WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Encompass Corporation and Iowa Foundation for Medical Care v. Don Hughes
Case No. D2006-1592
1. The Parties
The Complainants are Encompass Corporation and Iowa Foundation for Medical Care, Iowa, United States of America, represented by Voorhees & Sease, P.L.C., United States of America.
The Respondent is Don Hughes, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <encompassmm.com> is registered with Melbourne IT, trading as Internet Names Worldwide (“Melbourne IT”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2006. On December 15, 2006, the Center transmitted by email to Melbourne IT a request for registrar verification in connection with the domain name at issue. On December 18, 2006, Melbourne IT transmitted by email to the Center its verification response stating that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. 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 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2007. The Response was filed with the Center on January 3, 2007.
The Center appointed D. Brian King as the Sole Panelist in this matter on January 22, 2007. The Panel finds that it was properly constituted. The Sole Panelist 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 facts relevant to the current dispute are set out in the Complaint and the Response. Considering the evidence submitted and the reasonable inferences to be drawn therefrom, the Panel finds the following facts to have been established.
The Complainants refer in the substantive part of their Complaint to Encompass Corporation as being the ‘Complainant’, and the Panel will adhere to this terminology. According to the Complaint, the Complainant is a subsidiary of the Iowa Foundation for Medical Care and provides managed care programs to health and welfare trusts, insurance companies, municipalitiesx and other parties. The Complainant has been using the ENCOMPASS mark since September 1, 1989 and obtained a federal registration of the ENCOMPASS service mark on April 2, 1991.
The Respondent is Don Hughes, who is an officer of Encompass Medical Management, Inc. According to the Response, this company, incorporated on September 20, 2004, provides financial and clinical predictive models of medical health plans to health plan members, health plan administrators, consultants, re-insurance carriers and others who need to understand the analytics of health plan performance. The Respondent registered the disputed domain name on September 21, 2004.
5. Parties’ Contentions
The Complainant states that it is a nationally-known corporation that provides customized, patient-focused management care programs to self-insured employers and other parties. Services provided by the Complainant include utilization management programs, care management programs, and preferred network development and management programs. It appears, in short, that the Complainant’s clients are various kinds of entities that, in one way or another, provide health insurance, and that the Complainant’s services include tools to assist in administering health insurance programs of different types, and to maximize efficiency and minimize costs in managing such programs. The Complainant states that the magazine Business Insurance ranked it as the eight largest care management provider in the country.
The Complainant further states that it has been using the ENCOMPASS mark since September 1, 1989, and has provided evidence that it obtained a registration for such mark on April 2, 1991 (see Annex 3 to the Complaint). According to the Complainant, the ENCOMPASS service mark is prominently used on the Iowa Foundation for Medical Care and Encompass websites (“www.ifmc.org”, “www.encompas.com” and “www.encompassonline.com”) (see Annex 4). The Complainant alleges that it has created substantial goodwill in the ENCOMPASS service mark and that it is strong and widely known in the health care review services industry.
The Complainant alleges that the Respondent’s company provides similar products and services to that of the Complainant.
In April 2005, the Complainant contacted the Respondent and requested that the Respondent discontinue the use of the disputed domain name, as using the domain name incorporating the Complainant’s service mark would “inevitably cause confusion to consumers about the affiliation between the Respondent and Encompass” (Annex 10). The Respondent continued to use the disputed domain name.
According to the Complainant, the disputed domain name is practically identical and confusingly similar to the Complainant’s service mark. The addition of “mm” only enhances confusion, as it apparently stands for “medical management”, this being the very type of service provided by the Complainant. Moreover, according to the Complainant, the use of the domain name for offering similar goods and services adds, to the conclusion that the disputed domain name is confusingly similar to the Complainant’s mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Complainant claims that neither the Respondent nor his company owns or has been authorized to use the ENCOMPASS mark, which has obtained national notoriety in the United States. According to the Complainant, the Respondent’s use of the disputed domain name to promote and sell competitive services, or at least substantially similar services, does not constitute a legitimate use because it is not a bona fide offering of goods or services. The Complainant furthermore alleges that the disputed domain name suggests a relationship between the Complainant and the Respondent that does not exist, and concludes that the Respondent’s registration of the disputed domain name was calculated to cause confusion to customers as well as divert web traffic from the Complainant’s to the Respondent’s website.
Finally, the Complainant alleges that the Respondent registered and uses the disputed domain name in bad faith. According to the Complainant, the Respondent prominently displays the word “ENCOMPASS”, i.e., the Complainant’s mark, on its website, which the Respondent continues to do despite being notified of its unauthorized use of the Complainant’s mark and the likelihood of confusion resulting therefrom. The Respondent is therefore knowingly using the Complainant’s mark in its domain name in bad faith and is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant. The Complainant notes that instances of such confusion have already come to its attention, citing as an example that an industry publication sent literature regarding directory listing opportunities to the Complainant, even though the solicitation was sent in respect of the Respondent’s website (see Annex 11).
The Respondent states that it provides financial and clinical predictive models of medical health plans to health plan members, health plan administrators and other parties who need to understand the analytics of health plan performance. According to the Respondent, there are no common services offered by both the Complainant and the Respondent and no common clients between the parties. The Respondent employs statisticians and information analysts, whereas the Complainant employs medical clinicians who review and approve medical services requested on behalf of patients insured by the Complainant’s clients. The Respondent says that it was not aware of the Complainant’s existence before this dispute arose.
According to the Respondent, the disputed domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Respondent notes that the Complainant has always used the domain name <encompas.com> (with one “s”), whereas the domain name <encompass.com> (with double “s”) has historically been registered by parties other than the Complainant. The Respondent alleges that no client of either the Complainant or the Respondent has mistakenly contacted the wrong party and emphasizes that the only example of confusion cited by the Complainant concerned a mailing by a magazine soliciting advertising for a category of predictive modelling, a service not offered by the Complainant. The Respondent says that it has not had any experience of even this level of confusion. The Respondent emphasizes that there are numerous domain names that use “encompass” with the addition of one or more letters or terms.
Furthermore, the Respondent claims that, prior to any notice of this dispute, it used the disputed domain name in connection with a bona fide offering of analytic, specialized services. The Respondent says that it acquired all of its clients through direct personal contact, and that speaking at industry conferences and the personal relations of the Respondent’s principals are its exclusive sources of clients. According to the Respondent, it has been commonly associated with the disputed domain name, as “mm” stands for “Medical Management” in the corporate name (“Encompass Medical Management”). When the disputed domain name was registered, this part of the corporate name was abbreviated to “mm” for convenience in typing email addresses and the web URL.
Finally, the Respondent denies that the disputed domain name was registered or is being used in bad faith. The domain name was registered to function as the primary domain for the Respondent’s company, and was thus not registered with the purpose of selling the domain name to the Complainant or to a competitor of the Complainant. Nor was the domain name, according to the Respondent, registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name, as the Respondent was not aware of the Complainant’s existence. In any event, the Respondent has not engaged in a pattern of such conduct. Furthermore, the Respondent states that it and the Complainant are not competitors and therefore the Respondent did not register the disputed domain name in order to disrupt the Complainant’s business. Nor was the disputed domain name registered in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. According to the Respondent, this is impossible as its services are not sold on its website or purchased on impulse. Several state and federal regulatory requirements, requiring formal written contracts between the Respondent and its clients, make this impossible. Furthermore, most of the Respondent’s clients contract for services for multiple years.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant bears the burden of proof on each of these elements. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 23, 2000).
A. Identical or Confusingly Similar
The Panel finds that the Complainant holds rights in the mark ENCOMPASS, based upon its registration of this mark with the US Patent and Trademark Office (“USPTO”) and use of the mark in commerce for more than 17 years.
The disputed domain name integrally incorporates the Complainant’s mark. To the Complainant’s mark only “mm” is added, which is apparently an abbreviation of “medical management.” This is the second part of the Respondent’s company name, but at the same time, it also describes the services offered by the Complainant. The addition of the “mm,” therefore, does not eliminate, but possibly even enhances, the likelihood of confusion arising from the similarity of the domain name to the Complainant’s mark. See Yahoo! Inc. v. Manage Technical a/k/a Administration Local, NAF Case No. FA0402000238649 (finding that, under the Policy, the incorporation of a third-party’s registered trademark in a domain name, combined with a generic or descriptive term, fails to eliminate the confusing similarity between the domain name and mark). The fact that the ENCOMPASS mark is the dominant element of the domain name further enhances this likelihood. See Westfield Corporation, Inc and Westfield Limited v. Graeme Michael Hobbs (Dynamic Marketing Consultants), WIPO Case No. D2000-0227 (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
The Panel therefore finds the first element to have been established.
B. Rights or Legitimate Interests
While the overall burden of proof rests with a complainant, previous Panels have recognized that the task of proving a negative can often be virtually impossible, since it generally requires information that is primarily within the knowledge of the respondent. Therefore, prior Panels have required the complainant to make out a prima facie case that the respondent lacks rights or legitimate interests. If such a prima facie case is made, the burden shifts to the Respondent to demonstrate rights or legitimate interests in the disputed domain name. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Harrods Limited v. HDU Inc. WIPO Case No. D2004-0093; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784.
It is undisputed that the Complainant has not licensed or otherwise authorized the Respondent to use the ENCOMPASS mark. Nevertheless, the Respondent has incorporated the entirety of the Complainant’s mark in the disputed domain name, and has used the domain name to attract Internet users to a commercial website. Furthermore, on the face of it, there are no apparent reasons for the Respondent to have chosen the name “Encompass,” and it is clear that the Respondent was on at least constructive notice of the Complainant’s rights in the mark at the time the disputed domain name was registered. In these circumstances, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks legitimate rights and interests. Therefore the Respondent carries the burden of proving that it did have legitimate rights and interests in the domain name. See Pfizer Inc. v. Alex Schreiner/ Schreiner & Co., WIPO Case No. D2004-0731.
The Policy gives three examples of circumstances that demonstrate rights and legitimate interests. The Respondent argues that it has rights and legitimate interests in the disputed domain name on the basis of the second of those circumstances, i.e. because it was using the domain name in connection with a bona fide offering of services before notice to it of the dispute. (Policy, paragraph 4(c)(i)).
The record indicates that the Complainant and the Respondent are providing similar services in the same field. At the very least, the services of the Complainant and the Respondent are related. This is underscored by the fact that part of the Respondent’s corporate name describes exactly the kind of services the Complainant offers: “medical management.” Furthermore, the Complainant and the Respondent serve the same kind of customers, namely health insurance providers of various kinds.
The Complainant has been offering its services since as early as 1989, and the Panel finds it established that the Complainant is widely known in the United States (at least in the health insurance industry in which both the Complainant and the Respondent are active). The Panel therefore finds it difficult to accept that the Respondent was unaware of the Complainant’s existence prior to the dispute. Even if subjectively it was not, the Respondent can still be held to have been on constructive notice of the Complainant’s rights in the ENCOMPASS mark. Since both parties are from the United States, and since the trademark application and registration were made with the USPTO, it is appropriate to apply United States principles of constructive notice to this situation. See Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.
The Respondent has not provided any reason for choosing the name “Encompass” for its business, and there is no apparent link between the term “Encompass” and the services provided by the Respondent. The Respondent does mention other companies that do business under the name “Encompass” in the medical industry, but without providing any explanation for this fact or giving any reason – much less a persuasive reason – why the Respondent chose to make use of this name when it was incorporated in 2004. Furthermore, the Respondent has not claimed to have been active as a business prior to registering the domain name, nor does this follow from the evidence submitted.
The Panel does not find established the Respondent’s allegation that it acquires all of its clients through speaking at industry conferences and the personal relations of the Respondent’s principals. The Respondent has not submitted any supporting evidence (e.g. conference programs where the Respondent spoke). Furthermore, the Respondent’s website reflects only activity through the Internet. For instance, the website does not provide a telephone number or physical address where the Respondent can be contacted, but it does provide an email address (see Annex 8 to the Complaint). The website also emphasizes services offered through the Internet (e.g. the possibility for customers to download reports). Notably, the website does not provide any statement or disclaimer that the Respondent and the Complainant are different companies, thereby further enhancing the possibility of confusion.
The Respondent claims that there is no potential of commercial gain to it from customer confusion. The Panel finds that there is. Customers or potential customers searching for the Complainant might end up on the Respondent’s website, be confused about the source or connection of the Respondent’s services, and therefore continue to make inquiries about such services. The fact that the services may not be purchased on impulse, as the Respondent claims, does not alter the fact that potential customers may end up on the Respondent’s website through confusion, giving the Respondent an opportunity to solicit their business through the website’s content and the email contact address.
The Panel finds on balance from the above circumstances that, by registering and using the disputed domain name, which incorporates the Complainant’s “ENCOMPASS” mark and targets the same client industry, the Respondent has intentionally sought to exploit consumer confusion to divert Internet users to the Respondent’s website. Previous Panels have held that such use cannot constitute a bona fide offering of services. See Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169; Pfizer Inc. v. Alex Schreiner/ Schreiner & Co., WIPO Case No. D2004-0731; Peter Frampton v Frampton Enterprises, Inc., WIPO Case No. D2002-0141.
From the evidence submitted, it does not follow that the Respondent has been commonly known by the disputed domain name. Furthermore, it is beyond doubt that the Respondent is making commercial use of the disputed domain name. Paragraphs 4(c)(ii) and (iii) of the Policy are thus not applicable.
Since the Respondent has not put forward any other circumstances that could demonstrate rights to and legitimate interests in the disputed domain name, and in light of the prima facie case to the contrary made out by the Complainant, the Panel finds the second element to have been established.
C. Registered and Used in Bad Faith
Previous Panels have acknowledged that the question of bona fide registration and use and use in bad faith are often closely connected, or even interdependent. See First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840 (“Although the Policy draws a clear distinction between the requirement of showing absence of legitimate right or interest in paragraph 4(a)(ii) and the showing of bad faith registration and use in paragraph 4(a)(iii), in reality it is difficult to separate the consideration of the one from the other. Absence of any right or interest on the part of the Respondent may be of assistance in determining bad faith registration and use, and bad faith registration and use may be of assistance in determining the legitimacy of the claimed right or interest.”).
Indeed, the two elements are closely connected in this case. The Panel finds that the circumstances that led to the establishment of the second element also lead to the establishment of the third element. On the basis of those circumstances, the Panel concludes that the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. Accordingly, the fourth circumstance listed in paragraph 4(b) of the Policy has been met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <encompassmm.com>, be transferred to the Complainant.
D. Brian King
Dated: February 5, 2007