WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Force Therapeutics, LLC v. Patricia Franklin, University of Massachusetts Medical School
Case No. D2017-2070
1. The Parties
Complainant is Force Therapeutics, LLC of New York, New York, United States of America ("United States"), represented by K&G Law LLC, United States.
Respondent is Patricia Franklin, University of Massachusetts Medical School of Worcester, Massachusetts, represented by Fish & Richardson P.C., United States.
2. The Domain Name and Registrar
The disputed domain name <forceortho.org> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2017. On October 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2017, the Registrar 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 referred to in the initial verification request. On October 25, 2017, Complainant sent an email communication clarifying identification of the disputed domain name.
The Center sent an email communication to the Complainant on November 2, 2017, providing the registrant and contact information disclosed by the Registrar. On November 2, 2017, the Registrar re-transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2017. The Response was filed with the Center on November 22, 2017.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 28, 2017. 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 is the owner of registration for the word service mark FORCE THERAPEUTICS on the Principal Register of the United States Patent and Trademark Office (USPTO), Registration No. 4413606, registered on October 8, 2013, in international class (IC) 42, covering "software as a service (SAAS) services featuring online software and mobile application software for use in the management and treatment of musculo-skeletal injuries by providing physicians, physical therapists, chiropractors and athletic coaches cross-platform access to an application that gives computer and mobile device users the ability to upload and share multimedia files containing physical therapy videos and to upload, share, collect, integrate, organize and analyze patient and treatment data". The application for such registration was filed on December 14, 2012, and asserted a date of first use and first use in commerce of January 2010.
On October 2, 2017, Complainant submitted an application for registration of the word service mark FORCE to the USPTO, Application No. 87630829. Said application asserts a date of first use and first use in commerce of January 31, 2011.
Complainant markets and sells a software application that permits patients and their medical and therapeutic services providers to track their therapy regimen. The software includes versions that may be accessed by personal computer, smart phone and tablet. The software is promoted and sold to healthcare providers and their patients. Complainant operates a commercial website at "www.forcetherapeutics.com". On that website, Complainant uses a design and word logo comprised of a stylized human figure alongside the term "Force".
Complainant has provided evidence of one Philadelphia news story, dated December 14, 2015, and one Hyde Park, New York health provider press release, that initially refer to FORCE THERAPEUTICS and subsequently make reference to its software using the term "Force". Complainant has provided a webpage printout from Spine Review, dated March 3, 2017, referring to Complainant as "Force" and to the "Force platform".
Complainant has submitted four brief email exchanges forwarded by its employees each suggesting that a medical professional mistakenly assumed that Complainant operated the FORCE-TJR database which is operated by Respondent (see below).
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification the date of creation of the record of registration is February 24, 2017, and the disputed domain name has been registered to Respondent since that date.
Respondent uses the disputed domain name to direct Internet users to a website headed with the banner "FORCEORTHO", describing itself as "A National Leader in Quality and Outcomes Data Collection, Analysis, and Reporting". On its homepage, Respondent refers to "Function and Outcomes Research for Comparative Effectiveness in Orthopedics". According to Respondent, the term "Force" as used in connection with its promotional activities is an acronym for "Function and Outcomes Research for Comparative Effectiveness".
Respondent uses the disputed domain name in connection with a service for data collection, analysis and reporting for clinical benchmarking. According to Respondent, its services are marketed to surgeons, hospitals and health systems which are seeking to monitor and improve the quality of their total joint replacement and spine surgery services. These services are provided on a membership basis.
In November 2014, Complainant through its counsel objected to use by Respondent of the term "FORCE-TJR" in connection with its database intended to track surgery outcomes and inform clinical care. Respondent at that time operated a website at "www.force-tjr.org". In March 2015, without admitting liability or waiving rights, Respondent undertook to replace the term FORCE-TJR with the term "QIFORCE-TJR".
Respondent has submitted evidence of 12 trademark registrations at the USPTO that incorporate the term "force", several of which are associated with the healthcare industry, including "EMR FORCE, HEAL FORCE (with design), MAGFORCE, BIOFORCE, MEDFORCE TECHNOLOGIES, INC., WELLFORCE and FORCED COAG".
According to Respondent, on November 2, 2017, Complainant, Force Therapeutics, LLC, filed a complaint against Respondent, University of Massachusetts Medical School, in the United States District Court for the Eastern District of Pennsylvania, Case No. 2:17cv4922, alleging trademark infringement and unfair competition.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties' Contentions
Complainant alleges that it owns rights in the service marks FORCE THERAPEUTICS and FORCE. Complainant indicates that it is the owner of registration on the Principal Register of the FORCE THERAPEUTICS service mark, and that the medical profession and relevant public has come to recognize that Complainant as the exclusive source of FORCE products. Complainant also refers to FORCE as its "well-known trade name".
Complainant does not make a specific argument regarding confusing similarity between the disputed domain name and its FORCE THERAPEUTICS service mark. Complainant argues that the disputed domain name "fully incorporates Complainant's well-known tradename FORCE, a fact that is sufficient to establish that the domain name is confusingly similar to the Force brand." Complainant contends that use by Respondent of the disputed domain name in connection with a data collection platform relating to orthopedic patient outcomes is nearly identical to Complainant's use of its FORCE brand. Complainant further argues that the addition of the term "ortho" in the disputed domain name does not sufficiently differentiate it from Complainant's FORCE mark.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has no trademark rights or other legitimate rights in the mark FORCE and has not been authorized or licensed by Complainant to use its trademark; (2) notwithstanding Respondent's agreement to discontinue using FORCE-TJR and to consider changing the name of its program, Respondent adopted the disputed domain name for data collection and the orthopedics field; (3) there have been instances of actual confusion within the medical community between Complainant and Respondent; (4) given Complainant's renown, it is reasonable to conclude that Respondent is seeking to capitalize on Complainant's reputation.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) when it registered the disputed domain name Respondent had full knowledge of Complainant's rights in the FORCE brand; (2) Respondent was on notice of Complainant's concerns dating back to 2014; (3) "Notwithstanding its undertaking to select a mark which did not begin with 'FORCE' … not only did Respondent disregard its original undertaking but it proceeded to register a domain name even more similar to Complainant's mark and trade name, combining 'FORCE' with the term 'ORTHO' which is generic for orthopedic services of the kind offered by both Complainant and Respondent".
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent contends that the disputed domain name is not confusingly similar to Complainant's registered FORCE THERAPEUTICS trademark based on the sight, sound and meaning of those terms, which it alleges are distinctly different. Respondent argues that the only similarity between the disputed domain name and Complainant's mark is that both contain the word FORCE, "but it is well-settled that marks must be compared in their entireties when assessing whether the domain name and the asserted trademark are confusingly similar".
Respondent argues that Complainant does not have exclusive rights in the term FORCE as used in the medical space because Complainant has not secured federal registration or established the requisite secondary meaning, and because the term FORCE "is laudatory and widely used in connection with healthcare products and services". Respondent contends that Complainant has not established secondary meaning in the term FORCE. Respondent further alleges that the fact there are numerous third-party FORCE-formative marks argues against exclusive rights in favor of Complainant.
Respondent argues that the products and services offered by Complainant and Respondent are different, and that users of those services are sufficiently sophisticated to distinguish between them.
Respondent alleges that it has rights and legitimate interests in the disputed domain name because: (1) it used that domain name in connection with a bona fide offering of goods and services before any notice of this dispute by Complainant (Respondent provides evidence of use of FORCEORTHO branded goods as early as June 29, 2017), and; (2) Respondent's decision with respect to its FORCE-TJR mark bears no relation to this proceeding.
Respondent argues that it did not register and use the disputed domain name in bad faith because: (1) Respondent has been using FORCE-formative marks in connection with its business since as early as 2011, and registered the disputed domain name in February 2017; (2) Respondent adopted the term FORCE in good faith as an acronym; (3) Respondent has consistently and reasonably denied any claim by Complainant of trademark rights in FORCE on its own or that its use infringes those rights; (4) Respondent never signed any undertaking in connection with FORCE-TJR or other FORCE-formative marks; (5) Complainant is attempting to litigate a trademark dispute involving Respondent's FORCE-TJR in this proceeding, and this is not the proper forum for resolving such trademark infringement claim.
Respondent requests that the Panel reject Complainant's request for an order directing transfer of the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of a proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent, and Respondent filed its Response in a timely manner. The Panel is satisfied that Respondent received adequate notice of the Complaint and had the opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are 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 of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has provided evidence of rights in the word service mark FORCE THERAPEUTICS including through registration at the USPTO, and use in commerce (see Factual Background, supra). Registration establishes a presumption of rights in that service mark, and Respondent has not challenged Complainant's rights in the FORCE THERAPEUTICS service mark. The Panel determines that Complainant owns rights in the service mark FORCE THERAPEUTICS.
Complainant has asserted unregistered or common law rights in the word service mark FORCE standing alone. Complainant has provided evidence of a small number of instances in which localized media or hospital press release has referred to its service as FORCE, but this is insufficient to demonstrate consumer recognition in the relevant field. Complainant has not suggested that the term is inherently distinctive, and the Panel will not raise that argument on its behalf. Complainant has repeatedly referred to FORCE as its trade name, and has failed to distinguish between asserted service mark and trade name rights.
Complainant's submission of an application at the USPTO for registration of FORCE as a service mark does not establish rights in the mark, and assertion of a date of first use does not establish an evidentiary presumption as to the date of first use.
The Panel does not consider Complainant to have provided sufficient evidence to establish unregistered or common law rights in the word FORCE standing alone for purposes of this proceeding. This determination will proceed on the basis that Complainant has established service mark rights in the combination term FORCE THERAPEUTICS, and not in the term FORCE standing alone.
The disputed domain name <forceortho.org> incorporates the term "force" that forms the leading part of Complainant's combination service mark, and substitutes the word "ortho" for "therapeutics". Complainant's service mark and the disputed domain name are visually similar in the sense of including the leading word "force", but are otherwise distinct in terms of comparing "therapeutics" and "ortho". Likewise, in terms of sound or aural impression, the initial term "force" in Complainant's service mark and the disputed domain name sound alike. However, pronunciations of "therapeutics" and "ortho" are distinct.
Complainant registered its FORCE THERAPEUTICS service mark covering services of "management and treatment of musculo-skeletal injuries". In that regard, it appears to have adopted the broader term "therapeutics" with an apparently narrower purpose directed toward "orthopedics". This might suggest a consumer having a passing knowledge of Complainant's services would be inclined to confuse Respondent's disputed domain name with Complainant. However, it may also be that a consumer with sufficient knowledge of Complainant and its services would be less likely to confuse Complainant and Respondent because the services provided by Respondent are distinct from those provided by Complainant.
Respondent has indicated that its use of the term "force" reflects adoption of an acronym for "Function and Outcomes Research for Comparative Effectiveness", and has provided evidence of use of that descriptive phrase. This suggests that Respondent did not adopt the disputed domain name with the intent to create confusion with Complainant as to the source of its service. This might mitigate against a finding of confusing similarity.
Complainant has provided some evidence of actual confusion on the part of potential users of services. However, the evidence is rather limited and does not provide substantial support for a finding of confusing similarity based on "actual confusion" among consumers. The confused individuals appear to have approached Complainant seeking Respondent's services, and this does not argue in favor of strong consumer recognition of Complainant's service mark in the consumer marketplace.
Though the matter is not free from doubt, without stronger evidence of Complainant's use of "FORCE" alone and consumer recognition in the relevant field of that term in association with Complainant, the Panel is inclined to find that the disputed domain name, <forceortho.org> and Complainant's FORCE THERAPEUTICS service mark are not confusingly similar. The combination terms are different in terms of visual impression and sound. While the meanings are related, the terms "therapeutics" and "ortho" nevertheless are different. A significant factor is that medical professionals seeking or recommending Complainant or Respondent for its services are likely to be able to distinguish between the two substantially different combinations of terms. To the extent that a minimal amount of consumer confusion has been demonstrated by Complainant, the evidence suggests that Respondent and its services are known in connection with the term "FORCE" (as in "FORCE-TJR").
Although these factors may be as much or more relevant in the context of rights or legitimate interests, or bad faith, than confusing similarity, it remains that the services provided on the websites of Complainant and Respondent are substantially different. Complainant is providing an application to assist patients and their medical professionals in guiding and monitoring post-treatment regimen compliance. Respondent is providing a database for collection and analysis of information intended to inform the medical community regarding best practices for patient care and outcomes.
From the standpoint of the Panel, this is a close case in terms of confusing similarity assessment.
Complainant has initiated a service mark infringement action in federal court against Respondent. In that proceeding, the trier of fact should be in a better position in terms of expert evidence to determine confusing similarity. Moreover, Complainant might be able to furnish more evidence directed to establishing unregistered or common law rights in the term FORCE standing alone.
For reasons of administrative efficiency, the Panel does not consider it necessary to address the issue of rights or legitimate interests.
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name "has been registered and is being used in bad faith" (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that "for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith". These include: "(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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; (ii) [the 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 [the respondent has] engaged in a pattern of such conduct; (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor, or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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] web site or location or of a product or service on [the respondent's] website or location."
There is no evidence on the record of this proceeding to suggest that Respondent registered or used the disputed domain name for the purpose of selling it to Complainant for valuable consideration.
There is little to suggest that Respondent registered the disputed domain name to prevent Complainant from using its service mark in that domain name. There is no evidence that Complainant has considered using the term "forceortho".
Although Complainant may perceive that Respondent is in a competitive business relationship with it, Complainant has not presented evidence that would suggest that Respondent registered the disputed domain name for the purposes of disrupting Complainant's business.
While it is "not inconceivable" that Respondent registered the disputed domain name with the intention of diverting consumers/Internet users for commercial gain to Respondent's website by creating a likelihood of confusion with Complainant's FORCE THERAPEUTICS service mark, there is no substantial evidence before the Panel to suggest that. Complainant's principal argument on the issue of bad faith is that Respondent registered the disputed domain name being aware of Complainant's rights in the term FORCE standing alone, and seeking to take advantage of Complainant's well-known brand. But, Complainant has not persuaded the Panel that it has rights in the term FORCE standing alone or, assuming for the sake of argument that it did have such rights, that its mark is sufficiently well known that Respondent would seek to build its business by taking unfair advantage of it. Finally, Respondent's website identified by the disputed domain name does not suggest an association with Complainant or its FORCE THERAPEUTICS service mark.
The Panel finds that Complainant has failed to establish that Respondent registered and is using the disputed domain name in bad faith.
Complainant has initiated a trademark infringement action against Respondent. In the course of such proceeding the trier of fact may have access to evidence that is not before this Panel. In any event, the Policy is directed to determining abusive domain name registration and use. This involves a more limited assessment than trademark infringement. In this proceeding, Complainant has not met its burden of establishing the elements necessary for demonstrating abusive domain name registration and use.
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Date: December 12, 2017
1 See https://www.merriam-webster.com/dictionary/therapeutics.
2 See https://www.merriam-webster.com/dictionary/orthopedics.