Audio-Digest Foundation v.
Administrative Contact
Claim Number: FA0611000839805
PARTIES
Complainant is Audio-Digest Foundation (“Complainant”), represented by Lawrence
G. Townsend, of Owen, Wickersham & Erickson,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nursedigest.com>, registered with Go Daddy Software,
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.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 9, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 10, 2006.
On November 10, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <nursedigest.com> domain name is
registered with Go Daddy Software, Inc.
and that the Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 November 17, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 7, 2006 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@nursedigest.com by
e-mail.
A timely Response was received and determined to be complete on December 7, 2006.
Complainant submitted a timely Additional Submission in accordance with
National Arbitration Forum Supplemental Rule 7(a), received on December 13,
2006.
Respondent submitted an untimely Additional Submission, which was not
considered.
On December 14, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Sandra J. Franklin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <nursedigest.com> domain name is confusingly similar to Complainant’s NURSES-DIGEST mark, under which it offers continuing education products for nurses.
2. Respondent does not have any rights or legitimate interests in the <nursedigest.com> domain name.
3. Respondent registered and used the <nursedigest.com> domain name in bad faith.
B. Respondent makes the following assertions:
1.
Complainant does not have trademark rights in NURSES-DIGEST because the
words are generic and Complainant’s registration is for a logo, not the words.
2.
Respondent is providing news digests of interest to nurses at <nursedigest.com>, supported by advertising
revenue, and does not compete with Complainant.
3. Respondent did not know of Complainant’s mark
when it registered the <nursedigest.com> domain name.
C. Additional Submissions
Complainant
points out in its Additional Submission that Respondent’s agent, Douglas
Jankowski, is the Director of Interactive Services for Nursing Spectrum, touted
as the “largest nursing marketplace on the World Wide Web.”
FINDINGS
Complainant holds a U.S. Trademark
Registration for its NURSES-DIGEST logo “design plus words, letters, and/or
numbers”, filed for on April 26, 2004, with a first use date of October 20,
2004, and registered on April 25, 2006.
Respondent registered the <nursedigest.com>
domain name
on June 17, 2005. Complainant
Audio-Digest Foundation is nationally recognized for offering continuing medical
education in audio form since 1967, via various channels including the
Internet.
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.
This Panel finds that Complainant’s Trademark
Registration for its NURSES-DIGEST logo, along with commercial use, confers
rights in the Complainant. Though
Complainant’s application was originally filed as a 1(b) application,
Complainant filed sufficient proof with both the USPTO and this Panel that it
used the mark in commerce well before Respondent’s registration of the <nursedigest.com> domain name.
The Panel notes Respondent’s argument that the registration is for a
“flower” logo combined with “Nurses-Digest”, and contains a disclaimer. Nevertheless, Complainant provided evidence
of audience-specific advertising and other commercial use to support common law
rights in both the name and the logo, during the pendency of the application
and before Respondent registered the <nursedigest.com>
domain name. As an example, Complainant submitted an
advertisement in the February 2006 Journal of Nursing Education. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also FinPlan, Inc. v. The
Respondent’s domain name is the same as Complainant’s NURSES-DIGEST mark but for the “s” and the addition of “.com.” Respondent’s use of a different color scheme for the same style letters does not sufficiently distinguish <nursedigest.com> from Complainant’s mark, as Respondent has suggested. The Panel finds the <nursedigest.com> domain name to be confusingly similar to Complainant’s mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant states that Respondent is not known by the domain name in dispute, nor has it been authorized or licensed by Complainant to use its mark. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). In the instant case, Respondent submitted no evidence to support its contention of legitimate interests in the <nursedigest.com> domain name, but merely stated that the domain name is used “to provide a news digest for its viewers.” Respondent’s exhibits consisted primarily of Internet searches of available domain names in November 2006, and a page with the words “Nurse Digest” with colors designations for the letters. No pages from Respondent’s website were submitted, nor was any evidence to support its statement that it gets much more traffic than Complainant. The Panel finds that Respondent has not met its burden.
Despite Respondent’s contention that it is
not competing with Complainant because it does not currently sell CD’s, the
Panel notes they are both in the business of educating nurses. Offering competing goods or services does not
constitute a bona fide offering of
goods or services for purposes of establishing legitimate interests. Respondent has not demonstrated a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name
in connection with a bona fide offering of goods and services because
Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”); see also Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of
the disputed domain name to redirect Internet users to a financial services
website, which competed with the complainant, was not a bona fide
offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Douglas
Jankowski, Respondent’s agent, stated that he had no knowledge of Complainant’s
use of NURSES-DIGEST, and even stated in his sworn statement that he conducted
a search of the USPTO before selecting the domain name <nursedigest.com>.
However, this Panel finds that
difficult to believe, since a search of the USPTO would have yielded
Complainant’s pending trademark application.
Further, the Panel finds that Mr. Jankowski, in his role as Director of Interactive Services for Nursing
Spectrum, would have known of Complainant’s reputation in the field, and
Complainant’s plans to launch NURSES-DIGEST, as advertised.
That the Respondent is using the disputed domain name to operate a website that offers competing goods or services is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Furthermore, Respondent’s disputed
domain name is capable of creating a likelihood of confusion as to the source
and affiliation of Complainant to the disputed domain name and corresponding
website, supporting a finding of bad faith registration and use under Policy ¶
4(b)(iv). See Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the
site).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nursedigest.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 28, 2006
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