in the disputed domain name “the addition of such a generic designation does not serve sufficiently to distinguish the disputed domain name from the Complainant’s mark.)”
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its MD NOW trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name has been used by Respondent to offer alternative medicinal treatments from facilities that operate in the same geographical area as Complainant, in a manner that is likely to cause consumer confusion, so that consumers are likely to believe that the services provided by Respondent are authorized or licensed by, or otherwise affiliated with, Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Based on the evidence, the evidence suggests, on the balance of the probabilities, that Respondent was aware of Complainant and its MD NOW mark when Respondent registered the Domain Name. The Panel observes that by the time Respondent registered the Domain Name in February 2017 – using a name that incorporates Complainant’s MD NOW trademark in its entirety, along with the word “green” as a prefix – Complainant had been using its MD NOW mark for over 13 years in the same geographic area (southern Florida) where Respondent seeks to offer services, and in a related healthcare field. The Domain Name is so obviously connected with Complainant’s mark that the Panel considers the only logical conclusion is that Respondent was aware of Complainant and its MD NOW mark when registering the Domain Name. See Accenture Global Services Limited v. ICS Inc./PrivacyP,WIPO Case No. D2013-2098 (finding that it was unlikely that respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered, as complainant demonstrated that its mark was known and vested with significant goodwill).
Further, the use of the Domain Name by Respondent operates to attract consumers, for commercial gain, by incorporating Complainant’s MD NOW in the Domain Name, thereby capitalizing on Complainant’s good will in its mark and creating a likelihood of confusion with the mark. Consumers could easily assume that Respondent’s services are authorized, endorsed, licensed, or otherwise approved by Complainant and/or that Complainant has expanded its traditional urgent care services to include alternative medicinal treatments, such as medical marijuana. See e.g., Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226 (where a domain name is “so obviously connected with such a well-known name and products…its very use by someone with no connection with the products suggests opportunistic bad faith”).
In conclusion, in this case, where Respondent notably failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element 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 Domain Name, , be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: September 20, 2019
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