Austin Pain Association (“Complainant”), just won control of the domain name AustinPain.com which was owned by HugeDomains.com
As someone who is the subject of UDRP complainants as well (2 pending) it brings me no joy to report on these cases, but the cases are the cases and in this case HugeDomains.com lost control of AustinPain.com which the panel acknowledged was generic in nature and for which the complainant didn’t even have a registered trademark and a common law trademark which “Complainant has done just barely enough to show trademark rights in AUSTIN PAIN.:
Yet they awarded the domain to the common law trademark holder,.
Here are the findings of the one member panel:
1. Complainant operates a number of pain management clinics in Texas doing business as “Austin Pain Associates.”
2. The disputed domain name was registered by “Interventional Pain Associates” on July 27, 2009.
3. Complainant registered the business name “Austin Pain Associates” with the County Clerk of Travis County, Texas on December 20, 2003.
4. Respondent is a domain name reseller.
5. Respondent registered the disputed domain name on January 1, 2013.
6. Respondent has not used the domain name.
The question before Panel is whether Complainant has done enough to prove common law or unregistered trademark rights.
To do so it has been said that “[T]he complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services.”
Complainant claims to have used the name AUSTIN PAIN ASSOCIATES since 2002 and provides evidence of registration of the business name “Austin Pain Associates” in Travis County, Texas on December 20, 2003.
It alleges that it is commonly known by the name AUSTIN PAIN but essentially all of the supporting material provided with the Complaint and in response to the Panel Order shows use of the assumed business name, AUSTIN PAIN ASSOCIATES.
Nonetheless, if it can be said that Complainant has trademark rights in that name, then Panel is of the view that Complainant has trademark rights in the truncated form, AUSTIN PAIN, since the word “Associates” adds nothing more of value to the expression “Austin Pain.”
It is far from easy to assimilate the evidence into a sustainable case for unregistered rights.
The Texas business name registration from December 2003 is not a substitute for proof of trademark rights in the sense already discussed.
Registration of the assumed name might be an indication that the name was adopted for use then and may have been used since, but there is no proof of those matters. To the contrary, the date of first use of AUSTIN PAIN ASSOCIATES is vague.
Complainant suggests it once owned and lost the disputed domain name but its own evidence in that regard shows that on July 27, 2009 the disputed domain name was registered by “Interventional Pain Associates.”
There is no explanation of a connection (if any) between Complainant and Interventional Pain Associates. Complainant has not described the circumstances under which it lost the disputed domain name.
In response to the Panel Order in which Complainant was invited to provide further and better particulars of its trademark rights and, in particular, its claim to a common law trademark right, submissions and some, limited, physical evidence was received.
The submissions are of no assistance and proceed primarily on the mistaken belief that in law the essential element in the establishment of common law rights is proof of first adoption and use. It is not. The foundation of unregistered trademark rights is a proven reputation in the asserted trademark such that use of the same term by another would involve a misrepresentation and potential damage to the person or business associated with that reputation.
Moreover, Respondent correctly contends that the disputed domain name is comprised of generic terms which have been used by a number of third parties including “Austin Pain Therapy Associates, Inc.” and “Austin Pain Society.”
Whilst the majority of UDRP panelists have taken the approach that the descriptive or generic character of a domain name is a factor best considered in the context of paragraphs 4(a)(ii) and/or (iii) of the Policy, the potential non-distinctiveness of the trademark nonetheless remains an issue germane to the determination of trademark rights.
In that regard, the place name, “Austin,” in combination with the ordinary word “pain,” for pain management, do not lend themselves generously towards trademark protection, thus leaving Panel with the awkward task of deciding whether Complainant has done what is necessary to prove trademark rights in an otherwise descriptive term which other traders may wish to use, and as the evidence shows, do in fact use in some form or another.
That task is best approached from the basic proposition that Complainant is required to show rights, not exclusive rights. The determination must then be moderated by the observation that, in general terms, UDRP panelists have approached the proof of trademark rights in keeping with the spirit of the Policy, the aim of which is to provide a quick and effective means of combating abusive domain name registration, and not as a rule with the rigor with which a court might scrutinize a claim.
The physical evidence is largely undated and unimpressive.
Nevertheless what can be usefully distilled is that the August 2012 edition of a publication entitled Austin Business Journal reports that Complainant was founded in 2002, has nine clinics and 155 employees. Another article, “Top Doctors”, from austinmonthly.com in January 2013 lists one of Complainant’s medical practitioners and partners.
Finally, a piece of evidence shows that in November 2012 another practice partner gave a presentation to other professionals which counted for “CME” (which Panel assumes in the lack of explanation stands for “continuing medical education”) points.
Although this evidence is meagre it nonetheless points to a medical practice with a substantial employee base providing specialist services with geographical spread outside simply the city of Austin and which has a degree of stature and respect in its field of expertise.
On balance, Panel has come to the conclusion that Complainant has done just barely enough to show trademark rights in AUSTIN PAIN.
It remains only for Panel to find that the disputed domain name is legally identical to the trademark
The publicly available WHOIS information identifies Respondent as “Domain Admin / THIS DOMAIN IS FOR SALE / HugeDomains.com” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name.
There is no evidence that Respondent has any trademark rights.
There is no evidence that Complainant has authorized Respondent to use the trademark. The domain name is not in use, has never been used and is for sale.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
The only live question is whether the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. ‘
Respondent states that it is a generic domain name reseller, and submits that the sale of domain names containing generic terms is a bona fide offering of goods or services.
Respondent goes on to state that it has a particular interest in domain names with “a geo-locational value” and in names somehow related to the medical field. It provides evidence that it has registered, for example, <austinelectrolysis.com>, <austinmeditation.com>, and <austinneurologist.com>, along with names such as <augustapain.com>, <bocaratonpain.com>, and <centralvalleypain.com>. In short, Respondent claims to have registered 235 domain names that begin with the word “Austin” and 354 domain names that end with the word “pain.”
Panel accepts that Respondent is a domain name reseller and the reasoning of many panels that the business of registering and selling domain names for their generic value is a legitimate business practice protected under the Policy.
However, the issue is not the legitimacy of Respondent’s business model but whether it has a legitimate interest in the disputed domain name. Put another way, the legitimacy of Respondent’s business does not, of itself, create rights or a legitimate interest in a domain name corresponding with the trademark of another.
If that trademark is generic, it might say something of the bona fides of the domain name registrant for the purposes of paragraph 4(c)(iii) of the Policy, but the mere genericness does not create a legitimate interest in a domain name if it corresponds with the trademark of another.
Whether this issue has been approached as a matter of “willful blindness” of third-party rights, or constructive knowledge of those rights, the same result has followed and so it follows here. Panel finds that Respondent has no rights or interests in the disputed domain name.
Panel makes two preliminary findings.
First, it accepts as more likely than not to be true Respondent’s claim that, at the time it registered the disputed domain name, it had no knowledge of Complainant or of its trademark.
Accordingly, it would be open to the Panel to decline to find bad faith registration.
Secondly, Panel also accepts that on a balance of the evidence it would appear that, contrary to Complainant’s submission, it was in fact Complainant who first contacted Respondent about purchasing thedomain name for USD 6,000.
There is no evidence that Respondent reached out to Complainant.
However, Panel has come to the view that Respondent’s actions nonetheless fall under paragraph 4(b)(i) above.
In terms of paragraph 4(b)(i), it is indisputable that (a) Respondent’s business requires that it registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration, and (b) Respondent would do so for valuable consideration in excess of the out-of-pocket acquisition costs.
It therefore remains only to consider whether it had these intentions apropos Complainant “who is the owner of the trademark or service mark or to a competitor of Complainant” and it stands to reason that is the only class of persons to whom the domain name would have interest.
Panel finds registration and use in bad faith.
So this is a troubling for large domain holders since the generic domain was given to a common law trademark holder on a generic term seemly just because the owner of the domain was a large domain holder.