Complainants are Intermountain Health Care, Inc. and IHC Health Services, Inc., (“IHC”) United States of America (“United States”), represented by Stoel Rives, LLP, United States.
Respondent is Rajan Gupta, Gupta Institute for Pain, United States, represented by Keener and Associates, P.C., United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2021. On April 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 19, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name. 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 April 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2021. On May 12, 2021, Respondent requested an extension to submit a response. Accordingly, the Center granted Respondent an automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Response was filed with the Center on May 17, 2021. The Center appointed Lawrence K. Nodine as the sole panelist in this matter on June 3 2021. 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 Founded in 1983, Complainants are related companies1 that own and operate a system of medical care facilities (hospitals, surgery centers, and clinics) in Utah, Idaho, Montana, Nevada, Colorado, Wyoming, and Alaska, (Annex 6 to the Complaint) primarily under the tradename INTERMOUNTAIN HEALTHCARE. In 1984, they began using the trademarks INTERMOUNTAIN INSTACARE and INSTACARE as service marks for some of their clinics in Utah and Idaho, where they currently operate 32 clinics under the INSTACARE mark. Respondent was incorporated in New Jersey in 2005. Respondent’s principal is Rajan Gupta, a medical doctor. Since 2005, Respondent’s medical doctors and other professionals have rendered medical care to patients at their own facilities in Cherry Hill New Jersey, and (starting at some undetermined date) in Philadelphia, Pennsylvania. On October 19, 2010, Complainant Intermountain Healthcare, Inc. obtained2 United States Trademark Registration No. 3,865,324 for the mark INTERMOUNTAIN INSTACARE for use in connection with “hospital, medical and healthcare service.” On March 4, 2015, Respondent registered the Disputed Domain Name. Since then, Respondent has published a website under the Disputed Domain Name to provide information about its medical services delivered in New Jersey and, at some point, Philadelphia, Pennsylvania. No medical care services are rendered on the website itself. Rather, the website provides information about the medical services rendered in person by employees of Respondent at its physical facilities. On April 8, 2016, Respondent filed an application to register PAIN INSTACARE as a federal trademark and, on February 14, 2017, United States Registration No. 5,143,362 issued for the mark PAIN INSTACARE. On November 30, 2016, Pain Instacare LLC was incorporated in New Jersey as a limited liability company. On January 12, 2017, Complainant IHC Health Services, Inc., filed an application to register INSTACARE for use in connection with medical care services. The United States Patent & Trademark Office rejected the application based on a likelihood of confusion with Respondent’s PAIN INSTACARE registration. In response, Complainant filed a petition to cancel Respondent’s PAIN INSTACARE registration. In 2019, the United States Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”) granted Complainant’s petition and cancelled Respondent’s PAIN INSTACARE registration, ruling that Complainant was the senior user by virtue of its continuous use of the mark INSTACARE in connection with its clinics in Utah since at least April 30, 1985. The TTAB also ruled that Respondent’s PAIN INSTACARE mark was likely to be confused with Complainant’s INSTACARE mark.3 The TTAB rejected Respondent’s contention that there was no actual confusion evidence, instead observing that this was not surprising because the parties operated in different geographic areas. Once Respondent’s Registration No. 5,143,362 for PAIN INSTACARE was cancelled, Complainants’ application for INSTACARE proceeded, and on April 28, 2020, United States Registration No. 3,865,324 for the mark INSTACARE issued. 5. Parties’ Contentions A. Complainant Complainants contend they have trademark rights in INSTACARE, which it defines as “the Mark.” Complainants rely on its two federal registrations (Nos. 3,865,324 and 3,865,324) and common law rights based on use of the INSTACARE mark since 1983 at clinics in Utah. Complainants allege that the Disputed Domain Name Complainants contend that Respondent has no rights or legitimate interests in the Disputed Domain Name, asserting that Respondent began using Complainants argue that Respondent registered the Disputed Domain Name in bad faith, alleging that “[a]t the time Respondent acquired the Domain Name in March 2015, Complainants had been using the Mark for over thirty years and more than five years had passed since Complaints [sic] first registered the Mark with the USPTO.” Complainants also argue that “Respondent uses the Mark to attract users to its website for the purpose of realizing commercial gain based on consumer confusion as to Complainant’s sponsorship, affiliation, or endorsement of the website, which constitutes bad faith under Paragraph 4(b)(iv) of the Policy.” B. Respondent Respondent denies that the Disputed Domain Name is confusingly similar to Complainant’s INSTACARE mark, and emphasizes that the dominant part of Complainants’ mark is INTERMOUNTAIN. Respondent contends that since before any notice of the dispute, it has used the Disputed Domain Name to make a bona fide offer of medical services. Respondent denies that it registered and used the Disputed Domain Name in bad faith. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that Complainants have demonstrated rights in the INSTACARE trademark by way of United Sates federal trademark registration No. 6,039,561 for INSTACARE. As Complainants argue, the Disputed Domain Name “wholly incorporated” the INSTACARE mark.4 The addition of the word “pain” does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8 (addition of descriptive terms does not prevent confusing similarity). Accordingly, Complainants have satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel finds that Respondent has submitted credible concrete evidence5 that, before any notice of the present dispute, Respondent was legitimately using the Disputed Domain Name in connection with the delivery of bona fide medical services in New Jersey. Respondent registered and began using the Disputed Domain Name on March 3, 2015. Complainant IHC applied to register the INSTACARE mark on January 12, 2017, which is almost two years after Respondent began using the Disputed Domain Name. Before this, the Panel finds, Complainant had common law rights in the INSTACARE mark. But where, as here, the relevant medical services are delivered only in the physical world and not online,6 Complainant’s common law rights would have extended (prior to the effective date of the federal registration) only to the geographical area where Complainant used the INSTACARE mark in commerce—which, at that time, was confined to the states of Utah and Idaho.7 Complainant has submitted no evidence that would support a finding that Complainant had any rights 2000 miles (and six intervening states) away in New Jersey in 2015 when Respondent registered and began using the Disputed Domain Name. Additionally, Respondent submits evidence that each state regulates the delivery of medical services, and that, while Respondent’s professionals are licensed in New Jersey and Pennsylvania, there is no evidence indicating Complainant’s professionals are licensed in those states. Consequently, given the limited geographic scope of Complainant’s common law rights in 2015, the Panel finds that Respondent has submitted credible evidence regarding its use of the PAIN INSTACARE mark when Respondent registered the Disputed Domain Name in 2015.8 The Panel acknowledges that Complainants have submitted evidence that its INSTACARE clinics were mentioned in national publications, but none of the submitted publications precede Respondent’s 2015 registration of the Disputed Domain Name so there is no need to decide whether these publications would give rise to common law rights in New Jersey or put Respondent on notice of any dispute prior to Respondent’s registration of the Disputed Domain Name. Similarly, Complainant submits a declaration that it licensed the INSTACARE mark for use in North Carolina, but this appears to have occurred in 2017 after Respondent registered the Disputed Domain Name. The Panel also acknowledges that in 2009 Complainants asserted a claim of trademark rights in their INSTACARE mark, which was not yet covered by any federal trademark registration, against a third party in North Carolina, and that, as a result, the third party abandoned a federal registration for INSTACARE. Although this provides some evidence that Complainants’ rights in the INSTACARE mark have been recognized outside of Utah and Idaho, it falls short of proof that its rights extended to New Jersey or that Respondent was aware of Complainants’ rights when it registered the Disputed Domain Name in 2015. Complainant’s cancellation in 2019 of Respondent’s PAIN INSTACARE registration does not undermine the Panel’s finding that Respondent began its bona fide use of the Disputed Trademark before notice of any dispute. Complainant did not file the petition to cancel until August 2017, nearly two years after Respondent registered the Disputed Domain Name. There is no evidence that Complainant had notified Respondent of its claim of senior rights in the mark prior to initiation of the cancellation proceeding. The Trademark Examiner did not cite Complainant’s INTERMOUNTAIN INSTACARE registration and Complainant did not oppose Respondent’s application for PAIN INSTACARE when it was previously published for opposition. Like the Panel here, the TTAB ruled that PAIN INSTACARE was likely to be confused with INSTACARE and that Complainant was the senior user of INSTACARE by virtue of its prior use of the mark in Utah starting in the 1980s. But the TTAB did not rule that Complainant had any rights outside Utah. Indeed, to prevail in the cancellation action under Lanham Act § 2(d), Complainant only needed to prove that it was the senior user anywhere—proof of prior use in Utah alone was sufficient. McCarthy on Trademarks and Unfair Competition § 20:17. The TTAB ruling says nothing about the geographic scope of Complainant’s rights. Indeed, the TTAB relied on the geographic separation of the parties to explain away the absence of any evidence of actual confusion. And Complainant’s subsequent registration of INSTACARE does not cut off prior common law rights acquired by Respondent in New Jersey. McCarthy on Trademarks and Unfair Competition § 16:18.50 (5th Edition). Complainants argue that before Respondent registered the Disputed Domain Name in 2015, Respondent had “constructive knowledge” of Complainant’s federal registration for INTERMOUNTAIN INSTACARE, which was registered in 2010. Complainant asserts that “[a]t the time Respondent acquired the Domain Name in March 2015 … more than five years had passed since Complainants first registered the Mark with the USPTO.” In a similar vein, some Panelists have imposed a duty to conduct clearance searches of available online databases to avoid willful blindness, WIPO Overview 3.0 section 3.2, which duty is, in some respects, tantamount to assuming constructive notice of registered marks that would be detected by a search. Neither of these doctrines would have put Respondent on notice of a confusingly similar mark or otherwise disqualified Respondent from relying on Policy paragraph 4(c)(i). This is so for three reasons: First, the constructive knowledge and duty to search arguments both wrongfully assume that mere knowledge of Complainant’s INTERMOUNTAIN INSTACARE mark would necessarily require Respondent to conclude that confusion with the Disputed Domain Name was likely, and, thereby, preempt reliance on paragraph 4(c)(i) Policy. This assumption is unfounded. Although the Panel has found that the Disputed Domain Name is confusingly similar to Complainant’s INSTACARE mark, which it “wholly incorporates,” the Panel has not found and Complainant has never argued for a similar finding with respect to the INTERMOUNTAIN INSTACARE mark, which is the only mark registered before Respondent adopted the Disputed Domain Name, and, therefore, the only mark that could support a constructive knowledge argument. Second, although “constructive knowledge” may be relevant where there are “facts that corroborate an awareness of complainant’s mark,” WIPO Overview 3.0 section 3.2.2, there are no such corroborating facts here to show, for example, that Complainant was so widely known nationally in 2015 that Respondent was probably aware of Complainants’ rights. Third, even if Respondent was aware of Complainant’s INTERMOUNTAIN INSTACARE registration when it registered the Disputed Domain Name in 2015, whether by constructive knowledge or a clearance search, it would not have been unreasonable for Respondent to conclude subjectively and in good faith that there was no likelihood of confusion with PAIN INSTACARE. This is because the Disputed Domain Name does not include “intermountain,” an integral portion of the INTERMOUNTAIN INSTACARE mark. Panelists considering Policy paragraph 4(a)(i) have often found that a disputed domain name is confusingly similar to Complainant’s mark even if some word elements of the Complainant’s mark are missing if the dominant elements of the Complainant’s mark are included in the disputed domain name. See, e.g., The American Association of the Order of St. Lazarus, Inc. v. Howard Browne/order of St Lazarus,WIPO Case No. D2014-0738 (Policy paragraph 4(a)(i) satisfied even though Respondent excluded many words included in Complainant’s multi-word mark because it still took “Saint Lazarus,” the dominant portion of the Complainant’s mark). It is sometimes appropriate to look to Respondent’s website for the missing components of Complainant’s mark. Claudie Pierlot v. Yinglong Ma,WIPO Case No. D2018-2466 (Even though a significant part of the relevant mark is missing from the domain name, it was found on the webpage, thereby satisfying Policy paragraph 4(a)(i)). On occasion, the overall abusive pattern of Respondent’s abusive domain name registrations may justify a finding confusing similarity even when the overlap with the Complainant’s trademark is minimal. Dareos Ltd., Dareos Inc., and Ritzio Purchase Limited v. Irina Zenenkova and Dimitri Chikovani,WIPO Case No. D2019-0028 ( But here, the integral “intermountain” portion of Complainant’s INTERMOUNTAIN INSTACARE mark is missing from the Disputed Domain Name and it is not found elsewhere on Respondent’s webpages. The “intermountain” portion of Complainant’s INTERMOUNTAIN INSTACARE mark is as Respondent argues, pervasively used by Complainant. “Intermountain” is not an insignificant descriptive word - like “pain” - but rather an emphasized tradename and service mark that is obviously important to Complainant. When considering Policy paragraph 4(a)(i), the Disputed Domain Name may be found confusingly similar even if the marks are not identical and even if an arguably dominant, or at minimum integral portion is missing. But differences between the Complainant’s mark and the Disputed Domain Name may be relevant when considering paragraphs 4(a)(ii) and (iii) of the Policy. That is the case here. A conscientious attorney conducting a trademark search in 2015 could have formed a good faith legal opinion that, because PAIN INSTACARE did not include “Intermountain,” an important element the INTERMOUNTAIN INSTACARE mark, the two marks were not confusingly similar or likely to cause confusion especially if geographic limitations were considered relevant. Indeed, the United States Patent & Trademark Office registered PAIN INSTACARE despite the preexisting registration for INTERMOUNTAIN INSTACARE. Of course, this is not binding on Complainant, or this Panel, but it is evidence that it would not have been subjectively unreasonable to believe that the Disputed Domain Name was not confusingly similar to INTERMOUNTAIN INSTACARE. In any event, to support the argument that Respondent should have known of the INTERMOUNTAIN INSTACARE registration, whether constructively or because of a duty to search, it was incumbent upon Complainant to at least explain why the Panel should ignore the absence “intermountain” and still find, not only confusing similarity, but also that it would have been bad faith to argue otherwise. Complainant has not done so and the Panel will not fill in the gaps on its own.9 In view of this, Complainant’s registration of INTERMOUNTAIN INSTACARE before Respondent registered the Disputed Domain name does not disqualify Respondent from relying on paragraph 4(c)(i) of the Policy, even if the Panel were to assume constructive knowledge or impose a duty to have search. Given this record, Respondent satisfies Policy paragraph 4(c)(i). See e.g., Tlr vs United Engineering Services LLC,WIPO Case No. D2007-0148 (“As Respondent has used the disputed domain names for a legitimate business for several years prior to Complainan’s cease-and-desist letter, Respondent has demonstrated that it comes within the safe harbors of paragraph 4(c)(i) and 4(c)(ii) of the Policy.”); Regency Furniture of Laurel, Inc. v. David Lively,WIPO Case No. D2018-0919 (Respondent’s “business is real and not pre-textual. … RFNC began using REGENCY FURNITURE GALLERY as a trademark and trade name in the real world for a real business before Complainant notified him of its claim. …”). Accordingly, the Panel finds that Complainants have not satisfied paragraph 4(a)(ii) of the Policy and that Respondent has submitted credible evidence in support of its Policy paragraph 4(c)(i) defense. C. Registered and Used in Bad Faith Complainants have not proved that Respondent registered the Disputed Domain Name in bad faith. Nothing in the record supports an inference that Respondent was aware of Complainants or their rights when Respondent registered the Disputed Domain Name in 2015. As explained above, Respondent registered the Disputed Domain Name and began its medical practice before Complainant applied for a federal trademark registration for INSTACARE and there is no evidence that that Complainant had previously acquired common law rights in New Jersey. WIPO Overview 3.0 section 3.8.1 (“where a respondent registers a domain name before complainant’s trademark right accrue, panels will not normally find bad faith…”). On the contrary, the facts indicate Respondent’s subjective belief that it had the right to use the PAIN INSTACARE mark. On April 8, 2016, before knowledge of this dispute, Respondent applied for a federal trademark registration for PAIN INSTACARE, which the application Complainant did not oppose. On November 30, 2016, Pain Instacare LLC was incorporated in New Jersey as a limited liability company. These public claims of right, while not dispositive, nonetheless support an inference that Respondent acted based on a good faith belief openly declared that that it had the legal right to register and use PAIN INTACARE as a trademark and tradename. Complainants have also failed to prove that Respondent uses the Disputed Domain Name in bad faith. Complainants argue that “Respondent uses the Mark to attract users to its website for the purpose of realizing commercial gain based on consumer confusion as to Complainant’s sponsorship, affiliation, or endorsement of the website, which constitutes bad faith under Paragraph 4(b)(iv) of the Policy.” But Complainants have failed to offer any evidence to prove this assertion. Nothing in the record suggests that Respondent sought or obtained any financial gain by virtue of services rendered on the website itself. Respondent’s website promotes services delivered in the physical world rendered to patients separated from Complainant’s clinics by 2000 miles and six intervening states. Of course, Respondent promoted its physical world medical care under the Disputed Domain Name, and thereby gained some commercial benefit, but Complainants have failed to prove that any of Respondent’s patients were likely confused or mistakenly perceived an affiliation with Complainants, much less that Respondent exploited any such confusion in bad faith. Complainant has not satisfied paragraph 4(a)(iii) of the Policy. Conclusion Fundamentally, this is not an appropriate case for resolution under the Policy. This is not a typical “cybersquatting” case - Respondent offers medical services to the physical world, and neither party provides evidence that any of these services are offered online. Moreover, as the foregoing discussion demonstrates, this is a complex case, both factually and legally. Indeed, there are few issues more complex under United States trademark law than the interplay between common law and registered rights and the priority disputes involving contending parties operating in different geographic zones. This sort of case is more appropriately pursued in the courts. See Mastercard International Incorporated v. Nirmal Patel, Champion Software Technologies Ltd.,WIPO Case No. D2018-0857 (quoting Regency Furniture, supra) (“Where judicial court proceedings are necessary, or even preferred, to determine whether a Respondent’s real world business infringes Complainant’s rights, it is not appropriate to resolve the dispute under the UDRP. And a good faith use of a mark in the physical world may be considered bona fide, even where the Complainant has a plausible infringement claim that has not been validated by a judicial ruling.”). 7. Decision For the foregoing reasons, the Complaint is denied. Lawrence K. Nodine 1 IHC Health Services, Inc. is a wholly owned subsidiary of Intermountain Health Care, Inc. 2 As Complainants are related companies, they are considered to have rights in each other’s trademarks. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4. 3 Notably, when Complainant argued in the TTAB that confusion was likely, it relied only on Complainant’s rights in the INSTACARE (alone) mark and the TTAB followed suit. The TTAB made no ruling regarding likelihood of confusion with respect to Complainant’s INTERMOUNTAIN INSTACARE trademark. 4 Complainants defined the term “the Mark” to refer only to its single word mark INSTACARE. And Complainants based their argument regarding confusing similarity on the INSTACARE mark alone. Complainants did not contend that the Disputed Domain Name was confusingly similar to its federal Registration 3,865,324 for the INTERMOUNTAIN INSTACARE mark. 5 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. WIPO Overview 3.0 section 2.1. See also See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (Respondent must introduce “concrete” evidence to satisfy paragraph 4(c)(1) of the Policy). 6 The Panel emphasizes that this record contains no evidence of services delivered online, a key fact when considering the geographic reach of trademark rights. In fact, in its advertising for its INSTACARE clinics, Complainants promote the convenient physical locations of the clinics. The analysis would likely be different in a case involving a website that offered or delivered online services (such as telemedicine or online gambling, for example) or offered to sell and deliver products without regard to geographic location. 7 In the United States, common law trademark rights are limited to the geographic zone where the trademark is used in commerce, even if the physical world services are promoted via a website accessible worldwide. “[M]erely because a Web site featuring a trademark can theoretically be accessed on computers from Florida to Alaska and from Beijing to Paris does not mean that the trademark is known and established in all those locations. Knowledge among persons in the territories in issue must be proven by evidence, not assumed just because the Internet is national and global. … Merely being the senior user of a mark on the internet does not thereby create an exclusive right to the mark for internet use in all territories of the United States (or the world). The internet (or cyberspace) is not a ‘territory.’ … Market penetration by internet use of a mark should be determined, primarily by evidence as to the place where buyers actually purchased the goods and services advertised on the internet site. It is the location of customers that indicates the extent of territorial penetration.” 5 McCarthy on Trademarks and Unfair Competition § 26:30.50 (5th ed.) (updated June 2021). See also e.g., Dudley v. HealthSource Chiropractic, Inc., 883 F. Supp. 2d 377, (W.D.N.Y. 2012) (“If … a senior common law user could claim exclusive use on the internet, then it would undermine the benefits and security provided by federal registration. … Even though concurrent, lawful users of a mark should be allowed to use their marks on the internet, use on the internet cannot be manipulated to intrude on another’s territory in bad faith.”). 8 When considering Policy paragraph 4(a)(1), common law rights, even if geographically limited, will generally be sufficient to confer standing. WIPO Overview 3.0 section 1.1.3 (“[F]or a number of reasons, including the global nature of the Internet and Domain Name System, the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP.”). But geographic limitations on the scope of Complainants’ rights should be considered when evaluating paragraphs 4(a)(ii) and 4(a)(iii). Under paragraph 4(c)(i), one question is whether Respondent began using the Disputed Domain Name in a bona fide business before notice of the dispute. The strength of complainant’s mark, including its geographic scope, is one of the factors the Panel may consider when deciding whether Respondent’s use was “bona fide.” WIPO Overview 3.0 section 1.3 (“Even where a panel finds that a complainant has UDRP standing based on unregistered or common law trademark right, the strength of the complainant’s mark may be considered in evaluating the second and third elements.”). 9 The Panel emphasizes that this is not a finding that the Disputed Domain Name is not confusingly similar to INTERMOUNTAIN INSTACARE, but rather a ruling that Complainant has not attempted to carry its burden as to this mark. It is an open question whether Complainant could do so.
Sole Panelist
Date: June 18, 2021
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