MedStaff
Alternatives, Inc. v. Dustina M. Bennett
Claim Number: FA0105000097260
PARTIES
The Complainant is MedStaff Alternatives, Inc., Chicago, IL, USA (“Complainant”). The Respondent is Dustina M. Bennett, Waltham, MA, USA (“Respondent”) represented by Victor H. Polk, Jr., of Bingham Dana LLP.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <medstaffalternatives.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.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 17, 2001; the Forum received a hard copy of the Complaint on May 18, 2001.
On May 24, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <medstaffalternatives.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. 5.0 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 June 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 21, 2001 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@medstaffalternatives.com by e-mail.
A timely response was received and determined to be complete on June 21, 2001.
A Reply in Support of Complaint in Accordance with the Uniform Domain Name Dispute Resolution Policy was submitted by Complainant after the deadline set for submissions with no proper indication that it had been served on Respondent. The Panel did not consider this document.
On
June 27, 2001, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed
Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is MedStaff Alternatives, Inc., located in Chicago, Illinois.
Complainant is a corporation in the business of providing operating room nurses to hospitals and medical centers in the Chicago area.
The corporation was formed in 1997 and thereafter operated in business under the corporate name. Complainant advertised in newspapers under the name “MedStaff Alternatives.”
Complainant’s chief competitor is “First Assist.” “First Assist” entered the Chicago market in 1992 and dominates the market as the largest temporary help provider of operating room nurses.
In September 1999, Complainant started laying the groundwork for a web site. When Complainant proceeded to register its company name as a domain name, it found that it had already been registered to “First Assist.”
The action of registering Complainant’s name as a domain name was a clear attempt to disrupt the business of a competitor and has prevented Complainant from establishing a web site under the company name.
This forced Complainant to apply for trademark protection, which delayed the bringing of this domain name dispute proceeding. Complainant holds a Service Mark on the Principal Register for “MedStaff Alternatives” with registration date of December 19, 2000, with the United States Patent and Trademark Office, with first use in commerce shown as “3-2-1997”.
Some time after “First Assist” initially registered the domain name, Complainant observed that the domain name was changed to the present holder, the Respondent. Complainant contends that Respondent has some affiliation with “First Assist” and therefore, it is contended, the domain name is still registered and held by an entity for the sole purpose of disrupting Complainant’s business.
B. Respondent
Respondent is Dustina M. Bennett of Waltham, Massachusetts
Respondent admits that the domain name is substantially similar to the service mark registered by Complainant but contends that the service mark was obtained after the domain name was registered.
Respondent admits that she does not use the domain name for any commercial interests and has registered it simply to obtain ownership of the domain name.
Respondent denies any affiliation with “First Assist”.
Respondent denies the remaining allegations of the Complaint and contends that she did not register the domain name in bad faith.
Respondent contends that Complainant has attempted to manufacture a claim to the domain name by subsequent trademark registration of the domain name.
FINDINGS
1. Complainant was incorporated in 1997 under the name “MedStaff Alternatives, Inc. and has done business under that name and the name “MedStaff Alternatives” since that time with first use of the name in commerce on March 2, 1997.
2. Complainant acquired common law rights to “MedStaff Alternatives, Inc.” and “MedStaff Alternatives” in the year 1997.
3. Complainant made application for a service mark on some date prior to December 19, 2000. On that date the name “MedStaff Alternatives” was registered as a Service Mark on the Principal Register of the United States Patent and Trademark Office as Registration Number 2,413, 651.
4. Respondent registered the Domain Name MEDSTAFFALTERNATIVES.COM with Network Solutions on October 27, 1999.
5. Complainant’s contention that the Domain Name MEDSTAFFALTERNATIVES.COM was owned by “First Assist” in September of 1999, thus preventing Complainant from registering the domain name, is contested by Respondent by her statement that she has is without knowledge of the allegation. Complainant’s contention as to the ownership of the domain name in September of 1999 is accepted as proved. Complainant’s contention that it could not register its name as a domain name in September of 1999, because it was owned by another is accepted as proved. Complainant’s contention that “First Assist” and Respondent are affiliated in some way is specifically denied by Respondent and is found not to be established by Complainant.
6. Complainant’s name, in which it has rights, is identical to the domain name registered to Respondent.
7. Respondent has no rights or legitimate interests in the domain name MEDSTAFFALTERNATIVES.COM.
8. Respondent registered and is using the domain name in bad faith.
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.
Identical and/or
Confusingly Similar
Complainant contends that its name and the Domain Name are identical. Respondent concedes that the two names are “substantially similar”. The names are identical. see Wembley Nat’l Stadium Ltd. v. Thompson, D2000-1233 (WIPO Nov. 16, 2000) finding that the WEMBLEYSTADIUM.NET domain name is identical to the WEMBLEY STADIUM mark. Complainant has rights in its corporate name. Complainant prevails on this issue.
Rights or
Legitimate Interests
The Complaint is far from satisfactory in its allegations and proof of details to allow the Panel to be made aware of the complete factual situation of this domain name dispute. But it can be ascertained or inferred from the Complaint that Complainant has never authorized or licensed Respondent to use Complainant’s corporate or trade name in any manner at all. Complainant is found to have rights and interests in the name MEDSTAFF ALTERNATIVES by its continuous use of the term in commerce since May of 1997. Complainant filed for and now has a Service Mark for MEDSTAFF ALTERNATIVES. Complainant contends that it has exclusive right to use the mark. See America Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000). Respondent makes no claim that she has ever been known as MEDSTAFFALTERNATIVES.
As a result of Complainant’s showing, and Respondent’s apparent lack of rights and legitimate interests in the domain name MEDSTAFFALTERNATIVES.COM, the burden must shift to Respondent to demonstrate Respondent’s rights and legitimate interests in the Domain Name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent may demonstrate her rights and legitimate interests in the Domain Name by any of the methods set out in Paragraph 4(c) of the Uniform Domain Name Dispute Resolution Policy. Respondent makes no attempt to show rights and legitimate interests in the Domain Name. It can be inferred from the evidence and lack of evidence that Respondent has not used or prepared to use the Domain Name in connection with a bona fide offering of goods or services, that Respondent has never been commonly known by the Domain Name, or that Respondent is not making a legitimate noncommercial or fair use of the domain name.
It must be concluded that Respondent has no rights or legitimate interests in the Domain Name MEDSTAFFALTERNATIVES.COM. Complainant prevails on this issue.
Registration and
Use in Bad Faith
Complainant bears
the burden of showing that the domain name has been registered and is being
used in bad faith. See Policy, Paragraph 4(a)(iii).
This can be shown in any of the ways set out in the Policy, or by
other means illustrating bad faith. See Paragraph 4(b).
Complainant contends that the Domain Name was registered to prevent Complainant from reflecting the mark in a corresponding domain name and that it was registered by a competitor to disrupt Complainant’s business.
The former contention cannot be sustained because there is no proof whatsoever that Respondent has engaged in a pattern of such conduct as required by Paragraph 4(b)(i).
There is some merit in the second contention. Complainant alleges that when it tried to reflect its name in a domain name in September of 1999, that the Domain Name MEDSTAFFALTERNATIVES.COM was registered to its chief competitor. How the Domain Name came to be registered to Respondent on October 27, 1999, is unknown to Complainant. No evidence is presented to connect the chief competitor, “First Assist”, to Respondent. Complainant insists that Respondent has some affiliation with “First Assist” and thus the Domain Name is still registered and held by an entity for the sole purpose of disrupting Complainant’s business. While this may be true, the evidence presented by Complainant is insufficient to prove the connection.
However, it is clear that Respondent is not using the Domain Name. She is just holding it. She admits that in the pleadings.
It was held as follows in the case of Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000):
“As to its use in bad faith, it is becoming an established principle of this procedure under the UDRP that merely holding an infringing domain name without active use, can constitute use in bad faith…It is particularly pertinent that the respondent shows no sign of being an active business.”
The passive holding of the Domain Name prevents Complainant from reflecting its mark in a corresponding domain name.
Respondent makes much of the fact that she registered the Domain Name before Complainant obtained its registered Service Mark, “MedStaff Alternatives”. She believes that this fact alone takes away any right from Complainant to request transfer. But Respondent does not reveal how she came to choose the Domain Name MEDSTAFFALTERNATIVES.COM. Nor does she allege that she had no knowledge of Complainant’s common law rights in its corporate name and trade name prior to the Domain Name registration.
At this point, Complainant has both common law rights and registered trademark rights in “MedStaff Alternatives”.
As was stated in a similar case:
“…It is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing-off, an infringement of consumer protection legislation or an infringement of the Complainant’s rights under trademark law.” DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000). See also iKnowledge, Inc. v. Hot Rod Email Services, FA 97066 (Nat. Arb. Forum May 25, 2001).
This Panel decides that when a Respondent passively holds a domain name which infringes on the trademark of another, thus preventing the holder of the mark from reflecting its mark in a corresponding domain name, without any explanation of how Respondent came to choose the domain name, what the intended use of the domain name is, or how long it will be held without use, that this represents evidence of use in bad faith. This failure to explain, in conjunction with the fact that the Domain Name had been held just one month prior to Respondent’s registration, by an active competitor of Complainant, permits the finding of bad faith use of the Domain Name by Respondent.
It is difficult to envision a future use of the Domain Name by Respondent that would not violate Complainant’s trademark rights.
Under all of the facts and circumstances and the inferences that can properly be drawn from them, it is held that the Domain Name was registered in bad faith, and is being used by Respondent in bad faith.
IT IS HEREBY ORDERED THAT THE DOMAIN NAME, MEDSTAFFALTERNATIVES.COM, NOW REGISTERED TO RESPONDENT, DUSTINA M. BENNETT, BE TRANSFERRED TO COMPLAINANT, MEDSTAFF ALTERNATIVES, INC.
Tyrus R. Atkinson, Jr., Esq., Panelist
Dated: July 11, 2001
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