TrueKare, LLC v. Carlos Manuel dos Santos Azevedo
Claim Number: FA1403001546541
Complainant is TrueKare, LLC (“Complainant”), represented by Peter C. Lemire, Colorado, USA. Respondent is Carlos Manuel dos Santos Azevedo (“Respondent”), represented by Eric E. Westerberg, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <true-kare.com>, registered with Arsys Internet, S.L. d/b/a Nicline.com.
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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 3, 2014; the National Arbitration Forum received payment on March 3, 2014. The Complaint was submitted in both English and Portuguese.
On March 6, 2014, Arsys Internet, S.L. d/b/a Nicline.com confirmed by e-mail to the National Arbitration Forum that the <true-kare.com> domain name is registered with Arsys Internet, S.L. d/b/a Nicline.com and that Respondent is the current registrant of the name. Arsys Internet, S.L. d/b/a Nicline.com has verified that Respondent is bound by the Arsys Internet, S.L. d/b/a Nicline.com 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 March 24, 2014, the Forum served the Portuguese language Complaint and all Annexes, including a Portuguese language Written Notice of the Complaint, setting a deadline of April 14, 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@true-kare.com. Also on March 24, 2014, the Portuguese language 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 English language Response was received and determined to be complete on April 11, 2014.
On April 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
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
Policy ¶ 4(a)(i): Complainant’s Rights and Identical Nature of Domain Name
Complainant argues that the TRUEKARE mark has been used in connection with Complainant’s breast prostheses medical products. Complainant alleges that it registered the mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,346,230 on July 1, 2008).
Respondent’s <true-kare.com> domain name is confusingly similar to the TRUEKARE mark. The domain name adds a hyphen and the generic top-level domain (“gTLD”) “.com.” Neither change distinguishes the domain name from the mark.
Policy ¶ 4(a)(ii): Respondent Lacks Rights and Legitimate Interest
Respondent has not been known by the <true-kare.com> domain name. Respondent is not authorized to use the TRUEKARE mark in any way. The WHOIS record lists “Carlos Manuel dos Santos Azevedo” as the domain name’s registrant. As such there is no association between Respondent and the domain name.
Respondent operates a business in the similar medical field as Complainant.
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use and Registration
Respondent is using the <true-kare.com> domain name to act in bad faith by disrupting Complainant’s business. Respondent and Complainant are both engaged in the same medical industry.
Respondent is profiting through the likelihood that Internet users will believe that Respondent’s offerings through the <true-kare.com> domain name are related to Complainant’s TRUEKARE mark.
Respondent had actual or constructive notice of the TRUEKARE mark prior to registration of the domain name.
Respondent registered the <true-kare.com> domain name October 21, 2010.
B. Respondent
Respondent’s Contentions
Policy ¶ 4(a)(ii): Respondent’s Rights in the Domain Name
Respondent is a shareholder of the company True-Kare, Servicos e Equipamentos, Lda, a company in Portugal. See Response, at Annex A, Aff. of Azevedo ¶ 1. Respondent uses the <true-kare.com> domain name to provide services for the care of elderly individuals. Respondent owns two valid trademarks for the TRUE-KARE mark with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 9,577,446 registered June 3, 2011). Respondent’s elder care services are not remotely competitive to Complainant’s breast prostheses goods.
Policy ¶ 4(a)(iii): Respondent Lacks Bad Faith Use and Registration
Respondent has never offered up the <true-kare.com> domain name for sale. Respondent needs the domain name to provide its elder care TRUE-KARE business a home on the Internet.
Respondent is merely operating its own business through the <true-kare.com> domain name. This business is not competing with, or disruptive towards, Complainant’s breast prostheses business.
Respondent did not create a likelihood of confusion. Both of the parties businesses offer distinctively different services. Both of the parties’ trademarks cover completely different goods and services. No harm or confusion can be attributed to Respondent when none of Complainant’s customers could find breast prostheses goods or services on Respondent’s website.
The Panel notes that the Registration Agreement is written in Portuguese, thereby making the language of the proceedings in Portuguese. However, Respondent’s response is written in English and thus suggests that Respondent—or at the least, Respondent’s counsel—is competent with the English language.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Portuguese language Complaint and Commencement Notification, and, in light of the English language Response, determines that the remainder of the proceedings may be conducted in English.
Complainant has registered the TRUEKARE mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,346,230 on July 1, 2008).
Respondent registered the <true-kare.com> domain name on October 21, 2010.
Respondent is a shareholder of the company True-Kare, Servicos e Equipamentos, Lda, a company in Portugal.
Respondent owns two valid trademarks for the TRUE-KARE mark with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 9,577,446 registered June 3, 2011).
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 argues that the TRUEKARE mark has been used in connection with Complainant’s breast prostheses medical products. Complainant alleges that it registered the mark with the USPTO (Reg. No. 2,346,230 on July 1, 2008). The Panel agrees that Complainant’s rights in the TRUEKARE mark are evidenced by this USPTO registration, and the Panel finds that these rights are enforceable as against a Portuguese company such as Respondent in accordance with Policy ¶ 4(a)(i). See Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
Complainant next argues that Respondent’s <true-kare.com> domain name is confusingly similar to the TRUEKARE mark. Complainant notes the domain name adds a hyphen and the gTLD “.com.” Complainant believes that neither change distinguishes the domain name from the mark. The Panel agrees that the <true-kare.com> domain name is virtually identical to the TRUEKARE mark, as the mere addition of hyphens or a gTLD are relevant and distinctive additions to a trademark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Thus the Panel finds the domain name to be identical to the TRUEKARE mark under Policy ¶ 4(a)(i).
Respondent explains that he is a shareholder of the company True-Kare, Servicos e Equipamentos, Lda, a company in Portugal. See Response, at Annex A, Aff. of Azevedo ¶ 1. Respondent also states that the business uses the <true-kare.com> domain name to provide services for the care of elderly individuals. Respondent demonstrates that it owns two valid trademarks for the TRUE-KARE mark with the OHIM (e.g., Reg. No. 9,577,446 registered June 3, 2011). Respondent argues its business is bona fide because elder care services are not remotely competitive to Complainant’s breast prostheses goods. The Panel here agrees that Respondent’s efforts in achieving OHIM registration sufficiently illustrate that Respondent’s business, as exhibited through the domain name, is bona fide within the meaning of Policy ¶ 4(c)(i). See Invicta Watch Co. of Am., Inc. v. Santana, FA 727672 (Nat. Arb. Forum Aug. 3, 2006) (“Moreover, Respondent used the domain name <invicta.com> for a significant period of time for business purposes, thus further highlighting his rights and legitimate interests in the title. Respondent alleges that at all times his business was entirely unrelated to that carried on by Complainant.”).
The Panel finds that Respondent has demonstrated rights and legitimates interests over the disputed domain name.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel has concluded that Respondent has rights or legitimate interests in the <true-kare.com> domain name pursuant to Policy ¶ 4(a)(ii), and, therefore, the Panel also finds that Respondent did not register or use the disputed domain name 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.”).
The Panel further finds that Respondent has not registered or used the <true-kare.com> domain name in bad faith, considering it has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent argues that it has never offered up the <true-kare.com> domain name for sale. Respondent explains that it needs the domain name to provide its elder care TRUE-KARE business a home on the Internet. As Complainant has not alleged that Respondent sought to sell this domain name, the Panel understands there is no dispute as to the inapplicability of Policy ¶ 4(b)(i) bad faith.
Respondent notes the differences between the products and services it sells through the TRUE-KARE mark, and Complainant’s breast prostheses goods sold under the TRUEKARE mark. The Panel agrees that there is not a sufficient competitive nexus between the two parties to allow a finding of Policy ¶ 4(b)(iii) bad faith disruption. See Election Systems & Software, Inc. v. Stewart, FA 805224 (Nat. Arb. Forum Nov. 14, 2006) (Where the respondent registered the disputed domain name to reflect one of the products available from Respondent, the panel did not find bad faith pursuant to Policy ¶ 4(b)(iii)).
Respondent further argues that it did not create a likelihood of confusion. Respondent notes that both of the parties’ businesses offer distinctively different services. Respondent further claims that both of the parties’ trademarks cover completely different goods and services. Respondent believes that no harm or confusion can be attributed to Respondent when none of Complainant’s customers could find breast prostheses goods or services on Respondent’s website. The Panel here agrees that Respondent’s independent and unrelated business through the <true-kare.com> domain name is unique enough from Complainant’s business that it is unlikely that Internet users will believe that the elder care services offered from Respondent are related to Complainant’s breast prostheses goods. See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created). Therefore, the Panel does not find bad faith under Policy ¶ 4(b)(iv).
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 <true-kare.com> domain name REMAIN WITH Respondent.
Luiz Edgard Montaury Pimenta, Panelist
Dated: May 05, 2014
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