WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc.
Case No. D2005-1318
1.
The Parties
The Complainant is The New England Vein & Laser Center, P.C., Concord,
Massachusetts, United States of America, represented by the law firm Hinckley, Allen
& Snyder, LLP, Boston, Massachusetts, United States of America.
The Respondent is Vein Centers for Excellence, Inc., St. Louis, Missouri, United States
of America, represented by the law firm Jagtiani + Guttag, Charlottesville, Virginia,
United States of America.
2.
The Domain Name and Registrar
The disputed domain name <newenglandveincenter.com> is registered with Network
Solutions, LLC.
3.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
“Center”) on December 20, 2005. On December 20, 2005, the Center transmitted by
email to Network Solutions, LLC. a request for registrar verification in connection with
the domain name at issue. On December 21, 2005, Network Solutions, LLC
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 January 5, 2006. In
accordance with the Rules, paragraph 5(a), the due date for Response was
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January 25, 2006. The Response was filed with the Center on that date.
The Center appointed Richard G. Lyon as the sole panelist in this matter on
February 10, 2006. The Panel finds that it was properly constituted and has jurisdiction
over this dispute. The Panel has submitted his Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure
compliance with the Rules, paragraph 7.
4.
Factual Background
The Parties. Complainant is a privately owned medical center providing outpatient
treatment of venous disease, including treatment for varicose and spider veins,
liposuction, laser hair removal, and facial rejuvenation services. It has been in business
continuously since 1996 and generates substantial revenues from its services.
Complainant’s medical center is located in Concord, Massachusetts, a suburb of
Boston. Complainant has maintained a presence on the Internet since 1997. Its
principal website is now “www.veinhairaway.com”.
Respondent manages and operates a network of surgeons who dedicate their practice to
the treatment of venous diseases, under the name “Vein Centers for Excellence.”
According to Respondent’s principal website at “www.veincenters.com”, its network
physicians are located in sixteen states of the United States. One of Respondent’s
network physicians – the only one in the New England states1 - maintains his office in
Salem, New Hampshire, located on the New Hampshire-Massachusetts border, about
forty miles from Complainant’s medical center. Respondent, or least Respondent’s
network physician in Salem, New Hampshire, is therefore a direct competitor of
Complainant.
Complainant’s Marks. Complainant owns the following service marks that are
registered with the Commonwealth of Massachusetts:
Registration.
Date
1/29/97
Mark
THE NEW
ENGLAND
VEIN CENTER
THE NEW
2/13/97
ENGLAND
VEIN AND
LASER CENTER
THE NEW
ENGLAND
VEIN & LIPO
CENTER
1
1/16/04
Date of First
Use
August 1996
Services
August 1996
Treatment of varicose and
spider veins, and laser
treatment used in a variety
of medical applications.
October 2003
Laser hair removal services,
microdermabrasion services,
cosmetic services, namely,
liposuction, laser, microincision, phlebectomy and
scerotherapy treatment of
spider and varicose veins.
Treatment of varicose and
spider veins
New England is a geographic region in the northeastern part of the United States, comprising the
contiguous states of Connecticut, Rhode Island, Massachusetts, Vermont, New Hampshire, and Maine.
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Complainant has also applied for U.S. federal registration of its New England Vein &
Lipo Center mark, in an application filed October 21, 2005, based upon use of this mark
in commerce since November 2003. This application is currently pending.
Communications between the parties. In April 2004, Respondent invited Steven
Margolis, Complainant’s principal physician, to attend a conference in Boston.
Respondent’s invitation was addressed to Dr. Margolis, care of New England Vein &
Laser Center in Concord, Massachusetts. The purpose of the conference was to invite
surgeons in the New England area who provide treatment of venous disease to join
Respondent’s network of physicians. Dr. Margolis attended the conference but decided
not to join Respondent’s network.
The disputed domain name. Respondent registered the disputed domain name on
April 20, 2005. As an Internet user entering this domain name reaches a page
captioned “www.newenglandveincenter.com”, with the name and address of
Respondent network physician in Salem, New Hampshire. The banner headline of this
webpage is “Vein Centers for Excellence of New England.”
5.
Parties’ Contentions
A.
Complainant
The Panel summarizes Complainant’s contentions as follows:
Rights in a mark. Complainant has rights in its three marks by reason of its
Massachusetts registrations, its pending federal registration for one mark, and its
continuous use of these marks in commerce. The disputed domain name is identical to
Complainant’s “New England Vein Center” mark and confusingly similar to its other
two marks.
Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent lacks rights or legitimate interests because:
-
-
-
There is no evidence that Respondent is commonly known by the disputed
domain name. Rather, it and its member physicians are known by the name
“Vein Centers for Excellence.”
Respondent had no domain name, trademark, or service mark
corresponding to the disputed domain name.
Respondent, Complainant’s direct competitor, is using the disputed domain
name for commercial purposes.
Respondent was aware of Complainant and its service marks prior to
registering the disputed domain name and using it for competing services.
Respondent’s invitation to Complainant’s principal to join Respondent’s
network, addressed to Complainant’s business name and address, evidences
Respondent’s knowledge.
Complainant has never authorized Respondent to use Complainant’s service
marks.
In these circumstances, Respondent’s use of the disputed domain name is not legitimate
under the Policy.
Bad faith. In addition to the circumstances cited for lack of legitimate interest, the
following evidences Respondent’s bad faith in registration and use.
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-
Respondent was aware “actively or constructively” of Complainant’s
trademarks when it registered the disputed domain name.
Respondent’s registration and use of the disputed domain name has had the
effect of diverting customers or prospective customers to Respondent’s
website.
Respondent’s conduct thus comes within paragraph 4(b)(iv) of the Policy.
B.
Respondent
Respondent draws a distinction between Complainant’s registered marks that underlies
Respondent’s opposition to Complainant’s contentions under each of the three
operative paragraphs of the Policy. For purposes of this proceeding Respondent does
not contest Complainant’s rights to “New England Vein & Laser Center” or “New
England Vein & Lipo Center,” but denies many of Complainant’s contentions in
respect to the shorter “New England Vein Center” mark.
Rights in a mark. Respondent denies that Complainant has enforceable rights in the
phrase “New England Vein Center” for several reasons:
-
-
This is not the name that Complainant has used in its advertising, and it is
not the name used to refer to Complainant in the newspaper articles and
other publicity about Complainant attached to the complaint. The news
media, and Complainant itself in its own advertising, use the full name:
either New England Vein & Laser Center or New England Vein & Lipo
Center.
The shorter phrase is merely descriptive and Complainant has shown no
“secondary meaning” attaching to it.
Respondent acknowledges inviting Dr. Margolis to its seminar and asking
him to join Respondent’s network, but points out that he addressed its
invitation to Dr. Margolis at “New England Vein and Lipo Center,” not
“New England Vein Center.”
Respondent thus denies that Complainant has enforceable rights in its New England
Vein Center mark. The mark consists of two descriptive phrases that in the case of both
Complainant and Respondent describe their geographic location and the services they
provide. Because of this, Respondent suggests, the mark is unenforceable under United
States trademark law and may not be used to invoke the Policy.
Any similarity between the disputed domain name and Respondent’s longer marks is
permitted because Respondent has done no more than incorporate these two distinctive
terms (“New England” and “Vein Center”) into a domain name at which it conducts a
legitimate business.
Rights or legitimate interests. Respondent has rights in the disputed domain name
because:
-
Respondent has used it in connection with a bona fide offering of goods and
services, its member physician’s medical practice in Salem, New
Hampshire.
-
The disputed domain name is descriptive of the services provided by
Respondent’s New Hampshire member physician and is made up of two
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descriptive phrases that are not, at least separately, entitled to trademark
protection.
-
An Internet search for “vein center” or for “New England” yields countless
sites for businesses unconnected to Complainant. An Internet search for the
combined terms yields two other Massachusetts medical facilities in
addition to Complainant and Respondent.
-
Respondent’s use is “fair use” under United States trademark law and the
Policy. (See Policy, paragraph 4(c)(iii))
-
Respondent’s use of the disputed domain name is consistent with similar
uses for other medical centers run by its member physicians.
Bad faith. Respondent denies bad faith in registration or use of the disputed domain
name.
-
It claims (without evidentiary support) that Respondent searched the
“whois” database and the United States Patent and Trademark Office
database prior to registering the disputed domain name and found nothing.
Respondent is not responsible for searching the registry of states other than
the state in which its own business is located, in this case New Hampshire.
-
There was no intentional attempt to create a likelihood of confusion with
Complainant, since Respondent merely selected a generic and
geographically descriptive term, indicating only the type of service
provided and the location of those services. There is no evidence that
Complainant alone is known by the generic or descriptive terms of the
disputed domain name. In fact, the evidence is to the contrary.
-
The disputed domain name has not acquired “secondary meaning,” contrary
to Complainant’s contentions.
Reverse domain name hijacking. Respondent asserts that “Complainant is certainly
aware of the lack of merit in its argument,” and that “the Complainant’s real motive in
this case is to eliminate competition rather to protect a valid mark.” Respondent
additionally cites several alleged misstatements in Complainant’s presentation to the
Panel. All of these relate to the distinction drawn between Complainant’s identity as
“New England Vein & Laser Center” or “New England Vein & Lipo Center” rather
than “New England Vein Center.’”
6.
Standards for Decision
The Complainant must prove the elements set out in paragraph 4(a) of the Policy:
(i)
Respondents’ Disputed Domain Name is identical or confusingly similar to
a trademark or service mark in which Complainant has rights; and
(ii)
Respondents have no rights or legitimate interests in respect to the disputed
domain name; and
(iii) The disputed domain name has been registered and is being used in bad
faith.
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Complainant bears the burden of proof on each of these elements.
7.
Discussion and Findings
A.
Identical or Confusingly Similar to a Mark in which Complainant has
Rights.
Complainant has made out its case under paragraph 4(a)(i) of the Policy. First, the
disputed domain name is identical to Complainant’s New England Vein Center mark.
Complainant has provided proof of a validly registered trademark, albeit registered with
a state rather than nationally. A state registration may be sufficient for purposes of the
Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions
(“Overview”), §1.1; see also, e.g., Teresa Christie, d/b/a The Mackinac Island Florist
v. James Porcaro d/b/a Weber’s Mackinac Island Florist, WIPO Case No.
D2001-0653.
Unlike some states, Massachusetts does not treat the mere filing of a business name as
the equivalent of trademark registration; the Secretary of the Commonwealth notes that
business designations “that are ‘merely descriptive’ of the applicant’s products or
services are unregistrable under the trademark statute.”2 The Secretary’s having
allowed registration of Complainant’s “The New England Vein Center” mark under this
standard, under an almost uniform line of decision under the Policy3 the Panel lacks
authority to set it aside based on Respondent’s argument that it is merely descriptive
and should not have been registered. The Panel will address the extent to which
Complainant may preclude others from using a domain name incorporating a mark
consisting of two descriptive phrases under paragraphs 4(a)(ii) and 4(a)(iii) of the
Policy.
The disputed domain name is also confusingly similar to Complainant’s other two
registered marks, the adequacy of which Respondent does not contest.4 Just as adding
descriptive words to a registered mark to a domain name does not obviate confusion
under the Policy, neither does incorporating less than all of a registered mark if the
domain name incorporates the dominant feature or features of the mark. See, e.g.,
Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827. Here
Respondent selected a domain name with four of the six words, including the first three
words in the same order, of two marks it acknowledges are sufficient to invoke the
Policy (and of which it was aware when it registered the domain name). Similarity
there plainly is, and confusion is likely.
Particularly is that so in light of Internet searching protocols. An Internet user seeking
Complainant’s website will likely use the words “New England Vein Center” (and
2
3
4
“About Trademarks and Service Marks, “ website of the Secretary of the Commonwealth of
Massachusetts, http://www.sec.state.ma.us/cor/corpweb/cortmsm/tmsminf.htm.
Overview, §1.1, Consensus View; see also Christie v. Porcaro, WIPO Case No. D2001-0653; Hola S.
A. v. Idealab, WIPO Case No. D2002-0089.
Respondent’s acknowledgment that these marks are sufficient to invoke the Policy is understandable. As
well as state registration, Complainant has furnished ample evidence of common law rights in these two
marks, including advertising material and an affidavit from its principal attesting to substantial
expenditures to develop the business and marks. In these circumstances Complainant has common law
rights in these two marks that are sufficient to invoke the Policy. Overview, §1.7.
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perhaps others) as the search term. The initial interest confusion5 resulting from
another name incorporating the dominant words of the mark prompts cybersquatters to
select domain names that vary only slightly from the marks of others, to allow
“accidental” diversion of the mark owners’ customers. Overview, §1.2 and cases there
cited.
B.
Rights or Legitimate Interests
The business of Respondent’s New Hampshire physician that is described at the site to
which the disputed domain name resolves is certainly “legitimate” in the sense that it is
permitted by law, it pays its taxes, it engages in competition, and so forth. But if that
were the only standard for determining whether a business was within the safe harbor of
paragraph 4(c)(i) of the Policy any cybersquatter that conducted such a lawful business
could always find refuge. A panel examining the legitimacy or bona fides of a
respondent’s business looks rather to the respondent’s entitlement to the domain name
it has selected. Use of one party’s mark by a competitor is especially suspect because
of the likelihood of competitive injury.
The record in this proceeding contains no evidence at all that Respondent or its New
Hampshire physician was known by the phrase “New England Vein Center” prior to
selecting the disputed domain name (Policy, paragraph 4(c)(ii)).6 And when it did so
Respondent was aware of Complainant, Complainant’s marks, Complainant’s business,
and the proximity of its New Hampshire physician to Complainant.
These circumstances closely mirror those in Mackinac Island Florist, supra. As in this
case, complainant there held a state-registered mark consisting of a geographic area and
a description of its services. Respondent, which was well aware of the complainant, its
mark, and its business name, selected a close variant of complainant’s name and mark
rather than respondent’s own business name for a business competing directly with
complainant in the same geographic area. The panel in that case held, in language
equally applicable here:
Respondent does not use a name corresponding to the Domain Names, is not
commonly known by the Domain Names, and is not making a legitimate
noncommercial or fair use of the Domain Names. The evidence shows that the
Respondent is a competitor of the Complainant and well aware of the
Complainant’s use of the mark in question, and, as discussed below, gives rise to
a conclusion that the Respondent’s use of the mark was not fair use but in bad
faith.7
As in Julie & Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the
5 The term in the Internet context comes from Brookfield Communications, Inc. v. West Coast Entertainment
Corp., 174 F. 3d 1036 (9th Cir. 1999)
6 While Respondent does use comparable domain names (a geographic identifier followed by “vein center”)
for some (but not all or most) of its other centers, that practice does not in any way show that Respondent
had been known by the disputed domain name prior to registering it.
7 Respondent seeks to distinguish Mackinac Island Florist on the basis that the respondent in that case on the
basis that “ In Mackinac Island Florist, Respondent used the exact name of a competing business, and
misleadingly indicated the location of Respondent business.” (Response, ¶38). The first claimed
distinction is irrelevant as the Policy permits a complainant to act when the disputed domain name is
confusingly similar to its mark, and inaccurate since the disputed domain name is identical to one of
Complainant’s marks except for the definite article the and a top-level domain designation. The second
distinction may bear on bad faith, but as discussed below the Panel in this case finds Respondent’s bad faith
on other grounds.
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Winds Blow, WIPO Case No. D2005-0073, another case with very similar operative
facts, Respondent’s claim to entitlement to the domain name it has chosen depends
upon its claim that the operative phrase is descriptive, and that Complainant has failed
to establish that mark sufficiently to invoke the Policy. That claim similarly fails with
the Panel’s holding that Complainant has rights in its marks under the Policy. A
respondent that elects the mark of a known competitor for its domain name runs the risk
that a panel will not share its views on invalidity or will find that it is not empowered to
set aside a duly issued mark.
C.
Registered and Used in Bad Faith
Respondent appears to acknowledge that it has some duty to ensure that it is not
treading on the trademark rights of another. According to its counsel’s unsubstantiated
assertion, Respondent conducted searches of federal trademarks and the “WhoIs”
database prior to registering the disputed domain name. With admitted knowledge of
its nearby competitor’s business name and mark it is nothing short of disingenuous for
Respondent now (Response, ¶41) to disclaim any duty to investigate that competitor’s
trademark rights in its home state. What Respondent did was to presume, solely on its
own authority, that it was free to use a similar name, perhaps because of a belief that it
was free to use any “common-phrase” or “descriptive term” or because of the
happenstance of being just across the border from the state in which Complainant had
registered its marks. Whatever the reason, on any objective basis Respondent has
“intentionally attempted to attract, for commercial gain, Internet users to [its] web site .
. ., by creating a likelihood of confusion with the complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of [its] web site. . . “ Policy, paragraph
4(a)(iv). Or as stated by the panel in Paule Ka v. Paula Korenek, WIPO Case No.
D2003-0453, bad faith is established by Respondent’s decision deliberately to “free
ride” on the goodwill associated with Complainant’s marks.
8.
Decision
For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of
the Rules, the Panel orders that the domain name be transferred to the Complainant.
The Panel need not consider Respondent’s charges of reverse domain name hijacking.
__________________________________
Richard G. Lyon
Sole Panelist
Date: February 22, 2006
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