Boston Sports Medicine, Inc. v. boston sports medicine and research institute
Claim Number: FA2106001949788
Complainant is Boston Sports Medicine, Inc. (“Complainant”), represented by Adam J. Bruno of Bay State IP, LLC, Massachusetts, USA. Respondent is Boston Sports Medicine and Research Institute (“Respondent”), represented by Locke Lord LLP, Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bostonsportsmedicine.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Gerald M. Levine as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 4, 2021; the Forum received payment on June 4, 2021.
On June 7, 2021, Network Solutions, LLC confirmed by e-mail to the Forum that the <bostonsportsmedicine.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bostonsportsmedicine.com. Also on June 9, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 6, 2021.
On July 12, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Gerald M. Levine as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a Massachusetts-based physical therapy company. It states throughout the complaint that it holds a registered trademark with the USPTO for BOSTON SPORTS MEDICINE® Reg. 4,746,612 dated June 2, 2015. It also states that it holds another registered mark for the same term, Reg. 5577543 dated October 2, 2018. However, in reviewing the Annexed copies of registration certificates, the Panel notes that Complainant has advertently elevated its rights. The first registration is for a design mark which includes the words “Boston Sports Medicine.” The second registration is a word mark for the same geographic phrase on the Supplemental Register. The importance of these distinctions will be further discussed below. Complainant also states that is has a Massachusetts State Registration for the same geographic phrase, Reg. 64,931 dated June 30, 2002.
For the substance of its claim, Complainant states that Respondent lacks rights or legitimate interests in the <bostonsportsmedicine.com> domain name because Respondent is neither authorized nor licensed to use the BOSTON SPORTS MEDICINE mark in its domain name. Neither does Respondent use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead offers competing services on the disputed domain name’s resolving website.
Complainant contends further that Respondent registered and is using the <bostonsportsmedicine.com> domain name in bad faith. It further contends that Respondent disrupts Complainant’s business for commercial gain by hosting competing services on the disputed domain name’s resolving website. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BOSTON SPORTS MEDICINE mark.
Complainant states that it previously referred clients to a hospital in which Respondent’s principal practiced and that Dr. Gill would have constructive if not actual knowledge of Complainant as early as 2001. In 2014, Complainant discovered Respondent had incorporated its mark in the disputed domain name. It alleges that various persons were confused when trying to locate Complainant it reached the disputed domain name.
After sending cease-and-desist letters, Complainant commenced legal proceedings against Respondent in U.S. District Court, Massachusetts. After meeting with Respondent outside of legal proceedings and without legal counsel, Complainant contends that the parties came to an oral agreement under which “Respondent was bound to cease using the Disputed Domain entirely after a reasonable period for changeover to a new domain and was also bound to prominently feature Complainant as a ‘preferred provider’ of physical therapy services on the Disputed Domain and increase referrals to Complainant as recompense for years of willful and illicit infringement.” Complainant agreed to drop the legal proceeding, which it did. The Panel notes that the parties stipulated to dismissing the legal proceedings “without prejudice.”
B. Respondent
Respondent states that it was formed by Thomas J. Gill, IV, M.D. in 2014. Dr. Gill is an Orthopedic Surgeon specializing in the field of sports medicine. He has worked in the sports medicine field in Greater Boston since 1998. Respondent registered the <bostonsportsmedicine.com> on March, 18, 2014 because it was available and was a shortened form matching the name of his new business, Boston Sports Medicine and Research Institute, LLC. He continues that while he may have been aware of Complainant providing physical therapy services when he formed Respondent and registered the domain name he had no knowledge that such a descriptive term could be owned as a trademark.
Respondent states that it has rights and legitimate interests in the <bostonsportsmedicine.com> domain name. In his affidavit, Dr. Gill describes Respondent’s practice as unrelated to and different from Complainant’s business. Respondent does not offer physical therapy services and Complainant does not offer surgical services. The parties do not complete. Dr. Gill states that “to the contrary, Respondent refers patients to qualified physical therapists.”
Dr. Gill states that he has been recognized most every year since 2014 as one of the “Best Doctors in America” by Best Doctors, Inc. and one of the “Top Doctors in Boston” in the field of “Sports Medicine” by Boston Magazine. Dr. Gill has served as the primary physician for the New England Patriots, Boston Red Sox, Boston Breakers, Boston Ballet, and as the Boston-area Medical Director for men’s and women’s World Cup and CONCACAF Gold Cup.
In conclusion, Respondent states that Complainant has failed to demonstrate bad faith or that Respondent had constructive knowledge of Complainant at the time it registered the <bostonsportsmedicine.com> domain name. Respondent acknowledges that Complainant commenced a federal action as it describes, which Respondent answered by denying the allegations. The federal action was dismissed in December 2017 without the parties reaching any agreement.
Dr. Gill acknowledges that Complainant proposed a business relationship but he denies that he ever agreed to cease using of the disputed domain name or to forming any kind of business relationship with Complainant. Dr. Gill denies that the parties agreed orally to anything. He denied the allegations in the federal complaint and continues to deny that the registration of <bostonsportsmedicine.com> was unlawful or that Respondent is a cybersquatter.
Claimant’s dispute with Respondent previously ripened into a federal lawsuit for trademark infringement under 15 U.S.C. § 1125(a) and other relief, but the complaint did not state a claim for cybersquatting under U.S.C. § 1125(d). Thus, a threshold issue in this matter is whether the dispute belongs in a UDRP proceeding. Is it a claim for trademark infringement or cybersquatting? Complainant’s contention that Respondent is liable for breach of an oral agreement appears to point to trademark infringement. In any event, the parties stipulated to dismiss the lawsuit without prejudice (undated but filed on December 1, 2017) without entering into any formal agreement.
Since the federal lawsuit was dismissed without prejudice and since it did not state a claim for cybersquatting, the Panel finds that Complainant’s claim that Respondent registered and is using <bostonsportsmedicine.com> in bad faith is properly before it. However, the contention that bad faith registration and use of the disputed domain name is supported by Respondent’s alleged breach of an oral agreement is outside the scope of the UDRP.
For the reasons more fully set forth below, the Panel finds as follows:
1. Complainant has standing to maintain the UDRP proceeding in that the subject domain name is identical or confusingly similar to the words contained in its design mark, but this finding comes with an asterisk because the USPTO refused the corresponding word mark and Complainant registered it on the Supplemental Register;
2. Complainant has not demonstrated that Respondent lacks rights or legitimate interests in <bostonsportsmedicine.com>; and
3. Complainant has not demonstrated that Respondent registered and is using the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent 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.
Complainant has shown that it has a registered design mark that includes the words “Boston Sports Medicine” on the Principal Register. I have already noted that Complainant does not have a registered trademark for the words standing alone and that the use of the ® symbol misrepresents its trademark by creating the misimpression that it has a word mark. The ® symbol properly belongs on [IMAGE OMITTED].
Complainant did make application for the word mark, but the USPTO refused it for the Principal Register on the grounds that the phrase was Primarily Geographically Descriptive. Owning a mark on the Supplemental Register is not such a right as would support standing in a UDRP proceeding. The filing dates for the registrations postdate the registration of <bostonsportsmedicine.com>. The domain name is identical to the words in the design mark.
Because the alleged mark is primarily geographically descriptive Respondent urges the Panel to find that Complainant has not established secondary meaning for the design mark and thus does not meet the test under paragraph 4(a)(i) of the Policy. However, this would be premature. The fact that Complainant has a registered mark for a design plus words, is sufficient to meet the low bar for establishing standing where the words are either identical or confusingly similar to the mark in which Complainant has a right.
Accordingly, although the question is close as to whether the phrase “Boston Sports Medicine” standing alone is or is not distinctive or merely geographically descriptive, the Panel finds that Complainant satisfies the paragraph 4(a)(i) requirement.
A complainant has the further burden of demonstrating that respondent lacks rights or legitimate interests in the subject domain name. It can do this by offering prima facie proof of its contention on this issue. If it succeeds on a prima facie showing that a respondent lacks rights or legitimate interests the burden then shifts to respondent to rebut the contention that it lacks rights or legitimate interests in the disputed domain name.
The underlying assumption in this complaint is that Dr. Gill was inspired by Complainant’s use of a descriptive phrase to register and thereby anticipate its registration as a trademark. It contends that Respondent registered <bostonsportsmedicine.com> with constructive if not actual knowledge of its rights to the mark. However, since the mark did not exist when the domain name was registered, and Respondent was the first to register an available domain name, unless there is evidence to the contrary that Respondent registered the domain name for its accrued goodwill, Respondent’s registration was lawful.
To establish that Respondent lacks rights or legitimate interests in <bostonsportsmedicine.com> it is not enough to allege that Respondent must have known of Complainant’s alleged common law rights. What to one party is inconceivable to another is easily answered. Dr. Gill testifies in his accompanying affidavit that “[w]hile Complainant may have referred a few patients to hospitals where I have worked before 2014, I never understood that name to be more than a descriptive phrase to identify a sports medicine services offered in the Boston metropolitan area.”
That Complainant states in its trademark application that its first use in commerce dated to 2003 is not a conclusive fact. It may have used the descriptive phrase but its use is not conclusive that it functioned as a trademark. The fact that the USPTO refused the word mark for the Principal Register, even though it accepted the phrase in the design mark discredits that the phrase ever achieved secondary meaning. There is no proof that consumers, Dr. Gill or any other practitioner in the sports medicine field would recognize the phrase as being exclusively associated with Claimant.
Indeed, Dr. Gill has brought to the Panel’s attention the unsurprising news that there are many physical therapy services in Boston, including Boston Sports Medicine and Performance Group. He also persuasively shows that Complainant and Respondent provide different services, although there may be some overlap. Where a mark owner such as Complainant chooses a descriptive term as its symbol for marketing its services, it should not be surprised that others in the same field of medicine use the same term without knowing that another practitioner claims to own it as a common law mark. It would be far too tenuous as evidence that Respondent lacks rights or legitimate interests to hold otherwise.
Complainant cites several cases that it argues supports its contention that Respondent lacks rights or legitimate interests, but this Panel finds that the facts in those cases are substantially different from the facts in this case and distinguishable. In this case, as I have already noted, the USPTO refused the word mark “Boston Sports Medicine” for the Principal Register, even though it accepted the design mark containing the same words. In the cited cases, even where a Panel found distinctiveness in a common law mark, the marks were not only distinctive in a trademark sense of qualifying for registration on the Principal Register, they were also distinctive in a semantic sense by featuring uncommon combinations of words used suggestively or arbitrarily.
The cited cases with their uncommon combinations of words are as follows: “Brake Squad” (The Brake Squad Inc. v. Stephen, Newman, FA1707001740457 (Forum August 24, 2017); and “Anytime Fitness” (Anytime Fitness, LLC v. Clintenaragona, FA1210001467318 (Forum December 4, 2012). In Coryn Group, Inc. v Media Insight, FA 198959 (Forum December 5, 2003) the domain names in issue “not only comprise Coryn’s registered SECRETS mark, they are identical to the hotel names SECRETS EXCELLENCE and SECRETS CAPRA used by Complainant for its hotels.” The uncommon combination of words in Chip Merch, Inc. v. Blue Star Elect., D2000-0474 (WIPO August 21, 2000) is “Chip Merchant.”
Thus, the Panel finds that far from Respondent lacking rights or legitimate interests in <bostonsportsmedicine.com> it has offered substantial proof that it does. While the USPTO may have accepted the descriptive phrase “Boston Sports Medicine” as anchored to the design, the fact that it refused the word mark for the Principal Register is compelling evidence that phrase has never achieved secondary meaning.
For these reasons, the Panel finds that Complainant has not satisfied paragraph 4(a)(ii) of the Policy.
In view of the above finding that Complainant has failed on its paragraph 4(a)(ii) burden, it is unnecessary to consider the issue as to whether Respondent registered and is using the subject domain name in bad faith. This is especially so where a domain name predates the alleged trademark and Complainant offers no evidence that its earlier use of a descriptive phrase functioned as a trademark.
The Panel notes that a good deal of Complainant’s argument for bad faith hinges on an alleged oral agreement which the Respondent denies. Where parties are in disagreement over an alleged material fact a UDRP Panel is in no position to rule on the issue. Rather, the issue as Complainant fully expresses it appears to sound in trademark infringement which can only be resolved by a court of competent jurisdiction.
For the above reasons, Complainant has not satisfied its burden under paragraph 4(a)(iii) of the policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <bostonsportsmedicine.com> domain name shall REMAIN with Respondent.
Gerald M. Levine, Panelist
Dated: July 19, 2021
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