Hospice and Palliative Credentialing Center, Inc. v. Tana Taylor
Claim Number: FA1905001842695
Complainant is Hospice and Palliative Credentialing Center, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Tana Taylor (“Respondent”), represented by Dineen Pashoukos Wasylik of DPW Legal, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <achpn.org>, registered with GoDaddy.com, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2019; the Forum received payment on May 10, 2019.
On May 13, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <achpn.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 2019 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@achpn.org. Also on May 15, 2019, the 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 Response was received and determined to be complete on July 1, 2019.
On July 8, 2019 an additional submission (titled “Complainant’s Reply”) was received from the Complainant.
On July 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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
Complainant operates in the hospice and palliative health care certification industry. Professionals who complete certain prerequisites and pass tests that are administered by Complainant are then certified by Complainant and may use certain certification marks to denote their status. Complainant has rights in the trademark ACHPN (comprising the acronym for Advanced Certified Hospice and Palliative Nurse) based upon its longstanding use in commerce since 2005 and its registration as a certification mark with the United States Patent and Trademark Office (“USPTO”) on January 4, 2011. Complainant also provides certification test study materials under the ACHPN mark and thus has common-law rights to its mark in relation to that service. Respondent’s <achpn.org> domain name, registered on April 3, 2019, is identical or confusingly similar to Complainant’s ACHPN mark because it wholly incorporates the mark, and merely adds the “.org” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <achpn.org> domain name. Respondent is not authorized to use Complainant’s ACHPN mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain name to offer competing test preparation products and services. Respondent also tries to pass off its webpage as being sponsored or endorsed by Complainant.
Respondent registered and uses the <achpn.org> domain name in bad faith because Respondent seeks to attract, for commercial gain, users to the disputed domain name where Respondent attempts to pass itself off as Complainant. Respondent uses the disputed domain name to offer test preparation products and services that are competitive with those offered by Complainant. Finally, Respondent had actual knowledge of Complainant’s ACHPN mark prior to registering the disputed domain name.
B. Respondent
Complainant does not have rights to the ACHPN mark in relation to test preparation materials or services as the evidence presented in support thereof is insufficient. Further, the asserted Trademark Registration is for a certification mark and, under U.S. law, the owner of a certification mark risks losing its rights if it engages in the production or marketing of any goods or services to which the certification mark is applied.
Further, Respondent has rights and legitimate interests in the <achpn.org> domain name because Respondent uses the disputed domain name to make a bona fide offering of goods and services. The mark is used in a nominative manner by offering test preparation materials for Complainant’s ACHPN tests. Furthermore, Complainant has not offered any evidence of Respondent’s bad faith.
Finally, the disputed domain has not been registered or used in bad faith, as Complainant has submitted no evidence that its business has been disrupted by the Respondent’s provision of competing test preparation services and products, and Respondent had no intention to trade off the ACHPN mark but merely to identify the study materials that it offers.
C. Additional Submissions
Complainant filed an additional submission (titled “Complainant’s Reply”) that largely takes issue with some of the legal points made by Respondent but which does not introduce any new facts or evidence.
(1) the domain name registered by Respondent is confusingly similar to multiple trademarks in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 asserts rights in the ACHPN mark based upon its use in commerce in relation to test preparation courses and materials, and also its registration as a certification mark with the USPTO for “hospice and palliative nursing services”. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Respondent claims that Complainant has only submitted “paltry evidence” of its common law rights. However, the Panel notes that prior UDRP decisions have held that Policy ¶ 4(a)(i) is a mere threshold test with a burden of proof that is not especially high. See Domain Name Arbitration, 4.01-A.1.a (Gerald M. Levine, Legal Corner Press, 1st ed. 2015) (“the standard of proof for ‘this limb of the policy is relatively low.’”); Asset Marketing Systems, LLC v. Silver Lining, Case No. D2005-0560 (WIPO July 22, 2005) (stating that Policy ¶ 4(a)(i) presents a “low threshold”). In addition to a copy of its trademark registration, Complainant has submitted into evidence copies of its website showing use of the ACHPN mark in relation to study materials/courses and practice tests. Respondent does not contest the veracity of these items. It is also worth noting that the WIPO Overview 3.0, section 1.3, states that “[t]he fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.” Respondent’s targeting of the Complainant’s ACHPN mark will be discussed later in this decision. In light of the available evidence, the Panel finds that Complainant has rights in the ACHPN mark per Policy ¶ 4(a)(i).
Next, Respondent claims that Complainant’s certification mark may be subject to cancellation under U.S. law 15 U.S.C. § 1064(5) because Complainant “engages in the production or marketing of any goods or services to which the certification mark is applied.” Complainant notes that it does not engage in providing any hospice and palliative nursing services and so § 1064(5) is inapplicable. As Policy ¶ 4(a)(i) is concerned only with the question of whether a complainant can demonstrate trademark rights and not with the potential vulnerabilities of such rights, the Panel finds that this issue is extraneous to the current case and, in any event, that the UDRP is not the forum in which it is to be resolved.
Finally, Respondent’s <achpn.org> domain name is identical or confusingly similar to Complainant’s ACHPN mark because it wholly incorporates Complainant’s ACHPN mark, and merely adds the “.org” generic top-level domain (“gTLD”). The addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and does not overcome a claim that the domain is identical to such mark. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Therefore, the Panel finds that Respondent’s disputed domain name is identical or confusingly similar to the Complainant’s ACHPN mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Respondent may have rights or legitimate interests in the <achpn.org> domain if it can show that it is authorized to use Complainant’s ACHPN mark or that it is commonly known by the disputed domain name. The WHOIS information can help inform the question of whether respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”) The WHOIS information for Respondent indicates that Respondent is known as “Tana Taylor” and no information of record indicates that Respondent is known otherwise. Further, although Respondent claims that it is authorized to use the Complainant’s ACHPN mark by virtue of its having passed the required test and achieved the associated credential, the Panel, for reasons stated below, concludes that any such authorization does not extend to the use of the mark in a manner that creates confusion or allows the Respondent to pass itself off as Complainant. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. It asserts that Respondent uses the disputed domain name to offer competing products and services and to pass itself off as Complainant by giving the impression that the disputed domain name and its resolving website are sponsored or endorsed by Complainant. Use of a disputed domain name to pass oneself off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”) In response, the Respondent claims that she was using the ACHPN mark “to nominatively describe the certification for which her materials provide review information”. This raises the question of where lies the line between nominative fair use of a trademark and passing off.
It is noted that the disputed domain name consists of the entirety of Complainant’s mark plus the “.org” TLD. There has, amongst UDRP Panelists, been a split of opinion on whether domains that consists of the entirety of a trademark plus a TLD (i.e., in the form of <trademark.tld>) can ever create a bona fide offering or be considered fair use. Some Panels take the view that resort must be made to the domain’s website or other uses to which the domain has been put while other Panels hold that domains in the form of <trademark.tld> create an impersonation of a complainant’s mark regardless of their website content or use. This schism was recently addressed in Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, Case No. D2019-0633 (WIPO May 22, 2019). In that case, the Panel noted the somewhat analogous situation set out in the WIPO Overview 3.0, section 2.6.2, relating to free speech: “Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation.” Id. At issue was the domain name <doverdownsnews.com> and the Panel held that:
under the impersonation test, the Disputed Domain Name would be perceived by the public as being affiliated with or authorized by Complainant. The Disputed Domain Name consists of Complainant’s mark, DOVER DOWNS, and the word “news”. The addition of “news” provides no indication that Respondent’s site is not affiliated with Complainant or that it hosts a website critical of Complainant. Indeed, the addition of the word “news” is likely to create an impression that the website to which the domain name resolves is published by Complainant to provide information or reports of recent events concerning Complainant.
Id.
Complainant argues that Respondent’s <achpn.org> domain name impersonates Complainant and it provides a screenshot of the webpage that resolves from the domain. The Panel notes that this site contains the phrases “ACHPN Test Preparation” and “Hospice Certification for Nurse Practitioners”. It then includes sections titled “Our Background”, “Our Expertise”, and “Focused Lessons”, each consisting of a paragraph of text, and it concludes with the footer “Copyright © 2018 ACHPN Test Preparation – All Rights Reserved”. While much of this website content could be viewed as merely descriptive of Respondent’s test preparation materials and services, this Panel considers it critical that nowhere on this page does there appear any mention of Respondent or the fact that the offered services and materials are unaffiliated with, and do not originate with the Complainant. Even those who distribute legitimate, trademarked products of another company fail to meet the standard of proving a bona fide offer of goods or services where there is no notice of the absence of any relationship between the website and the trademark owner. Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). It is noteworthy that Respondent has submitted a declaration of Dr. Tana Taylor, which states “I would be happy to add disclaimers to further alleviate confusion.”
Whereas here, the Respondent has used a domain that consists of the entirety of Complainant’s mark coupled only with the “.org” TLD (i.e., in the form <trademark.tld>), this Panel finds that it creates a risk of impersonation and that the domain goes beyond the Respondent nominatively referring to Complainant’s mark or merely identifying her own credentials. This is compounded by the content of Respondent’s website, which fails to dispel any impersonation that is perceived by a user visiting the site. As such, by a preponderance of the evidence, the Panel finds that Respondent does not make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) of the disputed domain name.
Finally, Respondent states that “Dr. Taylor has legitimate interests because she is making ‘fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.’” However, Respondent’s website lists various prices for each item offered on the site. There is no evidence of record to indicate whether Respondent realizes any profit from these sales and so the Panel is unable to adequately consider Respondent’s claimed lack of commercial gain.
Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the ACHPN mark as the result of Complainant’s extensive use of the mark predating the date on which respondent registered the <achpn.org> domain name and Respondent’s use of the mark on the resolving webpage. Actual knowledge of a complainant’s mark prior to registering a disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a mark on a resolving webpage may also demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith. Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). As Respondent holds the ACHPN certification and has stated its intention to compete with Complainant, the Panel finds that Respondent had actual notice of Complainant’s rights in the ACHPN mark under Policy ¶ 4(a)(iii) at the time it registered the disputed domain name.
Next,
Complainant contends that Respondent registered and uses the <achpn.org> domain name in bad
faith because Respondent disrupts Complainant’s business by offering competing
products and services. Using a disputed domain name to offer competing goods or
services can be disruptive to a complainant’s business and demonstrate bad
faith under Policy ¶ 4(a)(iii). See LoanDepot.com, LLC v. Kaolee (Kay)
Vang-Thao, FA1762308 (Forum Jan.
9, 2018) (finding that the respondent’s use of the disputed domain name to offer
competing loan services
disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Complainant argues
the services provided by Respondent are competitive to Complainant. The
Response agrees that Respondent is a competitor stating that it “is offering
competing test review materials” and notes Respondent’s “provision of competing
test preparation services”. However, Respondent claims that its efforts do not
disrupt Complainant’s business and that
Complainant has provided no evidence that its business has been disrupted in
any way.” Past UDRP Panels have commented on this point with the consensus being
that “it is not necessary to show that the Complainant’s business was actually
disrupted - only that the Respondent’s primary purpose is disruption.” RuggedCom,
Inc. v. LANstore, Inc., D2005-0760 (WIPO Nov. 15, 2005). In Respondent’s
submitted declaration she notes that she initially purchased Complainant’s test
preparation materials but found them lacking. She goes on to say that she
“decided to create [her] own study materials” and “make them available for sale
online.” Here, the Panel finds that Respondent is a competitor of the
Complainant in a highly specialized field and that it uses a confusingly
similar domain name to sell its test preparation materials as an alternative to
those offered by Complainant – i.e., primarily to disrupt Complainant’s business.
Thus, Respondent registered and uses the disputed domain name in bad faith
under Policy ¶ 4(b)(iii).
Complainant further argues that Respondent registered and uses the <achpn.org> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent attempts to pass itself off as Complainant. A respondent’s use of a complainant’s mark on a disputed domain name’s resolving webpage to pass itself off as a complainant is evidence of bad faith. See Ultius, Inc. v. Whois Agent, Domain Protection Services, Inc. / Yaroslav Baklan, D2018-0780 (WIPO May 17, 2018) (bad faith registration and use found where the “Respondent has used the disputed domain name to impersonate the Complainant”). As noted above, a preponderance of the evidence in this case supports the conclusion that Respondent has sought to pass itself off as Complainant. However, there are conflicting statements by the parties as to whether Respondent’s actions are for commercial gain and the evidence submitted here does not resolve the matter. As such, the Panel declines to consider whether the disputed domain name was registered and used in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <achpn.org> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: July 11, 2019
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