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MedTel Outcomes, LLC v. IT HealthTrack, Inc. [2004] GENDND 877 (21 July 2004)

1. The Parties

The Complainant is MedTel Outcomes, LLC, Buffalo, New York, United States of America, represented by Gross, Shuman, Brizdle & Gilfillan, P.C., United States of America.

The Respondent is IT HealthTrack, Inc., Williamsville, New York, United States of America, represented by Damon & Morey LLP, United States of America.

2. The Domain Names and Registrar

The disputed domain names <medteloutcome.com>, <medteloutcome.net>, <medteloutcome.org>, <medteloutcomes.info>, <medteloutcomes.net>, <medteloutcomes.org> are registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2004. On April 21, 2004, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain names at issue. On April 21, 2004, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2004. The Response was filed with the Center on May 25, 2004.

The Center appointed Nels T. Lippert as the sole panelist in this matter on June 2, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On June 8, 2004, the Center received a Supplemental Filing from the Complainant. Upon review, the Panel considered the Complainant’s Supplemental Filing as furthering the proceedings and issued an Administration Panel Procedural Order on June 22, 2004, admitting the Supplemental Filing and giving the Respondent to June 30, 2004, to file a response (if any) with the Center. On June 29, 2004, the Center received Respondent’s Response to Complainant’s Supplemental Filing.

4. Factual Background

The principal of the Complainant and the principal of the Respondent formerly operated a business together known as National Followup Services, Inc. (“NFS”). For over ten years NFS was in the business of furnishing health care providers with outcomes data to evaluate manage and improve patient care and performance.

In early 2002, the principals agreed to dissolve NFS and to engage separately as competitors in the business of furnishing health care providers with outcomes data. The principals further agreed that neither was to operate their respective business under a name similar to NFS or claim that the new business was the successor of NFS.

In August of 2002, the Complainant’s principal disclosed to Respondent’s principal that the new entity would be named MedTel Outcomes, LLC and, in turn, the Respondent’s principal disclosed to Complainant’s principal that the new competitive company would be named IT HealthTrack, Inc. Both new entities commenced business in September 2002.

On or about May 28, 2002, the Complainant registered the domain name <medteloutcomes.com>. On April 27, 2004, the State of New York issued a Certificate of service mark registration, number S-18742, to Complainant for the service mark MedTel Outcomes claiming a first use as of September 6, 2002.

On August 24, 2002, Respondent registered the domain names in dispute.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- Since September 2002, the Complainant has operated a business under the name and style, MedTel Outcomes, and, therefore, has common law trademark rights in the mark “MEDTEL OUTCOMES”. The Complainant also has a New York State service mark registration claiming first use as of September 6, 2002.

- The disputed domain names are either identical or confusingly similar to the Complainant’s company name and service mark.

- The Respondent has no rights or legitimate interests in respect of the disputed domain names because the Respondent is not a licensee of the Complainant, is not commonly known by the domain names and before any notice of this dispute had not made any demonstrable preparations to use the domain names or name corresponding to the domain names in connection with a bona fide offering of goods or services. Furthermore, Respondent’s sole intention in registering the disputed domain names was to create initial interest confusion and to divert consumers away from Complainant’s domain and, therefore, is not making a legitimate non-commercial or fair use of the disputed domain names.

- The disputed domain names were registered primarily for the purpose of disrupting the business of the Complainant. Each of the disputed domain names redirects users to Respondent’s website which constitutes bad faith, registration and use. Furthermore, the fact that the Respondent registered six identical or confusingly similar domain names indicates a pattern of conduct constituting bad faith.

B. Respondent

The Respondent contends that:

- Complainant does not have trademark rights in the mark “MEDTEL OUTCOMES” because the Complainant did not commence business operations under this service mark until after the Respondent had acquired the disputed domain names.

- The domain names in questions are not confusingly similar to a trademark or service mark in which the Complainant has rights. Respondent contends that it is irrelevant as to whether customers would be confused as to the origin of websites unless there is confusion as to the origin of the respective products. Because the Respondent’s website does not mention the Complainant’s products or services, there can be no confusion.

- The Respondent’s acquisition of the disputed domain names was not in bad faith because, at the time Complainant registered its domain name on or about May 28, 2002, it had the opportunity to register the disputed domain names. Having failed to register the disputed domain names, there were open for acquisition by Respondent.

- Respondent has a legitimate interest in retaining the domain names at issue for the purpose of providing information with respect to actions taken by the Complainant and its licensor.

- Respondent could not have registered the domain names in question to prevent Complainant from reflecting the alleged mark in a corresponding domain name because Respondent had no knowledge of Complainant’s name until after the Complainant had the opportunity to purchase the domain names in dispute and failed to do so.

- Respondent’s use of the disputed domain names is not in bad faith because the disputed domain names are not confusingly similar to a trademark or service mark in which Complainant has rights. Furthermore, Respondent has not intentionally attempted to attract for commercial gain Internet users to the Respondent’s website using the domain names in question because the Respondent’s websites are unequivocal in notifying the user that he or she has contacted a site belonging to Respondent.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain names, all three of the following elements:

(i) The domain names are identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) The domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by the Respondent, would demonstrate the Respondent’s rights or legitimate interests in the domain name for purposes of Paragraph 4(a)(ii).

A. Identical or Confusingly Similar

The Complainant owns a New York State service mark registration for “MEDTEL OUTCOMES” service mark claiming use since September 2002. Complainant has also registered the domain name <medteloutcomes.com> through which consumers can access information regarding Complainant’s business. Complainant’s <medteloutcomes.com> domain name was registered since May 28, 2002. Furthermore, Complainant has been operating its business under the MedTel Outcomes name since September of 2002. While the Respondent contends that Complainant has no mark in which it has rights, the Panel is satisfied that Complainant has put forth sufficient evidence of use and registration of the MedTel Outcomes mark for purpose of satisfying Paragraph 4(a)(i) of the Policy. The fact that Complainant did not commence business under the MedTel Outcomes name until after Respondent had acquired the disputed domain names is of no moment. “The issue under the first factor is whether the Complainant has rights as of the time of the Complaint.” Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June 6, 2000).

The disputed domain names differ from the Complainant’s service mark rights only by changing, in some cases, the plural to singular and the addition of a top-level domain. It is well established by previous Panels that the addition of a generic top-level domain name such as “.net” is not relevant when determining whether a disputed domain name is confusingly similar to a protected mark. Universal City Studios, Inc. v. G.A.B. Entr., WIPO Case No. D2000-0416 (June 29, 2000). More specifically, the addition of a top-level generic domain name does not create a new trademark or avoid confusion. America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (April 23, 2001). Disregarding the top-level domains, three of the disputed domain names are identical to Complainant’s mark. The other three simply are the singular version of the Complainant’s service mark. The deletion or addition of one letter is an insignificant change for the purposes of Policy Paragraph 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716 (finding that deleting the letter “s” from Complainant’s Universal City Studio’s store mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).

Accordingly, the Panel finds that the disputed domain names are identical or confusingly similar to the mark in which Complainant has rights.

B. Rights or Legitimate Interests

The Panel further finds that Respondent has no rights or legitimate interests in the disputed domain names. It is not refuted that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the “MEDTEL OUTCOMES” mark in a domain name or in any other manner. Respondent also admits that it is not commonly known by or has acquired rights in the domain names.

Respondent not only admits but asserts affirmatively that the disputed domain names were acquired after knowledge of Complainant’s company name and for the simple reason that Complainant had failed to register such domain names.

Similarly, the uses that Respondent has put to the disputed domain names do not evidence a legitimate interest. Each of the disputed domain names redirect Internet users who are interested in Complainant or its products and services, to Respondent’s competing website. Respondent does not dispute that its business is in direct competition to Complainant’s. Therefore, it is only logical that such redirection is for commercial gain. Furthermore, this Panel finds that Respondent has not offered any evidence of non-commercial or fair use of the disputed domain names to refute Complainant’s allegations.

C. Registered and Used in Bad Faith

Respondent does not dispute that it had actual notice of Complainant’s prior registered domain name incorporating Complainant’s mark as well as Complainant’s intention to operate its business under its service mark. Respondent has offered no justification for registering the confusingly similar or identical disputed domain names immediately after learning of Complainant’s intentions. Moreover, Respondent’s justification for acquiring the disputed domain names, that Complainant could have, but failed to do so, is clearly evidence of bad faith. Therefore, this Panel finds that Respondent’s registration of the disputed domain names was in bad faith.

Respondent contends that its use of the disputed domain names is a fair use in that they provide information with respect to actions taken by the Complainant and its licensor. In this regard, the Respondent asserts that it should be permitted to retain the disputed domain names because otherwise it would limit Respondent’s capacity to combat false and misleading allegations made by Complainant to customers and potential customers of Respondent. Yet the disputed domain names do not redirect to a commentary site. Rather, they redirect to Respondent’s home page, which offers competing goods and services. Dispite Respondent’s claim to the contrary, by using the disputed domain names to divert Internet users seeking Complainant’s website to Respondent’s is a bad faith commercial use. See Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548 (July 21, 2000).

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <medteloutcome.com>, <medteloutcome.net>, <medteloutcome.org>, <medteloutcomes.info>, <medteloutcomes.net>, <medteloutcomes.org> be transferred to the Complainant.

Nels T. Lippert
Sole Panelist

Dated: July 21, 2004