Austin Pain Association v. Domain Admin / THIS DOMAIN IS FOR SALE / HugeDomains.com
Claim Number: FA1312001536356
Complainant is Austin Pain Association (“Complainant”), represented by Charles Blevins of Chappell, Lanehart & Stangl, P.C., Texas, USA. Respondent is Domain Admin / THIS DOMAIN IS FOR SALE / HugeDomains.com (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <austinpain.com>, registered with DOMAINTACT 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.
Debrett G. Lyons, the Hon. Charles K. McCotter, Jr (ret.) and Houston Putnam Lowry, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 27, 2013; the National Arbitration Forum received payment on December 27, 2013.
On December 30, 2013, DOMAINTACT LLC confirmed by e-mail to the National Arbitration Forum that the <austinpain.com> domain name is registered with DOMAINTACT LLC and that Respondent is the current registrant of the name. DOMAINTACT LLC has verified that Respondent is bound by the DOMAINTACT 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 January 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2014 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@austinpain.com. Also on January 6, 2014, 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 January 27, 2014.
On February 4, 2013, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett G. Lyons (chair), the Hon. Charles K. McCotter, Jr (ret.) and Houston Putnam Lowry, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in AUSTIN PAIN and alleges that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent broadly denies each of those allegations and submits, in particular, that Complainant does not have exclusive rights to AUSTIN PAIN or AUSTIN PAIN ASSOCIATES through trademark registration or otherwise.
Respondent asserts a right to and legitimate interest in the disputed domain name because Respondent is a reseller of generic domain names that fit a wide range of topics, and Respondent has a particular interest in owning and operating domain names that have geo-locational value to many different cities along with industries in the medical field.
Respondent submits that it did not register the disputed domain name in bad faith because at the time of registration it had no knowledge of Complainant or its claim to trademark rights.
Finally, Respondent seeks a finding of reverse domain name hijacking because Respondent asserts that the Complaint has been brought in bad faith, using misleading, incorrect, and inaccurate information.
Panel took the view that Complainant should be allowed to provide further and better particulars of its claim to trademark rights and so invited Complainant to provide same and allowed Respondent the chance to comment on anything received.
Both parties availed themselves of those opportunities within the time frames set by the Panel Order and that which was provided in addition to the Complaint or added by way of submission is discussed where apposite in the Discussion which follows.
The factual findings pertinent to the decision in this case are that:
1. Complainant operates a number of pain management clinics in Texas doing business as “Austin Pain Associates.”
2. The disputed domain name was registered by “Interventional Pain Associates” on July 27, 2009.
3. Complainant registered the business name “Austin Pain Associates” with the County Clerk of Travis County, Texas on December 20, 2003.
4. Respondent is a domain name reseller.
5. Respondent registered the disputed domain name on January 1, 2013.
6. Respondent has not used the domain name.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Complainant asserts trademark rights in the term AUSTIN PAIN. A trademark registered with a national authority is evidence of trademark rights (see, e.g., State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006)) but in this case there is no evidence of a registration.
Nevertheless, paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights and so-called common law trademark rights may accrue through use and reputation. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000).
The question before Panel is whether Complainant has done enough to prove common law or unregistered trademark rights. To do so it has been said that “[T]he complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition at <http://www.wipo.int/amc/en/domains/search/overview2.0/>; see also AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”)
Complainant claims to have used the name AUSTIN PAIN ASSOCIATES since 2002 and provides evidence of registration of the business name “Austin Pain Associates” in Travis County, Texas on December 20, 2003.
It alleges that it is commonly known by the name AUSTIN PAIN but essentially all of the supporting material provided with the Complaint and in response to the Panel Order shows use of the assumed business name, AUSTIN PAIN ASSOCIATES. Nonetheless, if it can be said that Complainant has trademark rights in that name, then Panel is of the view that Complainant has trademark rights in the truncated form, AUSTIN PAIN, since the word “Associates” adds nothing more of value to the expression “Austin Pain.”
It is far from easy to assimilate the evidence into a sustainable case for unregistered rights. The Texas business name registration from December 2003 is not a substitute for proof of trademark rights in the sense already discussed. See, e.g., Navigo Energy Inc. v. Meier, FA 206312 (Nat. Arb. Forum Dec. 6, 2003) (“The Policy was intended solely to protect registered and unregistered trademarks and not trade names because trade names are not universally protected as are trademarks.”). Registration of the assumed name might be an indication that the name was adopted for use then and may have been used since, but there is no proof of those matters. To the contrary, the date of first use of AUSTIN PAIN ASSOCIATES is vague. Complainant suggests it once owned and lost the disputed domain name but its own evidence in that regard shows that on July 27, 2009 the disputed domain name was registered by “Interventional Pain Associates.” There is no explanation of a connection (if any) between Complainant and Interventional Pain Associates. Complainant has not described the circumstances under which it lost the disputed domain name.
In response to the Panel Order in which Complainant was invited to provide further and better particulars of its trademark rights and, in particular, its claim to a common law trademark right, submissions and some, limited, physical evidence was received.
The submissions are of no assistance and proceed primarily on the mistaken belief that in law the essential element in the establishment of common law rights is proof of first adoption and use. It is not. The foundation of unregistered trademark rights is a proven reputation in the asserted trademark such that use of the same term by another would involve a misrepresentation and potential damage to the person or business associated with that reputation.
Moreover, Respondent correctly contends that the disputed domain name is comprised of generic terms which have been used by a number of third parties including “Austin Pain Therapy Associates, Inc.” and “Austin Pain Society.” Whilst the majority of UDRP panelists have taken the approach that the descriptive or generic character of a domain name is a factor best considered in the context of paragraphs 4(a)(ii) and/or (iii) of the Policy, the potential non-distinctiveness of the trademark nonetheless remains an issue germane to the determination of trademark rights. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
In that regard, the place name, “Austin,” in combination with the ordinary word “pain,” for pain management, do not lend themselves generously towards trademark protection, thus leaving Panel with the awkward task of deciding whether Complainant has done what is necessary to prove trademark rights in an otherwise descriptive term which other traders may wish to use, and as the evidence shows, do in fact use in some form or another.
That task is best approached from the basic proposition that Complainant is required to show rights, not exclusive rights. The determination must then be moderated by the observation that, in general terms, UDRP panelists have approached the proof of trademark rights in keeping with the spirit of the Policy, the aim of which is to provide a quick and effective means of combating abusive domain name registration, and not as a rule with the rigor with which a court might scrutinize a claim.
The physical evidence is largely undated and unimpressive. Nevertheless what can be usefully distilled is that the August 2012 edition of a publication entitled Austin Business Journal reports that Complainant was founded in 2002, has nine clinics and 155 employees. Another article, “Top Doctors”, from <www.austinmonthly.com> in January 2013 lists one of Complainant’s medical practitioners and partners. Finally, a piece of evidence shows that in November 2012 another practice partner gave a presentation to other professionals which counted for “CME” (which Panel assumes in the lack of explanation stands for “continuing medical education”) points.
Although this evidence is meagre it nonetheless points to a medical practice with a substantial employee base providing specialist services with geographical spread outside simply the city of Austin and which has a degree of stature and respect in its field of expertise. On balance, Panel has come to the conclusion that Complainant has done just barely enough to show trademark rights in AUSTIN PAIN.
It remains only for Panel to find that the disputed domain name is legally identical to the trademark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Likewise, the omission of a space does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar. Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests. See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
The publicly available WHOIS information identifies Respondent as “Domain Admin / THIS DOMAIN IS FOR SALE / HugeDomains.com” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark. The domain name is not in use, has never been used and is for sale.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
The only live question is whether the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Respondent states that it is a generic domain name reseller, and submits that the sale of domain names containing generic terms is a bona fide offering of goods or services. Respondent goes on to state that it has a particular interest in domain names with “a geo-locational value” and in names somehow related to the medical field. It provides evidence that it has registered, for example, <austinelectrolysis.com>, <austinmeditation.com>, and <austinneurologist.com>, along with names such as <augustapain.com>, <bocaratonpain.com>, and <centralvalleypain.com>. In short, Respondent claims to have registered 235 domain names that begin with the word “Austin” and 354 domain names that end with the word “pain.”
Panel accepts that Respondent is a domain name reseller and the reasoning of many panels that the business of registering and selling domain names for their generic value is a legitimate business practice protected under the Policy. See, e.g., Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000). However, the issue is not the legitimacy of Respondent’s business model but whether it has a legitimate interest in the disputed domain name. Put another way, the legitimacy of Respondent’s business does not, of itself, create rights or a legitimate interest in a domain name corresponding with the trademark of another. If that trademark is generic, it might say something of the bona fides of the domain name registrant for the purposes of paragraph 4(c)(iii) of the Policy, but the mere genericness does not create a legitimate interest in a domain name if it corresponds with the trademark of another. Whether this issue has been approached as a matter of “willful blindness” of third-party rights, or constructive knowledge of those rights, the same result has followed and so it follows here. Panel finds that Respondent has no rights or interests in the disputed domain name.
Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel makes two preliminary findings. First, it accepts as more likely than not to be true Respondent’s claim that, at the time it registered the disputed domain name, it had no knowledge of Complainant or of its trademark. Accordingly, it would be open to the Panel to decline to find bad faith registration. See U.S. Nutraceuticals, LLC v. Telepathy, Inc., FA 365884 (Nat. Arb. Forum Jan. 17, 2005) (“Without knowledge of Complainant or its claim of right in the mark, it is difficult to see how Respondent could have the specific intent required for it to act in bad faith against the rights of Complainant.”).
Secondly, Panel also accepts that on a balance of the evidence it would appear that, contrary to Complainant’s submission, it was in fact Complainant who first contacted Respondent about purchasing the domain name for USD 6,000. There is no evidence that Respondent reached out to Complainant.
However, Panel has come to the view that Respondent’s actions nonetheless fall under paragraph 4(b)(i) above. In terms of paragraph 4(b)(i), it is indisputable that (a) Respondent’s business requires that it registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration, and (b) Respondent would do so for valuable consideration in excess of the out-of-pocket acquisition costs. It therefore remains only to consider whether it had these intentions apropos Complainant “who is the owner of the trademark or service mark or to a competitor of Complainant” and it stands to reason that is the only class of persons to whom the domain name would have interest.
Panel finds registration and use in bad faith.
Reverse Domain Name Hijacking
No findings required.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <austinpain.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons (chair)
the Hon. Charles K. McCotter, Jr (ret.)
Houston Putnam Lowry
Panelists
March 18, 2014
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