Advanced HR Solutions, Ltd. v. Pulse
Healthcare Staffing
Claim Number: FA0401000230257
PARTIES
Complainant
is Advanced HR Solutions, Ltd. (“Complainant”)
represented by Jill McWhirter, of Howrey Simon Arnold & White, LLP, 750 Bering Drive, Houston, TX 77057. Respondent is Pulse
Healthcare Staffing (“Respondent”) represented by Mark R. Leonard, of Davis & Leonard, LLP, 451 Arden Way, Sacramento, CA 95815.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <pulsestaff.com>,
registered with Network Solutions, Inc.
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.
Bruce
E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 20, 2004; the Forum received a hard copy of the
Complaint on January 21, 2004.
On
January 23, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <pulsestaff.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
January 29, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 18, 2004 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@pulsestaff.com by
e-mail.
A
timely Response was received and determined to be complete on February 19, 2004.
A
timely Additional Submission was received from Complainant and determined to be
complete on February 23, 2004. A timely
Additional Submission was received from Respondent and determined to be
complete on February 27, 2004.
On March 1, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Bruce E.
Meyerson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant (Including Additional Submission)
Complainant,
Advanced HR Solutions, Ltd. (“Complainant”), is engaged in hiring, recruiting,
placement, staffing, outsourcing and career network services. Complainant’s services are advertised and
provided throughout the United States.
Complainant claims
to have continuously used the mark PULSE STAFFING in commerce in connection
with its medical staffing business, and claims to have prominently and
extensively used, promoted, and advertised its mark.
Complainant
contends that it owns all rights in and to the common law and registered
trademark PULSE STAFFING, which has a U.S. registration number 2,727,257. Additionally,
Complainant asserts that it uses the mark PULSE STAFFING as its trade name and
thus, it contends that it is known to the public as PULSE STAFFING.
Complainant
contends that the domain name registered by Respondent, <pulsestaff.com>,
is confusingly similar to the PULSE STAFFING mark. Complainant contends that Respondent is using the domain name,
<pulsestaff.com>, to directly compete for employment services in
the healthcare industry. According to
Complainant, both parties advertise in the same trade journals and the ads run
side-by-side. Complainant asserts that Respondent’s use has led to actual
confusion on the part of the public as to the source or origin of the services,
and it has lead to the mistaken belief that Respondent’s services are
affiliated with, endorsed by, or sponsored by Complainant.
Complainant contends that Respondent registered the
domain name <pulsestaff.com> long after Complainant’s adoption and
use of the PULSE STAFFING mark and trade name and long after Complainant’s
registration of the domain name at issue in this proceeding.
Complainant questions why Respondent registered the
domain name <pulsestaff.com>when it does business as Pulse
Healthcare Staffing. Complainant also
questions Respondent’s assertion that it was unaware of Complainant’s name when
it chose its domain name. Furthermore,
Complainant observes that after Respondent received Complainant’s demand letter
Respondent registered two domain names: <pulsehealthcare.com> and
<pulsehealthcarestaffing.com>.
B.
Respondent (Including Additional Submissions)
Respondent,
Pulse Healthcare Staffing (“Respondent”), began providing its employment services
in July 2001. Its business consists of
locating and placing critical care nurses primarily in three states. Respondent claims that when it established
its business and registered the disputed domain name it conducted an
investigation and found no name comparable to the name it chose. Thus, Respondent contends that before it
received any notice of this dispute it registered the domain name in connection
with a bona fide offering of goods or services.
Respondent
denies Complainant’s allegation that Complainant continuously used the mark
PULSE STAFFING in commerce. Respondent
further denies the allegation that its domain name and Complainant’s mark are
confusingly similar. Moreover,
Respondent contends that the two businesses do not compete. Respondent denies that there has been any
actual confusion as a result of the use of its domain name. Furthermore, Respondent denies that it has
acted in bad faith.
Respondent
asserts that it chose the disputed domain name because it would be easier for
potential customers to remember, and that it chose the additional names to
ensure that potential customers who misspelled the correct name would still
arrive at its website.
FINDINGS
Complainant is
engaged in hiring, recruiting, placement, staffing, outsourcing and career
network services. Through a predecessor
company, Complainant began using the words PULSE STAFFING as a trade name and
in 2003 the words were registered as a service mark with the United States
Patent and Trademark Office.
Respondent
began providing its employment services in July 2001. Its business consists of locating and placing critical care
nurses primarily in three states.
Respondent registered its domain name before Complainant obtained
trademark or service mark rights in the words PULSE STAFFING.
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 record indicates that Complainant,
through a predecessor entity, began using PULSE STAFFING as a trade name in
1988. It was not until 2003, however,
that PULSE STAFFING was registered as a service mark with the United States
Patent and Trademark Office (the “PTO”).
Two years before, Respondent registered the disputed domain name. Thus, the question raised in this dispute is
whether Complainant’s use of the trade name PULSE STAFFING, which predated the
registration of the domain name in dispute, creates sufficient “rights” in a
“trademark or service mark” within the meaning of the Policy.
A complaining party can establish that it
has rights in a trademark or service mark by establishing that an entity such
as the PTO has approved its mark, or, alternatively, that it has established
rights as a common law mark. Ordinarily, to satisfy the requirements of Policy
¶ 4(a)(i), the complaining party must have trademark or service mark rights
before the domain name in dispute was registered. See Ode v.
Intership Ltd., D2001-0074 (WIPO May 1, 2001) (under ICANN rules, a
trademark must predate the domain name). On this record, Complainant has
demonstrated neither registered trademark or service mark rights that predate
Respondent’s domain name registration.
Alternatively, to establish common law
rights, a complainant must show that the mark has acquired distinctiveness when
associated with complainant’s goods or services. The record does not
demonstrate that Complainant had established such distinctiveness prior to
Respondent’s domain name registration.
Although the record does support Complainant’s assertion that it has
been known by the words PULSE STAFFING, this merely supports a finding that the
term was used as a trade name,
but not that is was used as a trademark
or service mark.
There is a distinction in the law between
a trademark and trade name. The Policy
does not extend to the protection of trade names in which trademark or service
mark rights have not been established. E.g., Bus. Architecture Group, Inc. v. Reflex Publ’g, FA 97051 (Nat. Arb.
Forum June 5, 2001); see also Baltimore
Gas & Elec. Co. v. Nat’l Material Supply Co., LLC, D2001-0315 (WIPO May
17, 2001); see also Canadian Tire
Corp. Ltd. v. McFadden, D2001-0383 (WIPO May 24, 2001).
Because the record reflects that
Complainant used PULSE STAFFING as a trade name, and has not established the requisite
common law or trademark rights in the words PULSE STAFFING, Complainant cannot
successfully prevail in its claim.
DECISION
Accordingly,
the Panel concludes that relief shall be DENIED.
Bruce E. Meyerson, Panelist
Dated: March 15, 2004
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