WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Modern Vascular, LLC v. Sean Hay, JCMA Inc and Modern Vascular & Vein Center LLC

Case No. D2020-0303

1. The Parties

The Complainant is Modern Vascular, LLC, United States of America (“United States”), represented by Law Offices of Olga Zalomiy, PC, United States.

The Respondent, according to the registrar verification, is Sean Hay, JCMA Inc, United States (“Respondent Hay”). The Complainant also has identified Modern Vascular & Vein Center LLC, United States (“Respondent MVVC”) (collectively “Respondents”), as an additional potential Respondent. For the reasons explained further below, the Panel will treat Respondent MVVC as an additional Respondent and has amended the caption of this proceeding accordingly.

2. The Domain Name and Registrar

The disputed domain name <modernvascularcare.com> 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 February 10, 2020. On February 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent Hay 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 Respondents of the Complaint, and the proceedings commenced on February 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2020. Initially, the Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 19, 2020.

The Center received two email communications from representatives of Respondent MVVC on March 19 and 20, 2020. The March 19 email was from Dr. Nazar Golewale of Respondent MVVC, indicating that he was treating patients and had not had time to figure out how to respond to the Complaint. The March 20 email was from Dr. Golewale’s counsel who indicated that he had not received earlier communications because of a change in his email address. Dr. Golewale’s counsel requested an opportunity to file a Response.

The Center appointed David H. Bernstein as the sole panelist in this matter on March 30, 2020. 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.

On April 1, 2020, the Panel issued Procedural Order No. 1, lifting the default, granting the Respondents until April 15, 2020 to file a Response and extending the deadline for a decision to May 6, 2020. The Respondent submitted its response in the early hours of April 16, 2020 (shortly after midnight).

On April 17, 2020, the Complainant filed a request for leave to file a supplemental submission, along with the proposed supplemental submission. Among other things, the supplemental submission highlighted the difference between Respondent MVVC’s alleged use of its name as a trade name and as a trademark, and questioned Respondent MVVC’s assertion that it had applied to register its trademark and plans to contest the Complainant’s trademark registration.

On April 20, 2020, the Panel issued Procedural Order No. 2, accepting Respondent MVVC’s Response and Complainant’s supplemental submission, granting the Respondents the opportunity to file a sur-reply on or before April 27, 2020, and extending the deadline for a decision to May 15, 2020.

Very late in the evening on April 27, 2020, Respondent MVVC submitted a sur-reply, followed by a “corrected version” of the sur-reply shortly after midnight (the correction is that Respondent MVVC attached an inadvertently omitted exhibit). The Amended Sur-Reply included, among other things, a request to extend the decision date further to allow Respondent MVVC time to submit a trademark application to the United States Patent and Trademark Office (“USPTO”) and for Respondent MVVC to thereafter provide a copy to the Panel.

On April 29, 2020, the Panel issued Procedural Order No. 3, denying the Respondent’s request for a further extension of the decision date and ruling that the Panel would not consider any additional submissions unless a Party has a compelling need to address new facts or law that it could not have anticipated in its prior submissions.

Shortly thereafter, the Panel was able to confirm on its own that Dr. Golewale did in fact file a trademark application for MODERN VASCULAR & VEIN CENTER with the USPTO on April 28, 2020. It is well accepted that a Panel may conduct its own review of trademark office application and registration files. Seegenerally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8 (“Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name [...] or accessing trademark registration databases.”)

4. Factual Background

The Complainant operates a group of outpatient clinics that treat peripheral artery disease (“PAD”) under the name Modern Vascular LLC. The Complainant was founded in Arizona on February 28, 2017, and currently has clinics in several states, but it does not have, and never has had, a clinic in Indiana. The Complainant’s practice includes patients residing in various states across the United States, including Illinois, but not Indiana. The Complainant registered the domain name <modernvascular.com> on February 27, 2017 and has been using it for a website that provides information about its practice since May 2017.

The Complainant began using the MODERN VASCULAR mark on July 5, 2017 in connection with medical services. The Complainant applied to register this mark on February 20, 2018, and the registration was granted on September 25, 2018 (Reg. No. 5,570,334).

Respondent MVVC was formed in Indiana on July 10, 2017 as Modern Vascular, LLC by Dr. Golewale. Respondent MVVC provides PAD services in Indiana. Although Respondent MVVC provides services only in Indiana, according to its incorporation filings, Respondent MVVC has its principal office address in Illinois.

On October 8, 2018, the Complainant sent a cease and desist letter to Respondent MVVC. Respondent MVVC rejected the Complainant’s demands and noted that it had prior common law trademark rights by virtue of its first use of the MODERN VASCULAR mark in Indiana as set out in the letter that the Respondent’s counsel sent to the Complainant on November 7, 2018 (attached to the Complaint in Annex 9). In an effort to resolve the dispute amicably, Respondent MVVC changed its name from Modern Vascular LLC to Modern Vascular and Vein Center, LLC on October 23, 2018, noting that it was doing so as a professional courtesy, not because it accepted the Complainant’s position on trademark infringement. Id. In an email dated November 1, 2018, the Complainant informed Respondent MVVC that the new name was still unacceptable. Complaint, Annex 9.

Respondent MVVC registered the disputed domain name on November 28, 2018. As of the date of the Complaint, Respondent MVVC was using the disputed domain name for its corporate website, providing information about and promoting its practice. Respondent Hay, of JCMA, Inc, is the website designer that had, at Respondent MVVC’s request, created this website.

On January 13, 2020, the Complainant brought suit against Respondent MVVC in the United States District Court for the District of Arizona, as well as against Dr. Golewale and his wife, alleging trademark infringement and other claims. That case is pending, and there do not appear to have been any substantive rulings by the court. Neither party has asked the Panel to suspend consideration of this proceeding under Rule 18(a).

As noted above, on April 28, 2020, Dr. Golewale filed a trademark application with the USPTO for the design mark MODERN VASCULAR & VEIN CENTER (Serial No. 88/890,367), claiming first use and first use in commerce of the revised trademark as of October 23, 2018.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name incorporates the Complainant’s MODERN VASCULAR trademark in its entirety, and that the addition of the term “care” as a suffix does not negate the confusing similarity between the Complainant’s mark and disputed domain name.

The Complainant contends that the Respondents have no legitimate rights or interests in the disputed domain name because neither is affiliated with or permitted to use the Complainant’s trademark. The Complainant alleges, on information and belief, that neither Respondent is commonly known by the disputed domain name.

Instead, according to the Complainant, the MODERN VASCULAR mark is associated exclusively with the Complainant, and the Respondents registered the disputed domain name with full knowledge of the Complainant’s rights to the mark and the fact that the domain <modernvascular.com> was not available (because the Complainant had already registered that domain name for its own website). The Complainant contends that the Respondents did so to create confusion with the Complainant and its mark and to divert traffic from the Complainant’s own website.

Further, the Complainant contends in its supplemental submission that, although Respondent MVVC has owned and operated its business under the name “Modern Vascular, LLC” since July 10, 2017, it has not provided any evidence that it had been using MODERN VASCULAR as a trademark or service mark (as opposed to merely its trade name). Moreover, the Complainant asserts prior rights over Respondent MVVC’s use (whether as a trade name or trademark), because the Complainant has been using the MODERN VASCULAR trademark since July 5, 2017, five days earlier than Respondent MVVC.

The Complainant contends that the Respondents also should be found to have registered the disputed domain name in bad faith because they knew of the Complainant’s trademark rights at the time of registration. The Complainant points to three facts in support of its allegations: (a) Respondent MVVC changed the name of its company after receiving the Complainant’s demand letter; (b) Respondent MVVC registered the disputed domain name a month after Respondent MVVC changed its name to Modern Vascular and Vein Center, LLC, and after learning that the new name change would be insufficient to address the Complainant’s concerns; and (c) Respondent MVVC applied to register the Modern Vascular & Vein Center mark only after the Complainant filed its Complaint in this proceeding.

B. Respondent

Respondent MVVC contends that the disputed domain name is not confusingly similar to the Complainant’s MODERN VASCULAR mark due to the addition of the word “care” in the disputed domain name. Respondent MVVC also contends that, in any event, the Complainant’s right to the MODERN VASULAR mark has not been established as it is being challenged in pending litigation in federal court.

Respondent MVVC contends that it has a right or legitimate interest in the disputed domain name because it is using the disputed domain name in connection with its legitimate medical business, Modern Vascular and Vein Center, LLC, in Indiana. Respondent MVVC represents that it has been operating this business since July 10, 2017 under the name Modern Vascular, LLC. Respondent MVVC also argues that it has been using Modern Vascular, LLC as a trademark since then as well. The name and trademark was changed to Modern Vascular and Vein Center, LLC in 2018 in an effort to resolve the Complainant’s objections, even though Respondent MVVC did not believe the Complainant’s objections to have merit. Respondent MVVC contends that its right to the MODERN VASCULAR mark predates Complainant’s application to register the same mark with the USPTO.

Respondent MVVC contends that its registration and use of the disputed domain name is not in bad faith. The disputed domain name was not registered primarily for the purpose of selling, renting, or transferring the disputed domain name to the Complainant, to cause confusion, for commercial gain, or to prevent the Complainant from using the mark. Respondent MVVC also states that it has not engaged in a pattern of cybersquatting misconduct.

Instead, Respondent MVVC contends, it is not a competitor to the Complainant because the Complainant does not provide its services in Illinois or Indiana.

6. Discussion and Findings

A. Procedural Rulings

As an initial matter, this Panel will address the issue of the proper Respondent. The Parties appear to agree that Respondent Hay of JCMA is merely the web designer, and that the true owner of the disputed domain name is Respondent MVVC. Accordingly, this Panel finds that the inclusion of Respondent MVVC as a Respondent is proper. Hereinafter, the Panel will refer to Respondent MVVC as “the Respondent.” See generally WIPO Overview 3.0, section 4.11.2.

Under paragraph 18 of the Rules, the Panel has the discretion to suspend or terminate this proceeding given the existence of a lawsuit that includes claims related to the disputed domain name. Many UDRP panels facing this situation decline to suspend or terminate given “the relative expediency of the UDRP versus courts,” which “is seen as a benefit to the parties.” Id. See also WIPO Overview 3.0, section 4.14.2. Those considerations weigh against suspension or termination in this case. First, the Complainant brought this UDRP action after it had already filed its complaint in federal court in Arizona, so it is clear that the Complainant prefers the expediency of this proceeding, and to obtain the Panel’s reasoned judgment even while the litigation is pending. Indeed, the federal court litigation is only at the motion to dismiss stage. The Respondent contests that the Court has personal jurisdiction over the Respondent, contests that venue is appropriate in Arizona, and avers that the Complaint fails to plead deception with particularity. If that motion is granted, the lawsuit will be dismissed without reaching any decision on the merits. If that motion is denied, it may nevertheless be many months, if not years, before any final decision on the merits is reached. The Respondent also appears to prefer getting a ruling from this Panel, since it has not invoked paragraph 18 of the Rules and has not asked the Panel to terminate this proceeding. Finally, the Panel notes that its Decision may aid in settlement discussions between the Parties, since this Decision will provide the Parties with a third party’s objective assessment of the claims with respect to the disputed domain name, or it may be of some persuasive authority to the court should the lawsuit proceed on the merits. Tiara Hotels & Resorts LLC v. John Pepin, WIPO Case No. D2009-0041. For these reasons, the Panel will proceed to a decision on the merits.

B. Merits Decision

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a complainant must prove each of the following:

(i) the domain name 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 in respect of the domain name; and

(iii) the respondent’s domain name has been registered and is being used in bad faith.

i. Identical or Confusingly Similar

For purposes of this proceeding, the Complainant has established that it has rights to the MODERN VASCULAR trademark. The Complainant’s registration on the principal register of the USPTO constitutes prima facie evidence of satisfying the standing threshold here. Horten Advokatpartnerselskab v. Domain ID Shield Service CO., Limited / Krutikov Valeriy Nikolaevich, WIPO Case No. D2016-0205; Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.

The Respondent has not produced any evidence showing that the Complainant lacks trademark rights to the MODERN VASCULAR mark. Although the Respondent claims to be challenging such rights in a pending federal court action, there has been no disposition in that action, and Complainant’s registration remains valid. The Respondent has not presented this Panel with any facts or arguments to support a finding that the Complainant’s registration is subject to cancellation and that its trademark is invalid. EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.

The fact that the Respondent’s principal has recently applied to register MODERN VASCULAR & VEIN CENTER is irrelevant to this assessment. Under the first factor, the question is whether the Complainant has trademark rights at the time of this proceeding. The evidence establishes that Complainant does own such rights.

The Respondent also asserts that the disputed domain name <modernvascularcare.com> is not confusingly similar to the Complainant’s trademark MODERN VASCULAR because of the addition of the word “care.” That argument is utterly devoid of merit. As the WIPO Overview 3.0 makes clear, “in cases where a domain name incorporates the entirety of a trademark,” as is the case here, “the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” WIPO Overview 3.0, section 1.7. That is true even if other words, like “care”, are added to the domain name, because “the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” Id., section 1.8.

The Panel therefore concludes that the Complainant has satisfied the first UDRP element.

ii. Rights or Legitimate Interests

Although the record is somewhat thin, based on the certified statements of the Parties and the evidence they submitted, the Panel finds that Respondent likely began to offer services under the MODERN VASCULAR (unregistered) trademark in Indiana as early as July 10, 2017. The Complainant began using the MODERN VASCULAR mark five days earlier, on July 5, 2017, but those services were not offered in Indiana. It is not clear to the Panel where exactly the Complainant provided its services in the five days before the Respondent began to offer its services, but at best, those states include Arizona, Colorado, Florida, Mississippi, New Mexico, Oklahoma, Texas, and Virginia, where the Complainant currently has or has had clinics.¹

The Complainant asserts in its supplemental submission that “[t]he Respondent submitted no evi[de]nce to prove that it owns any common law rights to the ‘Modern Vascular’ mark apart for the copy of the certificate of organization,” but that is not correct. It is true that the Respondent has not submitted any documentary evidence (which, the Panel notes, would have been helpful), but the Respondent has asserted as a fact that it used the MODERN VASCULAR trademark in Indiana in commerce since July 10, 2017, and certified that fact to be true. That assertion, which is credible on the record of this proceeding, is just barely enough to qualify as evidence of the Respondent’s use of the trademark in Indiana during that time period. Because the burden of proof is on the Complainant to prove that the Respondent lacks rights or legitimate interests, and because the Complainant has not adduced any evidence to contradict the Respondent’s claimed use, the Panel concludes, for purposes of this proceeding, that the Respondent does have trademark rights in Indiana that date back to July 10, 2017.

In considering which party has priority, the Panel notes that trademark priority is established through use of a mark in commerce in a geographic location. As the United States Court of Appeals for the Ninth Circuit (which is the appeals court covering Arizona, the state in which the Complainant is headquartered) noted, under the Tea Rose-Rectanus doctrine, “priority of use in one geographic area within the United States does not necessarily suffice to establish priority in another area. Thus, the first user of a mark will not necessarily be able to stop a subsequent user, where the subsequent user is in an area of the country ‘remote’ from the first user’s area. The practical effect is that one user may have priority in one area, while another user has priority over the very same mark in a different area. The point of this doctrine is that in the remote area, where no one is likely to know of the earlier user, it is unlikely that consumers would be confused by the second user’s use of the mark.” Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088, 1097 (9th Cir. 2004).

Applying these principals to this case, it appears that, in July 2017, the Complainant had (as yet unregistered) trademark rights for MODERN VASCULAR in some geographic locations, but not in Indiana, and that the Respondent had (as yet unregistered) trademark rights for MODERN VASCULAR in the geographic location of its clinic in Indiana.

The following year, on February 20, 2018, the Complainant applied to register its trademark. The Complainant disclaimed exclusive rights to the generic term “VASCULAR,” meaning that the distinctive element of its trademark is “MODERN.” The Complainant’s MODERN VASCULAR trademark was registered on September 25, 2018. At that time, the Complainant established nationwide trademark rights, dating back to the priority date of its application in February 2018, but subject to any junior user rights that predated the application in distinct geographic locations. That is because a party in the position of the Respondent has a defense to a claim of infringement if it used its mark prior to the registration of the Complainant’s trademark, provided that “this defense [...] shall apply only for the area in which the mark was used prior to such registration or such publication of the registrant’s mark.” 15 U.S. Code § 1115(b)(6).

The Panel therefore finds that the Respondent had trademark rights in the geographic area served by its clinic in Indiana in the mark MODERN VASCULAR when it started offering services under that mark in July 2017. The Panel further finds that the Complainant has successfully established nationwide rights in all other locations in the United States.

The Respondent later changed its name to Modern Vascular & Vein Center in 2018. However, the additional words added – “& Vein Center” – are non-distinctive and will likely have to be disclaimed. To the extent that the MODERN VASCULAR & VEIN CENTER trademark conveys the same commercial impression MODERN VASCULAR, the Respondent may be entitled to tack its use on to its prior use of MODERN VASCULAR in 2017. See generally Hana Financial, Inc. v. Hana Bank, 574 U.S. 418 (2015). But, even without tacking, the Panel finds that the Respondent had a legitimate interest in registering the disputed domain name that reflected a key element of its trademark.

The Complainant points out that the Respondent’s principal office is in Illinois, and suggests that the Respondent’s use of the MODERN VASCULAR & VEIN CENTER trademark in Illinois is infringing. The Respondent has an Illinois state trademark registration claiming first use of the mark MODERN VASCULAR & VEIN CENTER since March 8, 2018. Because the Respondent did not adopt that name until October 2018, that seems to be an error; the Panel surmises that the Respondent may have meant to say that it used the MODERN VASCULAR mark since March 8, 2018, or that it used the MODERN VASCULAR & VEIN CENTER mark since October 2018. Either way, it appears that the Complainant’s federal registration may take priority in Illinois, since that priority dates back to the filing date in February 2018. However, that is an issue for the court to decide; in this proceeding, the Panel need only determine whether the Respondent had rights or legitimate interests in the MODERN VASCULAR portion of the disputed domain name when it registered the disputed domain name in November 2018. Because the Respondent appears to have had prior rights in Indiana at the time of the disputed domain name registration, the Panel concludes that the Respondent did have rights or legitimate interests in the disputed domain name under two of the examples listed in the Policy for establishing rights or legitimate interests in a domain name:

(i) before any notice of the dispute, the respondent’s use of a name corresponding to the domain name in connection with a bona fide offering of goods or services; and

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name.

Here, the Respondent was making a bona fide offering of PAD services under the MODERN VASCULAR trademark in Indiana since 2017, long before any notice of this dispute, and the Respondent was commonly known in Indiana under the MODERN VASCULAR name. The Panel therefore concludes that the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the disputed domain name.

iii. Registered and Used in Bad Faith

For all the reasons noted with respect to the second factor, the Panel also finds that the Complainant has failed to establish that the Respondent registered and used the disputed domain name in bad faith. When the Respondent registered the disputed domain name, it had trademark rights in the MODERN VASCULAR trademark in its geographic area of use. The Panel finds, based on the evidence in the record, that the Respondent registered the disputed domain name in good faith, to reflect its trademark in its domain name.

The Complainant properly notes that the Respondent was aware of the Complainant’s trademark at the time the Respondent registered the disputed domain name given that the Complainant sent a demand letter to the Respondent on October 8, 2018. However, mere knowledge of the Complainant’s rights is not sufficient for an inference of bad faith in this case. The Respondent runs a medical practice called Modern Vascular & Vein Center, and the disputed domain name acts as the Respondent’s main corporate website. The website is filled with substantive information about the Respondent’s practice and the diseases treated by the Respondent. There is no evidence in the record that the Respondent adopted the disputed domain name to profit off of the Complainant. Rather, the more appropriate inference is that the Respondent registered the disputed domain name to reflect its own name in its domain name. That the Respondent added the word “care” to the disputed domain name, and also changed its corporate name to Modern Vascular & Vein Center, is indicative of a good faith effort to avoid a dispute with the Complainant, not a bad faith scheme to misappropriate the Complainant’s goodwill and cause confusion among patients. Moreover, as the Complainant’s counsel explained to the Respondent in its letter of November 7, 2018, the Respondent rejected the Complainant’s allegations of infringement because it had senior common law rights in Indiana, which further undermines any claim that the Respondent registered and used the disputed domain name in bad faith.

The Panel therefore concludes that the Complainant has failed to establish that the Respondent registered and used the disputed domain name in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

David H. Bernstein
Sole Panelist
Date: May 15, 2020

¹ There is an inconsistency in the Complainant’s evidence. The Complaint says that, through its subsidiaries and affiliates, it has clinics in seven states. Complaint ¶ 17.c. The supporting declaration of the Complainant’s governing authority, though, says that it has clinics in six states: Arizona, Colorado, Mississippi, New Mexico, Texas, and Virginia, Annex 14. There is, though, a reference to clinics in Florida and Oklahoma on Annex 5, which appears to be a screen shot on the Complainant’s website as of January 2, 2020. As of the date of this decision, though, the Complainant’s website only lists clinics in five states – Arizona, Colorado, New Mexico, Texas and Virginia – with a clinic “coming soon” in Mississippi. This shifting list of places where the Complainant has or has had clinics raises questions about the geographic location where it actually has offered its services, but because this discrepancy does not impact whether the Complainant had a clinic in Indiana during the five critical days in July 2017, the Panel need to resolve this issue.

The Complainant also states that it has “provided services to residents of 18 states”, id., but it does not indicate whether it advertises or otherwise uses its trademark in those additional states, or whether it simply has treated residents of those other states in its clinics. In any event, it does not claim to have treated any patients from Indiana, and certainly has not claimed to have treated any patients from Indiana during the five days at issue in July 2017, so this allegation also does not impact the Panel’s decision.