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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AlohaCare v. PPI
Case No. D2002-1160
1. The Parties
The Complainant is AlohaCare of Honolulu, Hawaii, United States of America, represented by Dennis F Quebe of Honolulu, Hawaii, United States of America.
The Respondent is PPI of Honolulu, Hawaii, United States of America, represented by Adam Tay of Honolulu, Hawaii, United States of America.
2. The Domain Names and Registrar
The disputed domain names, <alohacare.com>, <alohacare.net>, and <alohacare.org> (the "Domain Names"), are all registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 20, 2002. On December 24, 2002, the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain Names. On December 24, 2002, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the Domain Names and providing the contact details for the administrative, billing, and technical contacts. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 31, 2002. The Center verified that the Complaint together with the amendment to 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 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2003. The Response was filed with the Center on January 23, 2003.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on January 29, 2003. 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.
4. Factual Background
Complainant was incorporated in the State of Hawaii in 1994, under the name AlohaCare. Complainant is a non-profit health plan that serves Medicaid recipients. Complainant operates a website at "www.alohacarehawaii.com".
Respondent registered the Domain Names on March 30 and 31, 1999. Respondent asserts that it is the registered agent of Alohacare Intelligent Monitoring, Inc., an entity that was incorporated in Delaware on June 6, 2001.
5. Parties’ Contentions
Complainant asserts that it incorporated under the name AlohaCare in 1994, and has trademark or service mark rights in the mark ALOHACARE. Complainant asserts that the Domain Names are identical to Complainant’s trademark, that Respondent has not used the Domain Names since registering them, that Respondent offered to sell the Domain Names to Complainant in exchange for costs and Complainant’s agreement to use Respondent’s web development services, that Respondent used a misleading corporate name on the websites associated with the Domain Names, and that Respondent renewed the Domain Names in 2002, to prevent Complainant from reflecting its business name in a corresponding domain name.
Respondent asserts that Alohacare Intelligent Monitoring, Inc. was incorporated in 2001 in the State of Delaware and has an international presence, with offices in Malaysia and Taiwan. Respondent asserts that Complainant’s domain names, <alohacarehawaii.com> and <alohacarehawaii.org>, are natural and appropriate for Complainant’s operations in the State of Hawaii. Respondent asserts that it "has had intended use" of the Domain Names to promote services and products that are different from Complainant’s business. Respondent asserts that since 1999, the company founders have gone through various business start-up phases before incorporating in 2001. Respondent asserts that "[o]ur website has been used mainly as a marketing tool to demonstrate our software prototype and business model", and asserts that this is demonstrated by Respondent’s participation in the 2001 University of Hawaii Business Plan Competition in which Respondent was awarded "second title". Respondent further asserts that it has never intended or offered to sell the Domain Names for a profit to the Complainant "despite Complainant’s continuing attempts in soliciting through phone calls, emails and postal mails." Respondent asserts that through discussions with a mutual business acquaintance of the parties, Respondent suggested that Complainant use its current domain name and also offered to give Complainant use of the <alohacare.org> domain name. Respondent asserts that the reference on its website to "Copyright 2000 by AlohaCare Inc." was a typographical error that has been fixed, and notes that in any event Complainant is "AlohaCare" and not "AlohaCare Inc." Respondent further asserts that it did not register the Domain Names to confuse consumers or to sell the Domain Names.
6. Discussion and Findings
Pursuant to paragraph 15 of the Rules, panelists in domain name disputes "shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that [they] deem applicable."
Under paragraph 4(a) of the Rules, the Complainant must prove the following:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Rules the Complainant must show that the domain names at issue are "identical or confusingly similar to a trademark or service mark in which the complainant has rights". "The Policy does not require that the Complainant should have rights in a registered trademark or service mark. It is sufficient that the Complainant should satisfy the Administrative Panel that she has rights in common law trademark or sufficient rights to ground an action for passing off." Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000).
Complainant has been incorporated under the name "AlohaCare" since 1994, and does business in the health care/insurance field. Complainant has not submitted any form of trademark registration. However, Respondent does not challenge Complainant’s trademark rights, Complainant has submitted its Articles of Incorporation, and the file contains information regarding the operation of Complainant’s business that satisfies the Rules, paragraph 4(a)(i) requirement. See, e.g., Exhibit D to the Response.
Accordingly, this Panelist finds that the domain names <alohacare.com>, <alohacare.net>, and <alohacare.org> are identical or confusingly similar to Complainant’s ALOHACARE mark. The addition of the .com, .net, and .org TLDs are not relevant to the determination of similarity. See, e.g., General Electric Company v. Charles Kasinga, WIPO Case No. D2000-0389 (July 14, 2000) (addition of a top level domain does not distinguish a domain name from a trademark).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Rules sets out three non-exclusive circumstances that can demonstrate rights or legitimate interests in a domain name. Those circumstances are: (1) before any notice of the dispute, the Respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; (2) the Respondent has been commonly known by the domain name; or (3) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Procedurally, "while the complainant has the burden of proof on this issue, once the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. … ‘Concrete evidence’ constitutes more than mere personal assertions. … Evidence in the form of documents or … declarations should be furnished in support of such assertions." Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000).
Complainant has made out a prima facie case of lack of rights or legitimate interests on the part of Respondent. As such, it is incumbent upon Respondent to come forward with concrete evidence rebutting this assertion.
Respondent argues that it has rights or legitimate interests because "Alohtacare [sic] Intelligence [sic] Monitoring, Inc. has had intended use of our domain name to promote our E-health services and products … . Since registering our domain names in early 1999, our company founders have went through various phases in the start-up process before formally incorporating the company in 2001 in the State of Delaware. … Our website has been used mainly as a marketing tool to demonstrate our software prototype and business model. This is evidenced by our participation in the 2001, University of Hawaii’s Business Plan Competition in which we were awarded the second title for the competition … ." Respondent refers to Annex B in support of the final sentence or two of this description. Annex B appears to be a typewritten page concerning a business plan competition.
Respondent has not come forward with any concrete evidence explaining how the registrant of the Domain Names -- PPI -- has any rights or legitimate interests in the Domain Names. Respondent’s explanation centers on a company named "Alohacare Intelligent Monitoring, Inc." The only evidence of any affiliation between Respondent and "Alohacare Intelligent Monitoring, Inc." appears in the caption of Respondent’s response, where Respondent has modified Complainant’s caption to read "PPI … a register agent of Alohacare Intelligent Monitoring, Inc." There is no explanation of what this agency relationship consists of, or how the relationship gives PPI any rights or legitimate interests in the Domain Names.
Further, Respondent’s assertions do not satisfy paragraph 4(c) of the Rules with concrete evidence. The record indicates that "Alohacare Intelligent Monitoring, Inc." was incorporated in 2001, whereas the parties were in discussions during, or prior to, 2000 (this fact does not appear directly in the pleadings, but is inferred from Respondent’s statement that Respondent suggested to Complainant that Complainant use <alohacarehawaii.org> as its domain name, and that Complainant followed this advice -- as <alohacarehawaii.org> was registered on April 14, 2000, the Panelist infers that the discussions took place prior to that date). Thus, paragraph 4(c)(i) of the Rules is not satisfied. If anything, Respondent’s assertion that it is the registered agent for "Alohacare Intelligent Monitoring, Inc." negates the Rules, paragraph 4(c)(ii) factor that Respondent is known as AlohaCare. Also, Respondent presented no evidence that "Alohacare Intelligent Monitoring, Inc." is known as AlohaCare. As to the Rules, paragraph 4(c)(iii) factor -- legitimate use -- Respondent has not presented concrete evidence of legitimate use. The record shows that the Domain Names were basically attached to "Under Construction" pages at the time the Complaint was filed. Respondent asserts, based on its Annex B, that its website has been used as a marketing tool to demonstrate software and a business model. However, this assertion is contradicted by the "Under Construction" page submitted by Complainant, and Respondent’s Annex B does not refer to any use of a domain name or website but only discusses a business plan competition held by the University of Hawaii College of Business Administration’s Center for Entrepreneurship and E-Business.
Accordingly, this Panelist finds that Respondent has not come forward with concrete evidence rebutting Complainant’s prima facie case, and thus finds that Respondent does not have rights or legitimate interests in the Domain Names for purposes of this proceeding based on the evidence presented in this proceeding.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out four non-exclusive factors that "if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith". These factors include (i) registration or acquisition of the domain name primarily for the purpose of selling, renting, etc. the domain name for valuable consideration in excess of documented out-of-pocket costs; (ii) registration of the domain name to prevent the trademark owner from registering their trademark as a domain name, provided there is a pattern of such activity; (iii) registration of the domain name to disrupt the business of a competitor; or (iv) intentionally attempting to attract users to a website under a domain name that is likely to be confused with the complainant’s mark as to source, sponsorship, affiliation, or endorsement.
Complainant’s evidence of bad faith consists of: (1) an alleged offer to sell the Domain Names for cost on the condition that Complainant use Respondent’s web development services; (2) the allegation that Respondent’s registration of the Domain Names "creates barriers for AlohaCare to engage in appropriate business activities on the Internet"; (3) the allegation that Respondent’s "Under Construction" page contained the phrase "Copyright 2000 by AlohaCare Inc." when Respondent’s name is not AlohaCare Inc.; (4) the allegation that "Respondent has performed no business or personal related activity with the register domain names"; and (5) the allegation that Respondent renewed the Domain Name registrations in 2002 "to prevent AlohaCare from registering and reflecting its business name in a corresponding domain name."
Respondent responds that it never intended or offered to sell the Domain Names for a profit, but rather that Complainant engaged in "continuing attempts" to solicit offers and Respondent "turned down their requests outright" and "even offered to give the Complainant the use of alohacare.org" which the Complainant turned down. Respondent asserts that the copyright statement "was a typo" that was fixed, and that Complainant and Respondent are not engaged in the same types of business operations. Respondent then recites that it did not engage in the activities specified in paragraphs 4(b)(i) and (iv) of the Rules.
"The Policy is only designed to deal with clear cases of cybersquatting. This procedure is not a convenient forum for resolving borderline disputes and/or cases involving material conflicts of fact." Centennial Communications Corporation and Centennial de Puerto Rico v. Centennial, WIPO Case No. D2000-1385 (January 31, 2001). Because the evidence regarding the alleged offer to sell is in direct conflict and neither party submitted any concrete evidence on this point, this Panelist is not in a position to determine which party’s allegations are correct on this point and accordingly holds that the allegations regarding the alleged offer to sell have not been proven sufficiently to give rise to a finding of bad faith.
Complainant’s allegations regarding elements (2) and (5) (preventing Complainant from registering its mark as a domain name) apparently seek to address the bad faith factors in paragraphs 4(b)(ii) and (iii) of the Rules (a pattern of preventing others from registering their marks as domain names, and/or registering the Domain Names to disrupt the business of a competitor). While Respondent asserts that the parties are not competitors, the descriptions that the parties have submitted of their businesses indicate that Complainant and Alohacare Intelligent Monitoring, Inc. both operate in the healthcare field. Complainant has not alleged that Respondent has registered any additional marks to form a pattern. However, Respondent has registered three domain names in this case and Panels have held that the registration of even two domain names can form a pattern. See, e.g., Caterpillar, Inc. v. Ivenue.com, Inc., Claim No. FA010600009739 (July 18, 2001); Yahoo! Inc. v. Syrynx, Inc. and Hugh Hamilton, WIPO Case No. D2000-1675 (January 30, 2001); Nokia Corp. v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 (April 18, 2000). Therefore, these allegations tend to support a finding of bad faith, although standing alone they might not be sufficient.
With respect to the use of "AlohaCare Inc." on Respondent’s "Under Construction" page, this Panelist finds that Respondent’s explanation of this being a "typo" lacks credibility. This Panelist finds it telling that the use on Respondent’s "Under Construction" page contained a capital "c" in "AlohaCare", which is the form in which Complainant uses it, whereas "Alohacare Intelligent Monitoring, Inc." does not have a capital "c". This Panelist also finds it interesting that Respondent did not get the name of its own business correct on page 3 of the Response, calling the business "Alohtacare [sic] Intelligence [sic] Monitoring, Inc." Again, these circumstances tend to support a finding of bad faith, although standing alone they might not be sufficient.
Finally, Complainant alleges that Respondent made no use of the Domain Names during the nearly four years that they have been registered, and submits a printout of an "Under Construction" page from the Domain Names at the time the Complaint was filed. Respondent asserts that it has used the Domain Names in connection with the business plan competition addressed above. However, as noted above there is no concrete evidence that the Domain Names were used in connection with the competition and there also is no evidence that Respondent PPI had anything to do with that use. Numerous Panels have determined that holding a domain name without using it can constitute evidence of bad faith, typically citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). In this case, if the Domain Names were used at all the only evidence of use would relate to 2001 -- two years after registration and after the Complainant contacted Respondent about the Domain Names.
Accordingly, this Panelist finds that the weight of all the evidence and circumstances justifies a finding of bad faith.
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 -- <alohacare.com>, <alohacare.net>, and <alohacare.org> -- be transferred to the Complainant.
Bradley A. Slutsky
Dated: February 12, 2003