Complainant is Aspenwood Dental Associates, Inc. of Aurora, Colorado, United States of America, represented by the law firm Sherman & Howard, LLC, United States of America.
Respondent is Thomas Wade of Broomfield, Colorado, United States of America, appearing on his own behalf.
The disputed domain name <coloradodentalimplantcenter.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2009. On May 22, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 22, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to Complainant on June 5, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 8, 2009. The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on June 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2009. The Response was filed with the Center on July 1, 2009.
The Center appointed Richard G. Lyon as the sole panelist in this matter on July 13, 2009. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. 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.
Complainant is based in Aurora, Colorado, United States of America, a suburb of Denver, Colorado's largest city. Through its three principals Complainant provides dental services in the Denver metropolitan area. Complainant's principal website appears to be “www.aspenwooddental.com”, which a Whois search reveals was created on September 13, 2000.1 Complainant filed to register the mark COLORADO DENTAL IMPLANT CENTER with the United States Patent and Trademark Office (USPTO) on November 7, 2008. The USPTO registered the mark on the Supplemental Register on March 31, 2009, and assigned it Registration Number 3,600,658. The Supplemental Register notes that “[t]he mark consists of the wording ‘COLORADO DENTAL IMPLANT CENTER' in white all within a maroon rectangle.” Complainant makes no claim to exclusive use of the term “dental implant center” other than as provided in the registered mark.
Respondent owns and operates New Horizons Dental Laboratory in Broomfield, Colorado, also within the Denver metropolitan area. According to its website “www.denturesonimplants.com”, New Horizons opened in 1983 and specializes in crafting “removable prosthetics”, specifically focusing on “Implant Supported/Attached Removables”, “Surgical Guides”, and “processed Bruxium splints”. Respondent registered the disputed domain name on April 6, 2008. The website has been “parked;” when the Panel accessed it he was directed to a page of links to third-party dental (including dental implant) services.
Counsel for Complainant sent a demand letter to Respondent on April 7, 2009, in which Complainant offered to purchase the disputed domain name for USD 1,000 and noted that the dispute could be submitted to a proceeding under the UDRP. As noted in the following section, the parties had several face-to-face discussions regarding Respondent's acquisition of the disputed domain name.
The Panel summarizes Complainant's allegations as follows:
Similarity. The disputed domain name “is confusingly similar, if not identical, to Complainant's Colorado Dental Implant Center® trademark,” which Complainant has used “openly and notoriously in Unites States interstate commerce since June, 2006 in connection with . . . dental services.” Further, Complainant's mark “has become a famous and distinctive trademark, particularly among the medical and dental communities, as well as medical and dental patients, that designates Complainant as the single source of products and services bearing Complainant's Trademark.”
Rights or Legitimate Interest. Complainant has no relationship with Respondent, and Respondent has no rights whatsoever to use Complainant's mark. Respondent has made no effort to use the site since its registration. Respondent has never been known as the “Colorado Dental Implant Center.”
Bad Faith. Since Complainant's mark “has been well-known in the medical and dental industry since 2006,” Respondent knew of Complainant's rights to use the mark when he registered the disputed domain name. Respondent further demonstrated bad faith by soliciting Complainant to purchase the disputed domain name for a price in excess of Respondent's out-of-pocket costs of registering it. Complainant will suffer damage to itself, the value of its mark, and associated goodwill because Respondent's actions lead others to believe that Complainant and Respondent are affiliated.
The Panel summarizes Respondent's contentions as follows:
Similarity. Complainant did not even file to register its mark until seven months after Respondent registered the disputed domain name. Complainant has presented no evidence to substantiate its claim of use of the mark in commerce since 2006 other than an advertisement placed by Complainant at an unknown date in an unidentified newspaper of unknown vintage. Complainant does business as Aspenwood Dental Associates, and “only recently” began using Colorado Dental Implant Center in addition to its principal business name.
Rights or Legitimate Interest. Although Respondent has no relationship with Complainant, Respondent has rights and legitimate interests in the disputed domain name because Respondent has long been involved in the manufacture of oral prosthetic devices and dental implants in the Denver metropolitan area. Respondent's “Dental Technology Laboratory” is a “center” that has become famous in the area for providing its services primarily to dentists. Unlike Complainant, Respondent does not target his services towards the general public. Respondent has registered several domain names that include terms geographically relevant to Colorado and dental implants and has no history of cybersquatting. Indeed, Respondent releases domain names he does not intend to use.
Bad Faith. Respondent denies acting in bad faith. Respondent registered the disputed domain name and a similar domain name, <coloradodentalimplantsystems.com>, months before Complainant filed to register its mark with the USPTO. Respondent has simply engaged in promotional activity consistent with his long-standing business interests. Other participants in the Denver metropolitan area dental services market have registered domain names using the term “dental implant center.” Complainant and Respondent serve different target audiences and do not compete with each other.
Respondent did not initiate contact with Complainant regarding the potential sale of the disputed domain name. Rather, Complainant approached Respondent on several occasions in late 2008 and demanded that Respondent transfer the disputed domain name, ultimately offering to pay Respondent a sum well in excess of his out-of-pocket costs. Respondent did not want to sell the disputed domain name, but quoted Complainant a price of USD 6,750 (“A number that I [Respondent] figured was as equally ridiculous as was him [sic][Complainant] expecting me to just hand it over on demand”) in an attempt to dissuade Complainant from repeatedly contacting Respondent. Complainant has continually harassed Respondent about the disputed domain name and transferring control to Complainant would unjustly reward its questionable tactics.
According to paragraph 4(a) of the Policy, for this Complaint to succeed Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(iii) The disputed domain name has been registered in bad faith and has been used in bad faith.
These requirements are conjunctive and Complainant bears the burden of proving each.
To prevail under paragraph 4(a)(i) of the Policy, Complainant must show “that it has trademark rights sufficient to invoke the Policy, and that the disputed domain name is identical or confusingly similar to its mark.” American Appraisal Associates, Inc. v. R. Hagar, Kinja LLC, WIPO Case No. D2006-1556 (January 29, 2007). Whether such rights exist is determined as of the date the Complaint is filed, not when Respondent registered the disputed domain name. Michelman, Inc v. Internet Design, WIPO Case No. D2007-1369; Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038; WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 1.4.
In most cases proof of a registered trademark is dispositive of the first prong, even if the mark contains generic or descriptive elements. See, e.g., Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635. A panel almost always lacks the authority to second-guess the USPTO. Hola S. A. & Hello Limited v. Idealab, WIPO Case No. D2002-0089 (“The holding of a registered mark is sufficient for the purposes of the Policy. Any claim that the registration should not have been granted or should be revoked falls to be decided by the Courts of the relevant country.”). Although there are cases to the contrary,2 a mark registered on the USPTO's Supplemental Register may suffice, though usually some evidence of use of the mark is required. As the Complaint fails on other grounds, the Panel need not decide (and chooses not to decide) whether Complainant's mark on the Supplemental Register provides rights sufficient to invoke the Policy in this case.3
The similarity between the disputed domain name and Complainant's registered mark does not ipso facto demonstrate that a Respondent lacks legitimate interests in the terms or phrase contained in the mark. This cautionary note applies especially when as here the dispute concerns a highly descriptive mark registered only on the Supplemental Register. See, e.g., American Apparel Associates, Inc., supra n2 (“Just as . . . descriptive mark may limit its owner's right to exclude others under trademark law, that fact makes it more difficult for a complainant to establish a prima facie case under paragraph 4(a)(ii) . . . and makes it easier for a respondent to rebut such a prima facie case if it is made.”).
Both parties in this case have provided little evidence, as opposed to allegations. Complainant has the burden of proof, however, and has not demonstrated that Respondent lacks legitimate interests in the disputed domain name or that Respondent has no interest in “the domain name in connection with a bona fide offering of goods and services.” As discussed more fully under bad faith, infra, beyond the parties' geographic proximity there is no support for a finding that Respondent knew of Complainant's mark when he registered the disputed domain name. Without such knowledge Respondent, an active participant in the business of dental implants, might well have an interest in a domain name consisting of a descriptive phrase. Complainant's arguments under paragraph 4(a)(ii) fail for want of evidence.
Complainant has plainly failed to prove that Respondent registered the disputed domain name in bad faith. To meet that burden Complainant must ordinarily demonstrate (not simply allege) that Respondent had actual knowledge of Complainant's mark and selected the disputed domain name to take advantage of it. Michelman, Inc v. Internet Design, supra; see also Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com, WIPO Case No. D2008-0103. Complainant provides no evidence from which the Panel might infer either element.
The available evidence suggests the contrary. Respondent registered the disputed domain name well before Complainant achieved registration of its mark. While a registrant is not in the Panel's view usually required to undertake a trademark search prior to registering a domain name, had Respondent done so he would not have found Complainant's mark. Respondent is not a domain name aggregator, and has never been a party to a dispute under the Policy. Complainant's mark is descriptive, using relatively common English words. The combination of words describes Respondent's business as aptly as Complainant's, so far as the record shows.
Respondent has provided a plausible explanation of his choice of this word combination for his domain name. A quick check of the publicly-available information cited in the Response indicates that Respondent actively manufactures dental implants at a site located less than an hour's drive from Complainant's principal place of business - information known to Complainant4 but omitted from the Complaint. The Complaint proper does not mention even in passing that Respondent works in any aspect of the dental industry, an omission that suggests spite - rather than a concern for business interests - may have played a role in initiating this dispute. Quite simply, “Complainant has offered no evidence that Respondent selected the disputed domain name with an intention to take advantage of Complainant's marks or the reputation surrounding them and no evidence from which the Panel could reasonably make such an inference.” American Apparel Associates, Inc., supra.
Complainant essentially argues that Respondent had constructive notice of its interest in the mark “Colorado Dental Implant Center” at the time Respondent registered the disputed domain name. The doctrine of constructive notice is rarely applied in Policy proceedings, WIPO Overview, paragraph 3.4. The exceptions to this general rule almost always occur in cases in which standard indicia of cybersquatting are present, Kellwood Company v. Onesies Corporation, WIPO Case No. D2008-1172 – not the case here. As under paragraph 4(a)(ii), a complainant asserting rights to a highly descriptive mark must do more than present a prima facie case or risk allowing Respondent an easy rebuttal. Complainant has not established that Respondent selected the disputed domain name to target Complainant's mark.
Complainant rests much of its bad faith argument on Respondent's “attempt to extort” money from Complainant by allegedly offering to sell the disputed domain name for a price greater than any out-of-pocket expenses Respondent could have plausibly incurred. The record might support a finding that the prices proposed by Respondent (for whatever reason) constitute use of the disputed domain name in bad faith. Even though Complainant initiated the discussions regarding transfer, it never (even according to Respondent) proposed an amount substantially in excess of Respondent's costs of registration. What is lacking is any evidence from which the Panel could reasonably infer that Respondent registered the disputed domain name with eventual sale to Complainant as an objective. Complainant's primarily allegation-based prima facie case fails to overcome Respondent's equally unproven - but plausible - explanation for his registering the disputed domain name. In these circumstances and on the provided record, Complainant has failed to carry its evidentiary burden under the third Policy element.
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Dated: July 21, 2009
1 In addition to documents submitted by the parties, a panel may use publicly available information to aid in its findings. See, e.g., Sassybax, L.L.C. v. Texas International Property Associates, WIPO Case No. D2007-1190.
2 E.g., Advance News Service Inc. v. Vertical Axis, Inc. / Religionnewsservice.com, WIPO Case No. D2008-1475
3 Complainant has not met its burden under its alternative argument that it met the first prong's requirement by reason of common law rights. Complainant has provided no evidence whatsoever that it has used its mark in commerce since June 2006, the date of first use in commerce claimed in its USPTO application. Complainant's conclusionary assertions that its mark is “famous” are similarly unsupported and in this Panel's opinion defy common sense.
4 Complainant's counsel stated in his letter to Respondent that “We all know that the dental community is small, and my client wishes to maintain amicable relations to you.” The Panel surmises from this observation that Complainant has knowledge of Respondent's business.