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and Mediation Center
Maxim Healthcare Services, Inc. v. Web Domain Names
Case No. D2005-1233
1. The Parties
The Complainant is Maxim Healthcare Services, Inc., Columbia, MD, United States of America, represented by Chernow Katz, LLC, United States of America.
The Respondent is Web Domain Names, Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <maximhealth.com> is registered with Moniker
Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2005. On November 30, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name(s) at issue. On the same date, Moniker Online Services, 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 December 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2006.
The Center appointed Daniel J. Gervais as the sole
panelist in this matter on January 17, 2006. 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
The Complainant is a healthcare service provider. It was established in 1988, under the name MedCall and adopted its current name in 1992. It provides staffing services for health professionals. It holds several trademark registrations in the United States for health services related marks, including MAXIM HEALTHCARE SERVICES registered in 1996 and MAXIM HEALTH SYSTEMS in 2002 (but first used in commerce in 1996).
The domain name at issue, which was registered in
2002, resolves to a website offering links to health related services, including
those of the Complainant and some of its competitors.
5. Parties’ Contentions
The Complainant argues that the domain name at issue is confusingly similar with its registered service marks, including the two just mentioned. The confusion is heightened by the fact that health related services and in particular staffing services are available on the site and compounded by the use of metatags that may lead some search engines to the Respondent’s site when searching for “Maxim Healthcare”.
The Respondent has no legitimate interest in the domain name. It is not authorized by the Complainant nor is it commonly known by that name.
The Respondent is acting in bad faith. It registered the domain name with the sole motive to profit from the Complainant’s well-known marks.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.3.).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
1. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As to the first question, the Complainant has provided the Panel with several instances of registrations at the USPTO of marks including MAXIM HEALTHCARE SERVICES registered in 1996, and MAXIM HEALTH SYSTEMS in 2002. Although this is not a necessary finding under the first element, the Panel notes that the first registration predates the registration of the domain name; the second has been in use since 1996 and the application to register the mark was filed prior to the registration of the domain name. The Panel finds that the Complainant has rights in the above-mentioned marks.
As to the second question, the Panel finds that the domain name is confusingly similar to the Complainant’s marks. The disputed domain name <maximhealth.com> incorporates the most important elements of the Complainant’s marks, namely MAXIM and HEALTH. The fact that various compound words or concatenations derived from the root “health” (health systems, healthcare etc.) were added does not diminish the confusing similarity. On the contrary, one might say that the Complainant owns a “family of marks” beginning with the words MAXIM HEALTH.
Consequently, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks MAXIM HEALTHCARE SERVICES and MAXIM HEALTH SYSTEMS.
2. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant’s prior use and registration of the above-mentioned marks. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests in using the domain name.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
There were no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. Quite contrary, the evidence suggests that the Respondent is using the disputed domain name for commercial gain with a view to unduly profiting from the goodwill flowing from the Complainant’s marks.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
3. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product.
The Respondent did not choose to register the domain name <maximhealth.com> by accident. It simply misappropriated a domain name and used it to attract Internet users to offer them services that compete with the Complainant’s. Given the use of the domain name made by the Respondent, such behavior falls within the type of bad faith registration and use contemplated by paragraph 4(b)(iv). In addition, it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing or tarnishing the Complainant’s marks.
The Panel finds for the Complainant on this third
element of the test.
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 name, <maximhealth.com> be transferred to the Complainant.
Daniel J. Gervais
Dated: January 19, 2006