WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allergy Partners, P.A. v. Ekaterina Zaitseva
Case No. D2017-1380
1. The Parties
The Complainant is Allergy Partners, P.A. of Ashville, North Carolina, United States of America (“USA” or “US”), represented by Nelson Mullins Riley & Scarborough, LLP, USA.
The Respondent is Ekaterina Zaitseva of Hoboken, New Jersey, USA, represented by Law Office of Gerard C. Vince, LLC, USA.
2. The Domain Name and Registrar
The disputed domain name <allergypartners.info> (the “Domain Name”) 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 July 18, 2017. On July 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 19, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 July 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2017. On August 14, 2017, the Respondent asked for an automatic four-day extension of the deadline to file the Response. The due date of the Response was extended to August 18, 2017. Following the Respondent’s request on August 18, 2017 for a further extension, the due date for the Response was extended to August 25, 2017. The Response was filed with the Center on August 25, 2017.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 30, 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
The Complainant is a professional association organized under the law of the State of North Carolina, USA, and headquartered in Asheville, North Carolina. The association members are various physician practice groups specializing in the treatment of allergies. According to the Complaint and the Complainant’s central website at “www.allergypartners.com”, the Complainant has grown from a single office in North Carolina in 1977 into the largest single-specialty practice in allergy, asthma, and immunology in the USA, with a network of 57 practices in over 126 offices located in 23 states, including four offices in New Jersey, the state where the Respondent resides.
The Complainant claims use of the mark ALLERGY PARTNERS since 1994 and has obtained US trademark registration for that name as a standard character mark, as well as for a design mark featuring that name, respectively US Trademarks Numbers 4955397 and 4955395 (both registered on May 10, 2016).
The Domain Name was created on May 18, 2016 and is registered in the name of the individual Respondent, with a postal address in New Jersey, USA, not listing an organization name. The Domain Name resolves to a website headed “Allergy Partners of North America” (the “Respondent’s website”) which advertises allergy testing and immunotherapy programs, apparently by providing outsourced staff and equipment to work within existing medical practices. The Respondent’s website does not indicate a geographical market except in the name (“North America”) and the use of a North American toll-free telephone number. The online database operated by the New Jersey Secretary of State shows that Allergy Partners of North America LLC was established as a New Jersey limited liability company on April 25, 2016.
The Response explains that Allergy Partners of North America LLC is a limited liability company owned by Dr. Alexander Zaitzev. The Respondent Ekaterina Zaitseva, his daughter, registered the Domain Name and maintains the Respondent’s website as an employee of the company. Consequently, this Decision refers to the Domain Name registrant, Ms. Zaitseva, as the Respondent, but accepts that she acted on behalf of Dr. Zaitzev and his company, Allergy Partners of North America LLC, which does not deny competing with the Complainant in at least some North American markets.
Counsel for the Complainant sent a cease-and-desist demand to Allergy Partners of North America, whose counsel suggested the latter would be willing to sell the Domain Name to the Complainant. The communications between the parties were inconclusive, and this proceeding followed.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is identical or confusingly similar to its well-known ALLERGY PARTNERS mark and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant argues that the Respondent must be aware of the leading national practice and is presumably using the Domain Name with the intention of misdirecting Internet users for commercial gain.
The Respondent argues that Internet users are sufficiently sophisticated to distinguish between “.com” and “.info” domain names and denies that the websites are similar or likely to engender confusion. The Respondent asserts a right to use a Domain Name corresponding to part of the company’s legal name and denies any intention to exploit the Complainant’s trademark.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.
The Domain Name incorporates the ALLERGY PARTNERS mark in its entirety, omitting only the space between the words that cannot be included in DNS addresses for technical reasons. The Panel does not find in these circumstances that the generic Top-Level Domain (“gTLD”) “.info” avoids confusing similarity (see WIPO Overview 3.0, section 1.11). The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
The Respondent does not claim that Allergy Partners of North America LLC has acquired trademark rights but rather that it has a legitimate interest in using a Domain Name corresponding to the company name that it created a few weeks before registering the Domain Name, to advertise its commercial offerings. However, under paragraph 4(c)(i) of the Policy, those offerings expressly must be bona fide, and any claim of rights or legitimate interests under paragraph 4(c)(i) or 4(c)(ii) of the Policy may be undermined if the use of the Domain Name is abusive of third-party trademark rights. See WIPO Overview 3.0, section 2.15. If the record supports an inference that the Respondent’s company name and Domain Name were selected to take advantage of the Complainant’s trademark, the fact that the Respondent was making money under that name would not serve to establish “rights or legitimate interests” in the Domain Name for UDRP purposes. Therefore, the Panel will address that issue jointly with the question of bad faith in the following section.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Panel finds that it is probable that the Respondent had actual knowledge of the Complainant and its business by the time of the company registration and then, shortly after, the Domain Name registration. The Complainant’s mark had been in use for a dozen years by that time and was registered as a trademark by the time of the Domain Name registration. It is telling that the Response does not deny prior knowledge of the Complainant. The Complainant has the nation’s largest single-practice allergy and immunology network, the field in which the Respondent also does business, and the Complainant already operated a website at the more desirable online address, “www.allergypartners.com”. Registering the Domain Name with the much less popular “.info” gTLD indicates the likelihood that the Respondent was aware of the Complainant’s “.com” registration and website.
The evidence points to an intention to trade on the trademark value of the Domain Name, rather than simply to select words for their generic value or because they correspond to the Respondent’s company name. Significantly, the Domain Name matches the Complainant’s name exactly but omits half of the Respondent’s company name (“of North America”). As the Complainant points out, the design, color scheme, and logo of the Respondent’s website also bear some broad similarities to the Complainant’s, and, of course, they both deal with some similar content. The Respondent’s website is notable for omissions as well: it does not fully identify Allergy Partners of North America LLC, or name Dr. Zaitzev, or any doctor or employee, and it gives no physical location of any office. The website also does not disclaim affiliation with the much better known Complainant. In short, the Respondent’s Domain Name and website both lend themselves to confusion with the Complainant’s better known business, and the Panel considers this unlikely to be accidental. The Respondent does not have a legitimate interest, within the meaning of the Policy, in using a Domain Name targeting a competitor’s trademark, even if the Respondent has recently created a company with a similar name.
On the available record, the Panel concludes that the second and third elements of the Complaint have been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <allergypartners.info>, be transferred to the Complainant.
W. Scott Blackmer
Date: September 6, 2017