HealthNow New York Inc. v. Claire Calladine
Claim Number: FA1302001485672
Complainant is HealthNow New York Inc. (“Complainant”), represented by Patrick A. Quinlan, New York, USA. Respondent is Claire Calladine (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <911healthnow.com> and <911healthnow.org>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Honorable Nelson A. Diaz, Honorable James A. Carmody, Dr. Reinhard Schanda, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2013; the National Arbitration Forum received payment on February 18, 2013.
On February 19, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <911healthnow.com> and <911healthnow.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 February 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2013 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@911healthnow.com, postmaster@911healthnow.org. Also on February 26, 2013, 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 March 18, 2013.
On April 2, 2013, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Nelson A. Diaz, Honorable James A. Carmody, Dr. Reinhard Schanda, Chair, as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it owns rights in its HEALTH NOW mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,457,947 registered June 5, 2001).
Complainant further contends that Respondent’s <911healthnow.com> and <911healthnow.org> domain names are confusingly similar to Complainant’s HEALTH NOW mark. Respondent’s domain names incorporate Complainant’s entire HEALTH NOW mark with the addition of “911” and the generic top-level domain (gTLD) “.com” and “.org.”
Complainant further contends, that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the <911healthnow.com> and <911healthnow.org> domain names evidenced by the WHOIS information provided by Respondent. Further Respondent is not engaged in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Respondent registered the disputed domain names in 2007, which was after Complainant registered its mark.
Finally Complainant contends, that Respondent registered and is using the <911healthnow.com> and <911healthnow.org> domain names in bad faith. Respondent is using the domain names to resolve to websites featuring advertisements for medical programs and services. Respondent is preying upon the goodwill associated with Complainant’s HEALTH NOW mark and its business thereby causing confusion for Complainant’s potential customers.
Respondent’s use of the disputed domain names disrupts Complainant’s business by redirecting unsuspecting internet users to a Respondent’s website and away from Complainant’s business. Respondent is using the disputed domain names to commercially profit from its resolving websites featuring advertisements for health programs and medical services.
B. Respondent
Respondent claims that it has rights in the <911healthnow.com> and <911healthnow.org> domain names. Respondent contends that it’s disputed domain names are comprised of a four-part mark. Respondent’s use of “911” refers to the September 11 World Trade Center attack. Using “911” as an emergency services is a secondary connotation.
According to Respondent it is unlikely that Internet users would mistake the <911healthnow.com> and <911healthnow.org> domain names with Complainant’s two party HEALTH NOW mark. The disputed domain names and Complainant’s business deal with different subject matter. A Google search for Respondent versus Complainant results in search findings that do not overlap. The identical word mark HEALTH NOW was registered on December 21, 1992 by (non-party) Health Now Products, Inc. of Woodside, California before Complainant’s registration. Complainants rights in the HEALTH NOW mark do not extend beyond the two word limit.
Respondent contends that it has rights or legitimate interests in the disputed domain names. Respondent’s company was officially registered by the Internal Revenue Service as a non-profit charity. Respondents business is a public service aimed at helping those who survived the September 11 attacks. The activities in which Respondent partakes, indicates that Respondent is making a bona fide offering of goods or services.
Respondent contends that it is not trafficking off the good name of Complainant. Respondent does not offer health care insurance or health care services and is a not-for-profit entirely volunteer organization. The health programs and medical services on Respondent’s websites are government backed programs and are not similar to Complainant’s services.
Finally Respondent alleges that it is not using the <911healthnow.com> and <911healthnow.org> domain names in bad faith. Respondent is not making a profit from is use of the disputed domain names. Respondent’s disputed domain names resolve to websites serving a completely different genre of people from Complainant’s target audience.
The Panel finds that:
1. the Domain Names <911healthnow.com> and <911healthnow.org> are confusingly similar to Complainant’s mark,
2. the Respondent has established rights and legitimate interests in the Domain Names <911healthnow.com> and <911healthnow.org>, and
3. the Respondent has not registered and is not using the Domain Names <911healthnow.com> and <911healthnow.org>, 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 that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant contends it has rights in the HEALTH NOW mark through its registration with the USPTO (Reg. No. 2,457,947 registered June 5, 2001).
Previous panels have found that evidence of registration with a trademark agency such as the USPTO is sufficient to establish rights in a given mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel agrees and finds that Complainant has rights in the HEALTH NOW mark pursuant to Policy ¶ 4(a)(i) through its registration with the USPTO.
Compainant argues that Respondent’s <911healthnow.com> and <911healthnow.org> domain names are confusingly similar to Complainant’s HEALTH NOW mark under Policy ¶ 4(a)(i). Complainant claims that its HEALTH NOW mark is entirely incorporated within Respondent’s <911healthnow.com> and <911healthnow.org> domain names with the addition of the numbers “911.” Complainant claims that adding “911” to Complainant’s name does not mitigate the potential for confusion because it is a description of a time when health services may be needed. Complainant also points out that Respondent adds the gTLD “.com” and “.org” to Complainant’s mark. The Panel notes that Respondent also removes the space between HEALTH and NOW.
Previous panels have found that these variations are insufficient to differentiate a disputed domain name from a given mark under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Nintendo of Am., Inc. v. Lizmi, FA 94329 (Nat. Arb. Forum Apr. 24, 2000) (finding that the respondent’s domain names <pokemon2000.com> and <pokemons.com> are confusingly similar to the complainant’s mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). This Panel finds that Respondent’s <911healthnow.com> and <911healthnow.org> domain names are confusingly similar to Complainant’s HEALTH NOW mark pursuant to Policy ¶ 4(a)(i).
Respondent claims that it has rights and legitimate interests in the disputed domain names because the registrant, “Claire Calladine” is the President and co-founder of Respondent’s 9/11 Health Now, Inc. business. Respondent claims that Respondent’s business is registered by the Internal Revenue Services as a non-profit charity. Respondent also claims that it is registered with the New York State Department of State under Certificate of incorporation #080321000368 issued March 21, 2008.
Previous panels have found rights and legitimate interests in a domain name that reflects a respondent’s company name. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name). The Panel finds that in this case respondent is commonly known by the <911healthnow.com> and <911healthnow.org> domain names under Policy ¶ 4(c)(ii).
Respondent alleges that it has a legitimate interest in the disputed domain names because it is making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed domain names to lobby for September 11 health legislation, and organize the first major rally for September 11 Health in Washington D.C. Respondent claims its websites are also information sources for September 11 Health on the Internet. Respondent claims that its websites also function as a liaison between the community and elected officials to aid in organizing financial disability aid and assessment. Respondent claims it does not offer health care insurance or health care services. Respondent claims it is not taking advantage of the good faith associated with Complainant’s business, as the marks function in two separate areas of content matter.
Previous panels have found that a respondent is making a bona fide offering of goods or services when a respondent uses a disputed domain name to describe the content of its site. See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (stating that “Respondent is using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site,” as evidence that the respondent was making a bona fide offering of goods or services with the disputed domain name). Previous panels have also found that a respondent is making a noncommercial or legitimate use of a domain name where respondent was not receiving funds in connection with its use. See Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that the respondent has rights in the <missionsuccess.net> domain name where she was using the domain name in connection with a noncommercial purpose). The Panel finds that Respondent has rights and interests in the <911healthnow.com> and <911healthnow.org> domain names under Policies ¶¶ 4(c)(i) and (iii).
Respondent claims that it is a not-for-profit charity and is therefore not profiting from the content featured on the websites resolving from its disputed domain names. Respondent claims that it is operating on a budget drawn from tax-deductible donations and all officers are volunteers, with no salary associated with the disputed domain names. Respondent claims that the content of its resolving websites has nothing to do with traditional medical services or health insurance and only targets the September 11 community.
Previous panels have found that a respondent has not registered a disputed domain name in bad faith where it has a legitimate, noncommercial interest in the disputed domain name. See DJF Assocs., Inc. v. AIB Commc’ns, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding the respondent has shown that it has a legitimate interest in the domain name because the respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute); see also Brasserie Alamaza S.A.L. v. Orbyt, D2004-0799 (WIPO Jan. 13, 2005) (holding that it is not necessary for the panel to make a finding of bad faith under Policy ¶ 4(a)(iii) where the respondent has sufficiently established its rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii)). As a result the Panel finds that Respondent did not register or use the <911healthnow.com> and <911healthnow.org> domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Since the Panel concludes that Respondent has rights or legitimate interests in the <911healthnow.com> and <911healthnow.org> domain names pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). 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.”).
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 <911healthnow.com> and <911healthnow.org> domain name REMAIN WITH Respondent.
Honorable Nelson A. Diaz, Honorable James A. Carmody,
Dr. Reinhard Schanda, Chair, as Panelists.
Dated: April 9, 2013
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