Methodist Urology, LLC v Urology of Indiana

Forum File No.: FA0008000095609

The domain names at issue are methodisturology.com, methodisturology.net, methodisturology.org, registered with Network Solutions.

The undersigned certifies that he has acted independent and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 14, 2000; The Forum received a hard copy of the Complaint on September 11, 2000.

On September 18, 2000, Network Solutions confirmed by e-mail to The Forum that the domain names methodisturology.com, methodisturology.net, methodisturology.org are registered with Network Solutions and that the Respondent is the current registrant of the names. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 and 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On October 13, 2000, pursuant to the Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Howard C. Buschman III as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

Before me are the Complaint, the Response and Complainant’s Additional Response, which I have decided to accept. Respondent has filed an untimely response to Complainant’s Additional Response, which I have decided also to accept.

This is a dispute that arises from the apparent bad feelings left by the disengagement, in the Winter and early Spring of 1999, of two doctors, James E. Lingeman, M.D. and Ronald E. Steel, M.D., from Urology of Indiana LLC in which each had owned a one-eleventh interest. The Complaint, Response and supplements contain several disputed allegations. The relevant facts, however, can be found in the exhibits to the Response and from the Affidavits and exhibits submitted with the Complaint and supplements. It is on the basis of the non-hearsay portions of those documents that the following facts are found.

Urology of Indiana, at all relevant times, has had offices located at several hospitals in the State of Indiana. Drs. Lingeman and Steel worked at the office located at Methodist Hospital, or an office building associated with Methodist Hospital, in Indianapolis, Indiana.

On January 17, 1999, Dr. Lindeman informed Dr. Peter Knapp of Urology of Indiana that he would be withdrawing from Urology of Indiana and would open his own urology practice in the Methodist Hospital complex under the name "Methodist Urology". On January 19, 1999, Dr. Knapp filed, with the Indiana Secretary of State, Certificates of Name Registration for three names combining "methodist" and "urology" including Methodist Urology, Inc. Under Indiana law, the reservations were valid for 120 days. There is no evidence indicating that entities bearing those names were formed and that the registrations have not expired.

On March 17, 1999, Lindeman and Urology of Indiana entered into a Dissociation Agreement and Lindeman left Urology of Indiana on April 15, 1999, opening his practice in the Methodist Hospital complex on April 16, 1999 under the name Methodist Urology, LLC.

The business forms, letters and business cards used by Drs. Lindeman and Steel contain the name Methodist Urology.

On or about May 4, 1999, Urology of Indiana registered the domain names methodisturology.org methodisturology.net and methodisturology.com with Network Solutions which reports that the record was not updated from then to the date of its report. As of June 2000, no web page was posted for retrieval under any of those names.

The Complaint in this matter was filed on September 11, 2000. Exhibit D to the Response is a web page dated September 12, 2000 retrieved upon entering any of the domain names. It does not use the term "methodist urology". Rather, it states: "for the best in urology services at Methodist, turn to us", referring to Urology of Indiana. A similar web page referring to St. Francis Hospital is also submitted.

In its Response, Urology of Indiana states that it and its predecessor have provided urology services at Methodist Hospital since 1890, and that such services have been commonly known as "Methodist Urology." There is no affidavited support for the latter of these allegations, and Complainant has submitted an affidavit of a former employee of Urology of Indiana, who is now employed by Complainant, denying that allegation. There is no evidence, such as a letterhead or business card, showing the use of the name Methodist Urology by Urology of Indiana.

Section 4(a) of the ICANN Uniform Domain Name Dispute Policy (the "Rules") requires the Complainant to prove each of the following three elements in order to sustain a claim that a domain name should be cancelled or transferred:

Section 4(b) provides:

The Complainant bears the burden of proof on these issues.

This is a case where doctors located at Methodist Hospital in Indianapolis, Indiana have separated, now compete with each other and one side has attempted to co-opt, through registering corporate names and domain names, the name announced by the other side.

Under the rules, the dispute is resolved as follows:

The similarity of the domain names with Complainant’s name is obvious. Although Complainant’s use of the name Methodist Urology is of short duration, it is directly evidenced by public use of the name on forms and letters and gives rise to a claim of a common law mark.

In its Additional Response, Respondent asserts that the name "Methodist" is a mark in which Clarian Health Partners, Inc. ("Clarian"), an affiliate of Methodist Hospital, has rights and attaches an unsigned draft license agreement between Clarian and Respondent, together with an attorney’s affirmation that he was told that the agreement was signed as a final agreement.

The relevance of these documents is not readily apparent. Clarian is not a party to this dispute, and Complainant’s right to use the name Methodist vis-a-vis Clarian is not an issue in this dispute. What is in issue is whether Complainant has rights to the domain names vis-a-vis Respondent. Moreover, Respondent’s argument turns against itself. Respondent’s registration of the domain names and filing three certificates of Name Registration utilizing the name Methodist Urology indicate an ability to use the mark Methodist Urology in light of Clarian’s alleged interest.

Respondent also submits a copy of a May 26, 1999 letter from William J. Loveday of Clarian to Dr. Knapp stating that Clarian desired that the name not be used to disadvantage another group or exploited to reflect negatively on another group. This letter hardly reflects a lack of interest by Complainant in the mark Methodist Urology. Instead, it reflects a concern for the type of preclusive conduct by Respondent that is reflected on this record.

I thus find that the first element of Section 4(a) is satisfied. Complainant has used the mark publicly for a sufficient time; the mark and the domain names are identical and the Complainant has rights in the mark against Respondent.

As to the second element of Section 4(a), Respondent’s registration of the domain names could be said to afford it rights in the names. But it appears that the second element requires more than just registration. If the second element were to be deemed satisfied by mere registration, a complainant could never show that a respondent had no rights or legitimate interests in the domain name for all are registered. More, therefore, must be required. A "right" bespeaks of a legal entitlement such as a mark. An "interest" is something less. It could be found in good faith use of a name or generic term as a link to another web site truly offering goods and services, significant promotional expenses with respect to a name or generic term or an established use of the name term prior to registration.

Respondent relies on Ruben L. Lopez v. Rock-City, Case No. FA0005000094907 (Nat’l. Arb. Forum, August 8, 2000), where the Panel stated that mere registration of a deviant of a domain name can give rise to a legitimate interest if done to protect one’s established domain name from cybersquatting. Whether or not that holding accords with the Rules, it is inapplicable here.

Here, the evidence, at the time the instant dispute arose, is merely of registration. Respondent’s claim of prior use of the name Methodist Urology is not supported by the evidence. There is no evidence of Respondent’s having filed a domain name of which Methodist Urology is a deviant. There is also no cogent evidence of promotional development or prior established use of the name. Creation of a link as a dispute ripens is hardly a good faith interest in a name. Nor would creation of such a link be a good faith interest in the circumstances of this record. The record here is one of registration for preclusive purposes rather than a legitimate use of the domain names. I, therefore, hold that the second element has been satisfied.

Thus, I turn to the third element of Section 4(a), bad faith registration and use.

Here, Complainant and Respondent are competitors, and Sections 4(b)(ii) and (iii) of the Rules apply.

Two days after being told of Lindeman’s intention to use the name Methodist Urology, Respondent’s Dr. Peter Knapp attempted to preclude that use through filing three certificates of name registration to preclude use of that name. This conduct was repeated by Respondent in filing the three domain names at issue here on May 4, 1999. The intentions of preclusive registration and disruption of a competing business are obvious. That the web sites were left dormant until the time when the Complaint was being filed only confirms such intentions.

The pattern of preclusive registration is found in the registration of three similar names and the filing of the certificates of name registration.

Accordingly, it is decided that Network Solutions shall transfer the domain names to Complainant.