WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alternative Care Systems, Inc. d/b/a Access Nursing Services v. Domains By Proxy, LLC, Aya Healthcare, Inc.

Case No. D2012-0480

1. The Parties

Complainant is Alternative Care Systems, Inc. d/b/a Access Nursing Services of New York, New York, United States of America (“United States”), represented by The Dorf Law Firm, LLP, United States.

Respondents are Domains By Proxy, LLC of Scottsdale, Arizona, United States, and Aya Healthcare, Inc. of San Diego, California, United States, represented by King & Ballow, United States.

2. The Domain Names and Registrar

The disputed domain names <accessallied.com>, <accesshealthcare.com>, <accessnurses.com> are registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2012. On March 12, 2012 and March 14, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On March 14, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2012. At the request of Respondent, and in consultation with Complainant, the Center extended the due date for Response to April 6, 2012. The Response was filed with the Center on April 6, 2012.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on April 12, 2012. 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 owner, by way of assignment, of registrations on the Principal Register of the United States Patent and Trademark Office (USPTO) for the word, and word and design, service marks A ACCESS ALLIED (word and design), ACCESS ALLIED (word), ACCESS HEALTHCARE (word), ACCESS NURSES (word ), A ACCESS NURSES (word and design) and ACCESS NURSING SERVICES (word and design). The earliest of such registrations is for ACCESS NURSING SERVICES, a stylized service mark consisting of the term “access” (with a representation of an electrocardiogram output wave/signal appearing as the cross-line of the letter "A", above NURSING SERVICES), registration number 2,057,656, dated April 29, 1997, in international class (IC) 42, covering, inter alia, providing nursing personnel to render health care services; ACCESS ALLIED, registration number 3,371,610, dated January 22, 2008, in IC 35, covering, inter alia, staffing services for health care; A ACCESS ALLIED (with stylized "A"), registration number 3,351,019, dated December 11, 2007, in IC 35, covering, inter alia, staffing services for health care; ACCESS NURSES, registration number 3,229,311, dated April 17, 2007, in IC 35, covering, inter alia, nurse staffing services, and; A ACCESS NURSES (with stylized "A"), registration number 3,255,217, dated June 26, 2007, in IC 35, covering, inter alia, nurse staffing services. Each of the aforesaid service mark registrations is the subject of an assignment recorded at the USPTO, filed and recorded on July 6, 2009, with the exception of ACCESS NURSING SERVICES, for which the assignment was filed and recorded on July 7, 2011.¹

Complainant, inter alia, offers and provides nurse staffing and recruitment services under the ACCESS NURSING and ACCESS NURSING SERVICES service marks in several states of the northeast United States, including New York, New Jersey and Maryland. With respect to such services, Complainant operates an active commercial Internet website at “www.accessnursing.com”.

According to the Registrar’s verification, Respondent is registrant of the disputed domain names. According to that verification, the record of registration of the disputed domain name <accesshealthcare.com> was created on December 11, 1998; the record of registration for the disputed domain name <accessnurses.com> was created on August 9, 2001, and; the record of registration for the disputed domain name <accessallied.com> was created on August 26, 2004. The Registrar advised that because the disputed domain names are subscribed to a privacy service, it is unable to disclose the date on which the current registrant registered or acquired the disputed domain names. Respondent has stated and provided evidence to support that it acquired the aforesaid registrations for the disputed domain names from Bridge Healthcare Finance, LLC, in a public foreclosure sale on or about October 26, 2009.

Respondent has used the disputed domain names <accessnurses.com> and <accessallied.com> to direct Internet users to commercial Internet websites operated by Respondent. Those websites are located at <ayatravelnursingjobs.com> and <ayatherapyjobs.com>, respectively. When an Internet user visits the website identified by <ayatravelnursingjobs.com>, a pop-up window appears stating “Access Nurses has changed it’s [sic] name to Aya Healthcare. Access Nurses is not affiliated with Access Nursing Services.” Click-throughs on the pop-up window direct the Internet user to Respondent’s website. The disputed domain name <accessallied.com> directs the Internet user to Respondent’s “therapy jobs” website. The disputed domain name <accesshealthcare.com> does not resolve to an active website.

Complainant previously filed a lawsuit against an entity that it asserts is the predecessor entity to Respondent. Complainant alleges that the parties reached a confidential settlement agreement to that lawsuit relevant to this administrative panel proceeding. Respondent alleges that it is an entity independent of the defendant in that lawsuit. Because Complainant has not provided a copy of the alleged settlement agreement, and because review of the settlement agreement is not material to the outcome of this proceeding, it is not considered as a relevant factual matter by the Panel.

The registration agreement in effect between Respondent and GoDaddy.com, LLC 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, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it is the owner of rights in the trademarks ACCESS NURSES, ACCESS NURSING SERVICES, ACCESS HEALTHCARE, ACCESS ALLIED, A ACCESS ALLIED and A ACCESS NURSES, as evidenced by registration on the Principle Register of the USPTO. Complainant alleges that it has used “Access Nursing” as a trademark since its founding in 1985. Complainant argues that it has made substantial investments in the advertisement and promotion of its trademarks and associated services, including through its website and trade journal advertising.

Complainant argues that the disputed domain name <accessnurses.com> is identical to its ACCESS NURSES trademark; that the disputed domain name <accesshealthcare.com> is identical to its ACCESS HEALTHCARE trademark, and; that the disputed domain name <accessallied.com> is identical to its ACCESS ALLIED trademark.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant argues that Respondent is contractually obligated pursuant to the terms of a litigation settlement agreement to cease use of the disputed domain names. Complainant alleges that Respondent is not using the disputed domain names for legitimate noncommercial or fair use purposes. Complainant states that use by Respondent of two of the disputed domain names to direct Internet users to Respondent’s websites does not constitute legitimate noncommercial or fair use. Complainant states that the absence of active use of the third disputed domain name does not establish rights or legitimate interests.

Complainant argues that Respondent registered and is using the disputed domain names in bad faith. Complainant contends that Respondent: (1) is using two of the disputed domain names for commercial gain to direct Internet users to websites operated by Respondent that create a likelihood of confusion as to Complainant serving as the source, sponsor, affiliate or endorser of Respondents websites; (2) Respondent is in direct competition with Complainant, and is attempting to interfere with its business through the foregoing acts, including registration of the third disputed domain name, <accesshealthcare.com>.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant.

B. Respondent

Respondent contends that it is a different legal entity from that which entered into a settlement of litigation with Complainant. Respondent indicates that it “purchased all right, title and interest to the Disputed Domains from third-party Bridge Healthcare Finance, LLC, a lender who seized control of the assets of Access Nurses, Inc.” Respondent argues that Complainant through this proceeding is attempting to enforce a settlement agreement, which is beyond the scope of the UDRP, and that the settlement agreement at issue is not before the Panel.

Respondent argues that the assignments proffered by Complainant are invalid to transfer trademark rights to Complainant, and that even if the assignments were valid Complainant has not demonstrated use of the marks ACCESS HEALTHCARE or ACCESS ALLIED.

Respondent contends that Complainant attempted an “assignment in gross” of the trademarks at issue, which is not permitted under United States trademark law.

Respondent contends that it is making bona fide use of the disputed domain names because another company (i.e., Access Nurses, Inc.) made bona fide use of the ACCESS NURSES trademark in the disputed domain names. Respondent contends that it is making a bona fide offering of services under two of the three disputed domain names (<accessnurses.com> and <accessallied.com>) because they are directing Internet users to Respondent’s websites, one of which includes a disclaimer of affiliation with Complainant. Respondent states that it is clear that it did not acquire the disputed domain names in order to sell them to Complainant or to engage in other trafficking.

Respondent argues that there must be bad faith at the time of registration of the disputed domain names, and that they were each registered by Access Nurses, Inc. on or before August 26, 2004, with the earliest on December 11, 1998. Respondent indicates that Complainant had only one registered service mark on April 29, 1997 (for ACCESS NURSING SERVICES). Respondent states that Access Nurses, Inc. was granted trademark registrations in 2007 and 2008 despite an existing trademark registration by Complainant for ACCESS NURSING. Respondent indicates that Complainant did not object to the trademark registrations by Access Nurses, Inc., and that Access Nurses, Inc. registered the disputed domain names without actual knowledge of Complainant.

Respondent contends that its current use of the disputed domain names cannot be considered bad faith because Complainant’s trademarks are “conceptually weak”. Respondent argues that Complainant’s trademarks are descriptive, and that Respondent is using the disputed domain names <accessnurses.com> and <accessallied.com> fairly in their descriptive sense, directing Internet users to Respondent’s websites. Respondent contends that since it is making no current use of <accesshealthcare.com>, bad faith use cannot be found.

Respondent requests the Panel to reject Complainant’s Complaint, and to reject transfer of the disputed domain names to Complainant.

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 has notice of proceedings 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 notified Respondent of the Complaint and commencement of the proceedings, and Respondent filed a Response. The Panel is satisfied that Respondent received adequate notice of these proceedings and was afforded a reasonable 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) respondent’s 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 domain name; and

(iii) respondent’s 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.

A. Identical or Confusingly Similar

Complainant has demonstrated ownership of registrations for the service marks ACCESS NURSES, ACCESS NURSING SERVICES, ACCESS HEALTHCARE, ACCESS ALLIED, A ACCESS ALLIED and A ACCESS NURSES, on the Principal Register of the USPTO, and has furnished direct evidence of use of ACCESS NURSING and ACCESS NURSING SERVICES in commerce. In connection with securing registration for the other service marks at the USPTO, Complainant necessarily provided evidence of use of the service marks in commerce. Registration on the Principal Register establishes a presumption of rights in the service marks. Respondent has argued that Complainant failed to provide direct evidence in this proceeding of use of ACCESS HEALTHCARE and ACCESS ALLIED in commerce. Respondent has not sought to challenge the evidence provided by Complainant in connection with registration of the aforesaid service marks at the USPTO. Respondent has registered the disputed domain names <accesshealthcare.com> and <accessallied.com>, and thereby prevents Complainant from making active commercial use of those service marks in corresponding domain names. That would appear to be the use most consistent with Complainant’s existing business model. Under these circumstances, by merely asserting absence of use Respondent does not rebut the presumption that Complainant has rights in the referenced service marks. Complainant is attempting to remove the obstacle established by Respondent to using its registered service marks in corresponding domain names.

The disputed domain names <accessallied.com>, <accesshealthcare.com>, <accessnurses.com> are identical to the service marks ACCESS ALLIED, ACCESS HEALTHCARE and ACCESS NURSES, respectively, within the meaning of the Policy.

The Panel determines that Complainant holds rights in the service marks ACCESS ALLIED, ACCESS HEALTHCARE and ACCESS NURSES, among others, and that the disputed domain names are identical, respectively, to those service marks.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you 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 (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 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.” (Policy, paragraph 4(c))

Complainant has argued that Respondent has failed to establish rights or legitimate interests in the disputed domain names because (1) Respondent is contractually obligated to cease use of the disputed domain names and has failed to do so, (2) Respondent is not making legitimate noncommercial or fair use of the disputed domain names, and (3) Respondent has not made a bona fide offering of goods or services within the meaning of the policy. Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names.

Respondent first contends that an entity that owned registration of the disputed domain names prior to Respondent made a bona fide offering of services under the disputed domain names. However, Respondent has forcefully made the point that it is a distinct enterprise from the prior owner of those registrations, having purchased them in a public foreclosure sale on or about October 26, 2009. For purposes of this proceeding, Respondent by its own evidence became owner of the registrations for the disputed domain names on or about October 26, 2009. Respondent did not obtain service mark rights corresponding to the disputed domain names in this October 2009 transaction. The corresponding trademark rights were then owned by Complainant (as evidenced by the assignment dates, see Factual Background, supra). As a distinct new owner and registrant of the disputed domain names in October 2009, Respondent may not rely on the activities of the prior owner of the registrations to establish rights or legitimate interests in circumstances such as those present here.

Respondent contends that it is making fair use of two of the disputed domain names (<accessnurses.com> and <accessallied.com>) because it is using them to direct Internet users to Respondent’s websites, which are identified by Respondent’s name (Aya Healthcare), and because one of them expressly states, inter alia, that “Access Nurses has changed its name to Aya Healthcare”.

Respondent is directly incorporating Complainant’s service marks in two of the disputed domain names to direct Internet users to Respondent’s own competing websites. This is not “fair use” of Complainant’s service marks. It is a use intended to divert Internet users from Complainant to Respondent. Respondent is expressly advising Internet users on its website that “Access Nurses has changed its name to Aya Healthcare”. Since Complainant is the owner of the ACCESS NURSES service mark, this appears bound to cause Internet user confusion, with Internet users drawing the logical inference that Complainant has been transformed into Respondent.

Respondent argues that it is using the disputed domain names in a purely descriptive sense, and that this constitutes fair use. The Panel does not find ACCESS ALLIED descriptive of a good or service. While the terms ACCESS and NURSES are somewhat descriptive in combination (that is, Complainant is providing a means to access professional nursing services), Respondent has acknowledged that the combination ACCESS NURSES is recognized by consumers as the name of a business (by providing consumers with information concerning a change in that business name). Respondent is not just generally seeking Internet users who might be looking for access to nursing services. It is soliciting Internet users familiar with the ACCESS NURSES mark. The Panel rejects Respondent’s claim to fair use of the disputed domain names <accessnurses.com> and <accessallied.com>.

Respondent does not establish rights or legitimate interests in <accesshealthcare.com> by the absence of use.

The Panel finds that Respondent has failed to rebut Complainant’s prima facie showing of a lack of rights or legitimate interests in the disputed domain names. The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include: (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 [its] 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 or service on [respondent’s] web site or location”.

Respondent is correct that a majority of panelists, including this Panel, consider that trademark rights must be established by a complainant prior to registration of a disputed domain name in order for bad faith registration by a respondent to be found within the meaning of the Policy. Respondent has indicated that, as an independent entity, it acquired the registrations of the disputed domain names in a public foreclosure sale in October 2009. At that time, Complainant owned rights in all of the relevant service marks. When Respondent registered the disputed domain names -- that is, when Respondent as an independent entity became the owner of those registrations -- Complainant owned rights in the corresponding service marks.

Respondent is using Complainant’s service marks ACCESS NURSES and ACCESS ALLIED in two of the disputed domain names to direct Internet users to Respondent’s commercial websites. Respondent is acting for commercial gain. Respondent is creating Internet user confusion by use of the disputed domain names to create confusion as to whether Complainant is the source, sponsor, affiliate or endorser of Respondent’s websites. This confusion is exacerbated by the pop-up notice on the website reached through use of <accessnurses.com>. This notice advises Internet users that ACCESS NURSES has changed its name to the name of Respondent's business. This is the virtual antithesis of a disclaimer.

Respondent is not making active use of the disputed domain name <accesshealthcare.com>. However, it appears to this Panel that Respondent is using the disputed domain names to disrupt the business of Complainant, including by preventing Complainant from registering its service marks as domain names. Respondent has argued that Complainant is not making use in commerce of its ACCESS HEALTHCARE service mark, while preventing Complainant from registering that service mark as a domain name. Respondent has registered three disputed domain names corresponding to service marks of Complainant. This is sufficient to constitute a pattern of such conduct.

The Panel determines that Respondent registered and is using the disputed domain names in bad faith within the meaning of Paragraph 4(b)(ii)-(iv) of the Policy.

The Panel will direct the Registrar to transfer the disputed domain names to Complainant.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <accessallied.com>, <accesshealthcare.com>, <accessnurses.com>, be transferred to Complainant.

Frederick M. Abbott
Sole Panelist
Dated: April 23, 2012

¹ Complainant provided printouts of service mark registrations, and a USPTO printout showing a list of requested trademark assignments. The Panel verified the recording of the assignments on the USPTO TARR database.