Ammar Jarrous, MD v. Amarillo Cardiovascular
& Thoracic Surgery
Claim Number: FA1002001306970
PARTIES
Complainant is Ammar Jarrous, MD (“Complainant”), represented by Chris Stewart, of Law Office of Chris Stewart, P.C., Texas, USA. Respondent is Amarillo Cardiovascular & Thoracic Surgery (“Respondent”), represented by Andrew Little, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amarilloveins.com>,
registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum on February 5, 2010, the
Forum notified Complainant that the Complaint was deficient pursuant to
UDRP Rule 4(b).
On February 25, 2010, Complainant requested
the Forum Dismiss the Complaint Without Prejudice in
accordance with the Forum’s Supplemental Rule 12(a).
On February 26, 2010, the Forum granted
Complainant’s request to Dismiss the Complaint Without
Prejudice pursuant to the Forum’s Supplemental Rule 12(a).
Complainant then re-filed a Complaint with
the National Arbitration Forum on March 29, 2010 under the Rules for Uniform
Domain Name Dispute Resolution Policy (“Rules”) and the Forum’s Supplemental
Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”)
that became effective March 1, 2010.
On March 29, 2010, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <amarilloveins.com>
domain name is registered with Godaddy.com, Inc. and that the Respondent is the
current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc.
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 April 2, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of April 22,
2010 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@amarilloveins.com. Also on April 2, 2010, the Written Notice of
the Complaint, notifying Respondent of the email 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 April
21, 2010.
On April 30, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges that he has common law rights to the service
mark AMARILLOVEIN.COM in connection with varicose vein removal and related
medical services. The Complainant has
continuously used its service mark since February 2007. A web site corresponding to that service mark
was registered on that date and has been aggressively advertised since that
time.
According to the Complainant, the Respondent registered the disputed
domain name in January 2008. That domain
name is confusingly similar to the Complainant’s mark and has not been used by
the Respondent in conjunction with its business, which is cardiovascular
and surgery, and treatment of varicose veins.
The Complainant states that he and the Respondent shared a medical
practice from 2001 to 2003 and that their split was not amicable. He states that the Respondent chose a nearly
identical, confusingly similar domain name only after he learned of the
Complainant’s web site and aggressive marketing campaigns.
The Complainant alleges that the Respondent did not make any
demonstrable preparations to use the disputed domain name in connection with a
bona fide offering of good or services prior to February 2007. Since the disputed domain name is so similar
to the Complainant’s service mark, the Respondent’s use cannot be legitimate.
Indeed, says the Complainant, the Respondent’s bad faith is
demonstrated by the close proximity of the businesses, similarity of services, similarity of advertising channels, actual confusion, and
the Respondent’s knowledge of the Complainant’s service mark.
According to the Complainant, the Respondent is intentionally
attempting to attract, for commercial gain, Internet users to his website by
creating a likelihood of confusion with the Complainant’s service mark as to
the source, sponsorship, affiliation, or endorsement of the Respondent’s web
site. Such conduct constitutes evidence
of bad faith use and registration under the Policy.
The Complainant states that there is considerable evidence of actual
confusion. Further, given the
competitive relationship and past history between the Complainant and the
Respondent, the Respondent must have been aware of the Complainant’s service
mark when he registered the disputed domain name. And he did that primarily for the purpose of
disrupting the Complainant’s business, which establishes bad faith use and
registration in the sense of the Policy.
B. Respondent
The Respondent alleges that the Complainant does not possess the
necessary common law trade mark in the name AMARILLO VEIN because that phrase
is too generic to have acquired any secondary meaning. Any physician in Amarillo who offered medical
services related to the cardiovascular system might legitimately claim a
non-exclusive use in the words Amarillo and vein. Therefore, no single physician who makes use
of these words in his advertising (including the parties in the present case)
can claim exclusive rights to a domain name based on generic terms.
The Respondent states that, contrary to what
the Complainant alleges, he has made substantial use of print advertising to
promote treatment for varicose veins. Further, the Respondent
disputes the statement that there has been actual confusion on the part of
Internet users.
According to the Respondent, it is clear that he has been using the
disputed domain name for a bona fide offering of services long before he became
aware of any dispute with the Complainant.
Indeed, the disputed domain name was registered in January 2008, while
the first notice of the present dispute was when the Complaint was filed in
February 2010.
The Respondent states that he has legitimate interests and rights in
the disputed domain name because it is merely a description of part of the
medical services (vein surgery) that he offers in the city of Amarillo. It should be no surprise that two physicians
in the same city who both treat varicose veins might have similar generic
domain names.
The Respondent alleges that the fact that the component parts of the
disputed domain name are generic is a defense to the allegation of bad faith
registration. Further, he did not choose
the disputed domain name himself, it was suggested by a third-party medical
devices and pharmaceutical firm.
The Respondent states that the Complainant has not provided any
evidence to support his allegation that the Respondent registered the disputed
domain name for the purpose of disrupting the Complainant’s business, nor has
the Complainant provided any evidence of actual consumer confusion.
The Respondent confirms that he had a business relation with the
Complainant and that it ended on strained terms.
The Respondent concludes by saying that the Complainant’s decision to
make wholly untrue and unsupportable statements leads to the conclusion that
the Complaint was brought in bad faith and to harass the Respondent, so the
Panel should find Reverse Domain Name Hijacking.
FINDINGS
The Complainant and the Respondent are
competitors: both offer surgical services which include treatment of varicose
veins and both operate in the city of Amarillo.
The Complainant and the Respondent were
associated in the past, but parted on unfriendly terms.
The Complainant registered, and started to
use, the service mark AMARILLO VEIN in February 2007.
The Respondent registered, and started to
use, the disputed domain name in January 2008.
The present dispute was initiated in February
2010.
The disputed domain name consists of a
geographical term (Amarillo) and a generic term (veins). Those terms are related to the services
offered by both parties.
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.
The Complainant does not have a registered
mark. But it is well established under
the Policy that a trademark registration with a governmental authority is not
necessary to establish rights in a mark, provided the Complainant can establish
common law rights in the mark through a showing of secondary meaning associated
with the mark.
The Respondent asserts that the Complaint has
not, and cannot, establish common law rights because the term in question,
AMARILLO VEINS, is too generic to have acquired secondary meaning.
For the reasons set forth below, the Panel
finds that it need not make a decision regarding this element of the Policy.
It is clear from
the evidence that the Respondent is using the disputed domain name in
conjunction with his cardiovascular medical practice, and that he offers
varicose vein surgery as part of the practice.
Further, that use of the disputed domain name preceded the instant
dispute. Thus the Respondent has made a bona fide offering of goods or services
under Policy ¶ 4(c)(i). See
Martello v. Cockerell &
Assocs., FA 346319 (Nat.
Arb. Forum Dec. 13, 2004) (finding that the respondent’s use of the
<skindeep.com> domain name to provide information on its demapathology
services was a bona fide offering of goods or services under Policy ¶
4(c)(i) despite the complainant’s registration of the
SKIN DEEP mark with the USPTO and use of the mark in connection with similar
services); see also Russell & Miller, Inc. v. Dismar Corp.,
FA 353039 (Nat. Arb. Forum Dec. 20, 2004) (finding that the respondent used the
<salesigns.com> domain name for a bona fide offering of goods or
services, which was established by the respondent’s “longstanding involvement
in the ‘sale sign’ market and its use of a descriptive domain name to further
its competition in that market”).
Since the Respondent has rights or legitimate
interests in the disputed domain name, it follows that he did not register or
use the disputed domain name in bad faith in the sense of the Policy. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding
that the issue of bad faith registration and use was moot once the panel found
the respondent had rights or legitimate interests in the disputed domain name);
see also Vanguard Group Inc. v. Investors Fast Track, FA 863257
(Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate
interests in the disputed domain name, his registration is not in bad faith.”).
It does without saying that this finding is
without prejudice to what a national court might or might not conclude if one
of the parties chose to initiate a national action under national law.
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:
Reverse Domain Name
Hijacking means using
the Policy in bad faith to attempt to deprive a registered domain-name holder
of a domain name.
The Respondent invokes this provision when it
requests the Panel to find that the Complainant is using the Policy in a bad
faith attempt to deprive a registered domain name holder of a domain name.
The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Carolyn Hughes, <smartdesign.com> D2000-0993 (WIPO, October 18, 2000):
Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.
These conditions are confirmed in Goldline International, Inc. v. Gold Line, <goldline.com> D2000-1151 (WIPO, January 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Limited, <sydneyoperahouse.net> D2000-1224 (WIPO, October 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, <planexpress.com> D2000-0565 (WIPO, July 17, 2000).
The Respondent has made a convincing case to
the effect that the Complainant should have known that the Respondent had a
legitimate interest (in the sense of the Policy) in the disputed domain
name. However, he has not provided any
evidence of malice aforethought or harassment by the Complainant in the sense
of the Policy.
Therefore, the Panel dismisses the
Respondent’s request for a finding of Reverse Domain Name Hijacking.
DECISION
For all the foregoing reasons, the Panel concludes that relief shall be
DENIED.
The request for a finding of Reverse Domain Name Hijacking is DENIED.
Richard Hill, Panelist
Dated: May 5, 2010
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