American Medical Response, Inc. v.
Advanced Marketing Resources
Claim Number: FA0208000117380
PARTIES
Complainant
is American Medical Response, Inc.,
Aurora, CO (“Complainant”). Respondent is Advanced Marketing Resources, Huntington Beach, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <amr.com>, registered with Alldomains.com.
PANEL
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 1, 2002; the Forum received a hard copy of the
Complaint on August 2, 2002.
On
August 2, 2002, Alldomains.com confirmed by e-mail to the Forum that the domain
name <amr.com> is
registered with Alldomains.com and that the Respondent is the current
registrant of the name. Alldomains.com
has verified that Respondent is bound by the Alldomains.com registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
August 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 29,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@<amr.com> by e-mail.
A
timely Response was received and determined to be complete on August 29, 2002.
Complainant’s
additional submissions were received on September 3, 2002.
On September 10, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
is American Medical Response, Inc., a corporation located in Colorado, which
engages in emergency medical assistance services and emergency medical
ambulance transportation services. Complainant has used the AMR initials in
association with its services since July 1, 1992. The Complaint is based on
three service marks registered by Complainant.
The AMR initials are the initials of the corporate names.
Respondent’s
domain name is identical to Complainant’s service marks.
Respondent
has no trademarks or service marks. An Internet search reveals no commercial or
other activity for “Advanced Marketing Resources” other than the <amr.com>
website.
Respondent
is not making use or <amr.com> for legitimate commercial or
non-commercial use. Respondent registered the domain name for the purpose of
selling it to Complainant. Complainant contacted Respondent by e-mail to
resolve the dispute. Complainant
offered $10,000.00 to purchase the domain name. Respondent demanded $75,000.00 to sell the domain name. When
Complainant first contacted Respondent on August 1, 2001, <amr.com>
was being used in bad faith with no substantive content.
B.
Respondent
Respondent
is Advanced Marketing Resources located in California. Respondent has been in
the business of building websites, consulting on how to market and generate
sales on the Internet and building valuable Internet marketing resources since 1995.
Respondent
registered the domain name, <amr.com>, for the purpose of
developing a site and marketing its services.
Respondent’s trade name was “Advanced Marketing
Research-<amr.com>”. Respondent
changed the name to “Advanced Marketing Resources.” Respondent has established
a common law trademark in “Advanced Marketing Resources.”
Respondent
has no knowledge of Complainant’s business or any other business that uses the
letters “AMR” as part of the trade name at the time of registration.
Complainant
on numerous occasions attempted to purchase the <amr.com> domain
name from Respondent.
Complainant’s
trademarks are not identical to the domain name.
Many
companies, including Respondent, have established common law trademarks, which
use the letters AMR.
Before
any notice of the dispute, Respondent used the domain name in connection with a
bona fide offering of goods and services.
Respondent has used <amr.com> for many years. Complainant’s
evidence shows Respondent’s use as far back as 1999.
Respondent’s
response to Complainant’s continued request to purchase the domain name was in
good faith.
Respondent
has naturally changed content on the <amr.com> site and has
always had plans to expand its use.
When Complainant first offered to purchase Respondent’s rights in the
domain name, Respondent advised them that it was redeveloping the site and
adding new services. This was completed
around May 2002 as planned. This expanded
the role of <amr.com> to sell ebooks on subjects that
Respondent has been consulting on for years.
B. Additional Submissions
Complainant’s
Additional Response points out that Respondent’s allegations to the effect that
it has a common law trademark in <amr.com> and that Respondent
offered goods and services prior to being contacted by Complainant are mere
bald assertions without supporting proof.
Complainant contends that Respondent conducts a domain name warehousing
business in bad faith.
Respondent,
in the Additional Response, points out that Respondent registered the domain
name on May 23, 1997, over a year before Complainant had any registered
trademarks. Respondent alleges that
Complainant is engaged in Reverse Domain Hijacking.
FINDINGS
1. Complainant is a corporation engaged in
the business of providing emergency medical services and ambulance service.
2. Complainant does not reveal the scope of
its operations, the geographical extent of its services, its revenues, and its
expenditures in promoting any trademark or service mark, or any of the other
information relating to its business.
3. Complainant owns a United States Patent
and Trademark Office Registration dated Feb. 20, 2001 for the service mark,
AMR. The mark consists of the
letters “AMR” superimposed over an outline of the continental United States
which in turn is superimposed over seven horizontal lines; superimposed over
the letters “AM” is a six pointed cross with a caduceus in the center. The Application was filed July 15,
1996. First use in commerce is shown as
Feb. 1, 1993.
4. Complainant owns a United States Patent and
Trademark Office Registration dated Oct. 6, 1998, for the service mark AMERICAN
MEDICAL RESPONSE. The Application was
filed June 7, 1996. First use in
commerce is shown as July 1, 1992.
5. Complainant owns a United States Patent
and Trademark Office Registration dated Oct. 6, 1998, for the service mark AMR. The mark consists of the letters “AMR”
with a six-pointed cross with a caduceus in the center superimposed over the
letters “AM”. There is a lining in the
drawing, which is a feature of the mark. The Application was filed June 10,
1996. First use in commerce is shown as
Jan. 1, 1994.
6. Respondent registered the domain name,
<amr.com>, on May 23, 1997.
7. Neither party presents evidence as to how
<amr.com> was used from May 23, 1997 until 1999.
8. Respondent operated a site under the name
Advanced Marketing Research from 1999 until 2002 when Respondent began
operating as Advanced Marketing Resources.
The site used the domain name, <amr.com> during
these periods.
9. The domain name, <amr.com>
is identical or confusingly similar to Complainant’s mark, AMR.
10. Complainant has rights to the mark, AMR.
11. Respondent has rights or legitimate
interests in the domain name, <amr.com>.
12. Complainant fails to prove that
Respondent registered the domain name, <amr.com>, in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1) the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established rights in the
AMR mark by means of its service mark registrations. Respondent’s <amr.com> domain
name is identical or confusingly similar to Complainant’s mark because it
incorporates Complainant’s entire mark and merely adds the generic top-level
domain name “.com” to the end. The addition of a generic top-level domain name
such as “com,” does not create a distinct mark capable of overcoming a Policy ¶
4(a)(i) identical analysis. See
Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO July 7, 2000).
Respondent argues that Complainant’s
service mark registrations for AMR are not identical to the disputed
domain name because of the devices and lines and caduceus included on the
registrations. However, device marks,
lines and shapes are not to be considered for the purposes of the Policy when,
notwithstanding the devices and marks, the distinctive part of the device is
the letters, AMR. See DCI S.A. v.
Link Commercial Corporation, D2000-1232 (WIPO Dec. 7, 2000) (holding that
straight lines, wavy lines, circles and a triangle as part of the device are
not to be considered as distinctive differences to the mark, when the letters
“5 a sec” is the distinctive part of the device mark so that the domain name
“5asec” was found to be confusingly similar); see also Modern Times Group
(MTG) A B v. Stefan Hage, Kristroms Advokatbyra A B, DTV2000-0004 (WIPO
Jan. 24, 2000) (holding that “figurative elements” will not change a finding of
confusing similarity between a mark and a domain name).
The distinctive part of two of the marks
owned by Complainant is the letters AMR.
The figures and lines associated with the mark do not make the mark
dissimilar from the domain name, <amr.com>, for the purposes set
out in Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant shows that it has not
authorized or licensed Respondent to use the AMR mark. No contention is made by either Complainant
or Respondent that Respondent is the owner of any registered trade or service
mark that is identical to the domain name.
Complainant contends that it has exclusive right to use the mark, AMR. As a result of Complainant’s showing the
burden shifts to Respondent to demonstrate rights and legitimate interests in
the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000).
Respondent first contends that it has
been commonly known as <amr.com>. See Policy
¶4(c)(ii). Respondent presents no
evidence on this point as required, only mere personal assertions. That is not
sufficient to carry the issue. See Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (requiring “concrete evidence” on part of the Respondent
to show rights and legitimate interests.
“Mere personal assertions” are not enough). Respondent contends that Complainant has proved the point for
Respondent by inclusion of a web page from <web.archive.org> showing a
web page titled “Advanced Marketing Research” for the year 1999 under the
domain name, <amr.com>.
Another web page is included in the Complaint for the year 2001 from
the same source with similar content.
If anything, these pages show that
Respondent was known as “Advanced Marketing Research.” It is now known as “Advanced Marketing
Resources.” These web pages do not show
that Respondent was ever known as AMR.
Respondent contends that it has established common law trademark
rights in “Advanced Marketing Resources” and <amr.com>. Respondent provides no evidence to
support this allegation. Respondent
only began using “Advanced Marketing Resources” a few months ago. Any common law rights, which might exist,
are quite limited. The mere
registration of a domain name, by itself, would not constitute use of that domain
name as a trademark. See First Tuesday Limited v. The Startup Generator and
Christopher Stammer, D2000-1732 (WIPO Feb. 12, 2000).
As to AMR, Respondent provides
evidence that Complainant cannot claim the letters as their own exclusively
since other entities use the letters and own trademark and service mark
registrations containing the letters.
Respondent conducted a TESS search and
discovered that the letters AMR comprise a word mark granted to AMR
Corporation Delaware for business management consulting services in aviation
and transportation industries bearing Serial Number 74411310 and Registration
Number 1850845. Date of registration is
shown as August 23, 1994. Respondent
provides another word mark for AMR granted to Advance Memory Research, Inc.
on April 12, 1983 for language instruction programs comprising prerecorded
instructional tapes and printed instructional material pack. Respondent includes from TESS registrations
for AMR Automotive Management Resources, AMR Research, and AMR Investments. In the Response, there is a list of
companies using AMR as part of their names listing the names and websites at
which each can be reached. Included in
the list is AMR Inc, Tucson AZ; AMR, Brazil; AMR, California; AMR Interactive;
AMR Consulting; AMR, Advanced Microsystem Research; AMR Autos; AMR Investments,
Inc., Texas; and others. Respondent ends the list with the notation “Due to
limited space in [R]esponse this is only a small sample of companies using the
letters AMR as a trade name.” Respondent’s
argument is that no entity can have exclusive rights to use the letters AMR.
Respondent contends further that before
any notice of the dispute, Respondent’s use of, or demonstrable preparations to
use, the domain name in connection with a bona fide offering of goods or
services was done. See Policy ¶ 4(c)(i). Respondent bases this argument on simple assertions and the
inclusion of the web page in the Complaint from the year 1999. The web page states “Advanced Marketing
Research” “amr.com” “@amr.com we provide research and consulting to help
companies market on the Internet” “for
information email webmaster@amr.com”
“Center.com” “amr.com is a trademark owned by iventure.” Complainant
included the web page to support its argument that the web page was without
meaningful content. Respondent contends
that it shows use of the domain name for a bona fide offering of services. While it may be correct that Respondent was
simply holding the domain name for a purpose not associated with a bona fide
offering of services, that point cannot be properly examined under the facts
and circumstances presented by the parties in this domain name dispute.
Respondent, under the facts and
circumstances of this case must be given the benefit of the doubt. Respondent is found to have made a bona fide
offering of services under the domain name, <amr.com>. Complainant insists that this decision
should not be made because Respondent did not make use of the domain name
“before notice of the dispute” as required by Policy ¶ 4(c)(i). Complainant bases this argument on the fact
that Complainant filed its Application with the United States Patent and
Trademark Office for AMR in 1996.
Had Respondent done a proper examination it could have found the
Application and been on notice of Complainant’s rights, Complainant
argues. Other Panels have considered
this contention. See Fitter Int’l
Inc. v. Eenable Inc. and Balance Designs, Inc., D2001-0979 (WIPO
Oct. 12, 2001) (where Complainant contended that the notice of the dispute occurred
when Respondent had constructive notice of Complainant’s trademark rights,
which Complainant contended was the date upon which its US Trademark
application was filed. It was held as
follows: “The Panel rejects the
proposition that knowledge of a prior trademark application is ‘notice of any
claim’ for the purpose of Paragraph 4(c)(i) of the Policy…There was, therefore,
no notice of this dispute until after …Respondent had begun to make actual use
of, or preparations to expand the use of, a trademark corresponding to the
domain name in issue in connection with a bona fide offering of goods). This Panel adopts that reasoning and finds
that before any notice of the dispute, Respondent used the domain name for a
bona fide offering of services.
Registration and Use in Bad Faith
Complainant primarily bases its bad faith
argument on the undisputed facts, supported by emails between the parties,
which show an approach made by Complainant to purchase the domain name from
Respondent. After some discussion, Complainant
offered to purchase the domain name for $10,000.00. Respondent countered with a demand for $75,000.00. Complainant did not accept the counteroffer
and filed this domain name dispute.
These emails were exchanged in the year 2001. Complainant must prove under Policy ¶ 4(b)(i) circumstances
indicating that Respondent registered the domain name primarily for the purpose
of selling it to Complainant or a competitor.
Respondent registered the domain name on May 27, 1997. The fact that Respondent considered selling
the domain name in 2001 does not prove that it was registered in 1997 for the
purpose of sale. Respondent contends
that it had never heard of Complainant at the time of the domain name registration. Without some proof offered by Complainant of
why Respondent knew or should have known of its existence, Respondent’s
statement must be taken at face value.
The only proof offered by Complainant on this issue is the service mark
registration for AMR showing that the application was filed in 1996,
about one year before the domain name was registered by Respondent. No service mark registration was granted to
Complainant until 1998.
Complainant asserts that Respondent
should have done an online trademark search for AMR prior to registering
the domain name. Respondent’s failure
to do so, Complainant contends, is bad faith. “The Panel does not believe that,
taken alone, a Respondent’s failure to make use of available online trademark
searching is sufficient to amount to registration in bad faith.” See Fitter
Int’l Inc. v. Eenable Inc. and Balance Designs, Inc. D2001-0979 (WIPO Oct.
12, 2001). (“…[E]ven if such a search would put the would-be
registrant on notice of the Complainant’s trademark, it does not necessarily
follow that bad faith should be found where the domain name and an earlier
registered trademark are identical or confusingly similar. A domain name
registrant may, for example, have good cause for believing that the earlier
trademark registration is invalid or was itself obtained in bad faith”).
Respondent cannot be found to have
registered the domain name in bad faith on the sole ground that it did not
execute a trade name search for the application for a service mark filed by
Complainant. There being no further
grounds advanced on Respondent’s registration and use in bad faith, Respondent
is found not to have registered the domain name, <amr.com> in
bad faith.
Respondent demands a finding under Rule
15 (e). The Panel finds no evidence or
circumstances to show that the Complaint was brought in bad faith. Respondent’s demand for a finding of Reverse
Domain Name Hijacking is denied.
DECISION
IT IS THE DECISION OF THE PANEL THAT THE
COMPLAINT BE DISMISSED AND THE DEMAND FOR TRANSFER OF THE DOMAIN NAME, <AMR.COM>, IS DENIED.
Tyrus R. Atkinson, Jr., Panelist
Dated: Sept 24, 2002
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