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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Accelerated Rehabilitation Centers, Ltd v. Brian Skene

Case No. D2006-0421

 

1. The Parties

The Complainant is Accelerated Rehabilitation Centers, Ltd., Chicago, Illinois, United States of America, represented by Levin Ginsburg, United States of America.

The Respondent is Brian Skene, Commerce Township, Michigan, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <acceleratedrehabcenters.com> and <acceleratedrehabilitation.com> are registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2006. On April 5, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On April 6, 2006, 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 April 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2006. The Response was filed with the Center on April 11, 2006.

The Center appointed William R. Towns as the sole panelist in this matter on April 18, 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 owns the United States registration for the mark ACCELERATED REHABILITATION CENTERS, which the Complainant has used in commerce in relation to physical therapy and physician services in the field of sports medicine since 1994. The Complainant also is the registrant of the domain name <acceleratedrehab.com>, which the Complainant has used in relation to its commercial website since 1998.

The Respondent is a principal in Wesan Medical Equipment, which sells and services medical equipment. Wesan Medical Equipment maintains a website at “www.wesan.com”. The Respondent is the registrant of <wesan.com>, together with <wesan.org>, <wesan.net>, <wesanmedical.com>, and <wesanmedicalequipment.com>, all of which resolve to the Wesan Medical Equipment website.

On January 23, 2005, the Respondent registered three domain names: <acceleratedrehabilitationcenters.com>, <acceleratedrehabcenters.com>, and <acceleratedrehabilitation.com>. The Respondent began using these domain names to direct internet users to a web page in the directory structure of the Wesan Medical Equipment website, “www.wesan.com/therapy”. The web page, entitled “Welcome to Our Story”, contains content critical of the Complainant and of the treatment that the Respondent’s wife received at one of the Complainant’s facilities.¹

On January 28, 2005, the Complainant, through its attorneys, sent the Respondent a cease and desist letter regarding the latter’s use of the <acceleratedrehabilitationcenters.com> domain name, asserting a violation of the Complainant’s trademark rights and alleging that the Respondent’s website contained libelous content regarding the Complainant. The Respondent thereafter agreed to transfer this domain name to the Complainant, and signed a letter dated February 2, 2005 (hereinafter referred to as the “2005 letter agreement”) in which the Respondent agreed not to register or use any domain names confusingly similar to the Complainant’s ACCELERATED REHABILITATION CENTERS mark.

The Respondent did not disclose to the Complainant contemporaneously with his execution of this agreement that he had registered the disputed domain names. The Respondent continued to use the disputed domain names subsequent to signing this agreement to direct internet users to the “www.wesan.com/therapy” page. On January 23, 2006, he renewed his registration of the both of the disputed domain names for an additional 5 years.

On March 6, 2006, the Complainant, through its attorneys, contacted the Respondent regarding its use of the disputed domain names, alleging that the Respondent was continuing to violate the Complainant’s rights in its mark and had breached the 2005 letter agreement. Upon receiving this notice, the Respondent discontinued the use of the disputed domain names in connection with the Respondent’s website, redirecting one of them to the Complainant’s website. On March 9, 2006, the Complainant demanded that the Respondent transfer the disputed domain names to the Complainant. The Respondent indicated he would seek the advice of his attorney on those issues. At present, the <acceleratedrehabcenters.com> domain name directs internet users to the Complainant’s “www.acceleratedrehab.com” website, while the <acceleratedrehabilitation.com> domain name resolves to a website that bears the legend “Under Construction”.²

 

5. Parties’ Contentions

A. Complainant

The Complainant maintains that the disputed domain names are confusingly similar to its registered ACCELERATED REHABILITATION CENTERS mark, which the Complainant has used in commerce since 1994. The Complainant alleges that the Respondent’s unauthorized use of the disputed domain names has or will cause dilution, blurring and/or tarnishment of its mark.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant contends that the Respondent is not known by the disputed domain names, has not used the disputed domain names in connection with a bona fide offering of goods or services, and is not making a legitimate or non-commercial use of the domain names. According to the Complainant, the Respondent has acknowledged in correspondence with the Complainant’s attorneys that he has no rights or legitimate interests in the disputed domain names.

The Complainant alleges that the Respondent’s failure to disclose his registration of the disputed domain names when he executed the 2005 letter agreement, his subsequent renewal of the registration of the disputed domain names for an additional five years, his refusal to transfer the domain names, and his use or threatened use of the domain names constitutes bad faith under the Policy. The Complainant further urges that the Respondent registered the domain names in a bad faith attempt to prevent the Complainant from reflecting its mark in a corresponding domain name. For the foregoing reasons, the Complainant seeks transfer of the disputed domain names.

B. Respondent

The Respondent maintains that he registered the disputed domain names solely for use in connection with the “Welcome to Our Story” web page, in an attempt to inform the public of issues associated with physical therapy, and to share the experiences which he and his wife had with different forms of therapy and services.

The Respondent does not dispute that he agreed in 2005 not to register or use domain names that were confusingly similar to the Complainant’s mark, but observes that he had already registered the disputed domain names at that time. He claims that his renewal of the <acceleratedrehabcenters.com> domain name in 2006 was an oversight on his part and that the he did not consider the <acceleratedrehabilitation.com> domain name to infringe on the Complainant’s mark, since according to the Respondent it refers to a type of treatment.³

The Respondent denies that he has used or ever intended to use the disputed domain names to direct internet visitors to the Wesan Medical Equipment website. He claims that the only reason the “Welcome to Our Story” web page appears in the directory structure of the Wesan Medical Equipment website because this is the only truly hosted domain name that he owns. Further, the Respondent asserts there is no link between the “Welcome to Our Story” web page and the Wesan Medical Equipment website, and that there never has been. The Respondent also argues that there could be no possible confusion with the Complainant’s website, as it is immediately obvious to any visitor to his web page that the page is not affiliated with any medical or therapy facility or products.

Finally, the Respondent points out that he has asked for no payment for the domain names, even though he has paid for their registration and forwarding functions. The Respondent notes that he previously informed the Complainant’s counsel that the would voluntarily transfer to the Complainant the <acceleratedrehabcenters.com> domain name, which the Respondent currently is pointing to the Complainant’s website, as well as the <acceleratedrehabilitation.com> domain name, if the people he talked to though it was in any way infringing of the Complainant’s mark. The Respondent states he has been waiting on instructions from the Complainant, but has received none.

 

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a number of panels have concluded that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are confusingly similar to the Complainant’s ACCELERATED REHABILITATION CENTERS mark, in which the Complainant clearly has established rights through registration and use. The critical inquiry under the first element of paragraph 4(a) of the Policy is simply whether the mark and domain name, when directly compared, have confusing similarity. The Panel finds that to be the case here. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

C. Rights or Legitimate Interests

The disputed domain names are confusingly similar to the Complainant’s mark, and the Complainant has documented the Respondent’s unauthorized use of the domain names to divert internet users to the “Welcome to Our Story” web page, which the Respondent placed on the his “www.wesan.com” website, a commercial website where the Respondent sells and offers repair services for medical equipment. The Complainant has also presented evidence that the Respondent, upon agreeing to transfer the domain name <acceleratedrehabilitationcenters.com> to the Complainant in January 2005, further agreed not to register and use domain names confusingly similar to the Complainant’s mark, but that the Respondent renewed the registrations of the disputed domain names for an additional five years and continued to use the disputed domain names until contacted by the Complainant in March 2006. The Panel concludes that the Complainant had made a prima facie showing under paragraph 4(a)(ii) of the Policy, requiring the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:

(i) before any notice to him of the dispute, the Respondent’s 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) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) 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.

The Respondent does not claim to have been commonly known by the disputed domain names, and he denies any use of the domain names in connection with any offering of goods or services. The Respondent does maintain, however, that he is making a legitimate noncommercial or fair use of the disputed domain names under paragraph 4(c)(iii) of the Policy in connection with the “Welcome to Our World” web page, in which the Respondent criticizes the physical rehabilitation business in general, and levels specific criticism at the Complainant. Further, the Respondent asserts that the disputed domain name <acceleratedrehabilitation.com> is a name given to a particular type of medical treatment, and is not being used in relation to the Complainant or its mark.

Under certain circumstances, a respondent may be entitled to register and use a domain name consisting of a commonly used descriptive word, even where the domain name is confusingly similar to the registered mark of the complainant. See, e.g., Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843. It is clear, however, that a respondent must use the domain name not in a trademark sense but in a descriptive sense, to communicate some aspect of the respondent’s website. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031. In this case, the Respondent has offered no evidence of a specific medical treatment commonly known as “accelerated rehabilitation”; nor does the Respondent’s web page make any use of the term “accelerated rehabilitation” in this sense. Rather, the Respondent’s web page refers to “accelerated rehabilitation” only when identifying the Complainant by name, as the provider of the medical services complained of.

Regarding the Respondent’s position under paragraph 4(c)(iii) of the Policy, panelists are divided as to whether a respondent legitimately can operate a criticism site utilizing a domain name that is identical or confusingly similar to a complainant’s mark.⁴ The Panel notes a line of criticism site cases based in the United States holding that the Policy does not insulate trademark owners from critical views legitimately expressed without intent for commercial gain, even if posted at a “trademark.TLD” website.⁵ Even these decisions, however, do not suggest that a respondent is free to register multiple domain names which are confusingly similar to the complainant’s mark in order to divert internet users to the criticism site, or to renew the registrations and continue to use the domain names to divert internet users to the criticism site after agreeing not to do so, all of which the Respondent has done in this case.

Further, it is clear that a respondent must demonstrate that the domain name is being used without intent for commercial gain in order to successfully invoke paragraph 4(c)(iii) of the Policy. See Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000. The circumstances of the Respondent’s registration and use of the disputed domain names in this case do not clearly negate such intent for commercial gain, where the Respondent is using his commercial website, “www.wesan.com”, to host the purported criticism site. The Panel is not persuaded by the Respondent’s contention that he had no other means of placing the web page on the internet, given that internet users currently can access the web page at “www.physicalrehabilitationcenters.com”, a website to which the <physicalrehabilitationcenters.com> and <physicalrehabilitationcenter.com> domain names registered by the Respondent resolve.

Finally, the Respondent appears to deny registering the disputed domain names in order to launch a criticism site directed at the Complainant, instead stating that his intent was “to inform the public of the issues associated with physical therapy . . . and to review the different forms of therapy and services that we had tried and our experiences with them.” If that is the case, and the “Welcome to Our World” web page is not a criticism site regarding the Complainant, the Panel cannot conceive of any plausible basis upon which the Respondent could assert rights or legitimate interests in the disputed domain names, even for purposes of paragraph 4(c)(iii) of the Policy.

In view of the foregoing, the Panel concludes that the Respondent has not rebutted the Complainant’s prima facie showing under paragraph 4(a)(ii) of the Policy. The Respondent has not demonstrated that he is making a legitimate noncommercial or fair use of the disputed domain names under paragraph 4(c)(iii) of the Policy, even under those decisions construing the Policy as allowing a respondent under certain circumstances to operate a criticism site utilizing a domain name that is identical or confusingly similar to a complainant’s mark.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The circumstances of this case do not bring it squarely within any of the examples of bad faith registration and use set forth in paragraph 4(b); however, those examples are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel concludes from the circumstances of this case that the Respondent’s registration of the disputed domain names was undertaken in bad faith and that Respondent is continuing to act in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The circumstances surrounding the Respondent’s registration and use of the disputed domain names in January 2005 indicate the Respondent’s awareness of the Complainant and its mark. The Respondent registered multiple domain names that were identical or confusingly similar to the Complainant’s mark, including the disputed domain names, under circumstances leaving little room for doubt that the Respondent’s intent was to attract to the Respondent’s “Welcome to Our World” web page internet users seeking the Complainant’s website or information about the Complainant.

A respondent cannot make a legitimate noncommercial or fair use of a domain name under paragraph 4(c)(iii) of the Policy where bad faith registration and use of the domain name otherwise are indicated from the circumstances of the case. See CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul, WIPO Case No. D2004-0988; Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. In the Panel’s opinion, the Respondent’s registration of multiple domain names confusingly similar to the Complainant’s mark does not comport with the limited noncommercial or fair use exception envisioned in paragraph 4(c)(iii) of the Policy, and is evidence of bad faith. The Respondent’s renewed registration of the disputed domain names for an additional five years in January 2006, after agreeing not to register or use any domain names confusingly similar to the Complainant’s mark, and his continuing use of the disputed domain names until once more confronted by the Complainant in March 2006, are further indicia of the Respondent’s continuing bad faith. See Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.

The Panel is not persuaded by the Respondent’s further assertion that he is not in bad faith because he is no longer pointing the disputed domain names at his web page, and would have been willing to transfer the disputed domain names before now if he had received clear instructions from the Complainant. It is difficult for the Panel to envision how much clearer an indication the Respondent would require than the Complainant’s communication of March 9, 2006, unequivocally demanding that the Respondent immediately transfer the disputed domain names to the Complainant. Nor, if the Respondent has no further intent to use the disputed domain names and is willing to transfer the domain names without requesting payment, is it immediately clear to the Panel why he has not already done so.

 

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 <acceleratedrehabcenters.com> and <acceleratedrehabilitation.com> be transferred to the Complainant.

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William R. Towns
Sole Panelist

Date: April 30, 2006

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¹ The “Welcome to Our Story” web page can also be accessed at “www.physicialrehabilitationcenters.com”. Two additional domain names that the Respondent registered near the time he registered the disputed domain names, <phsycialrehabilitationcenters.com> and <physicalrehabilitationcenter.com>, resolve to this website.

² Internet users can still access the “Welcome to Our Story” page at “www.physicalrehabilitationcenters.com”.

³ The Respondent acknowledges he has since received “unbiased third party input” that “it could possibly be taken either way”.

⁴ Refer to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.5.

⁵ See, e.g., Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014; Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024; TMP Worldwide Inc. v. Jennifer L. Potter, WIPO Case No. D2000-0536; Bridgestone Firestone, Inc. v. Myers, WIPO Case No. D2000-0190. This view is not representative of the consensus of opinion in criticism site cases outside the United States, which appears to be that a respondent has no right to use a domain name identical or confusingly similar to the complainant’s mark for purposes of criticism. See, e.g., The Laurel Pub Company Limited v. Peter Robertson / Turfdata, WIPO Case No. DTV2004-0007; Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776; Microfinancial, Inc. v. Glen Harrison, WIPO Case No. D2003-0396; Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248. Notwithstanding the “robust free speech tradition” of the United States, some U.S. based panelists, applying the initial interest confusion approach, have concluded that a respondent cannot have a legitimate interest in using a domain name identical to the complainant’s mark, regardless of the content of the respondent’s website. See Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175; Texans For Lawsuit Reform, Inc. v. Kelly Fero, WIPO Case No. D2004-0778.