WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc.

Case No. D2005-1318

1. The Parties

The Complainant is The New England Vein & Laser Center, P.C., Concord, Massachusetts, United States of America, represented by the law firm Hinckley, Allen & Snyder, LLP, Boston, Massachusetts, United States of America.

The Respondent is Vein Centers for Excellence, Inc., St. Louis, Missouri, United States of America, represented by the law firm Jagtiani + Guttag, Charlottesville, Virginia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <newenglandveincenter.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2005. On December 20, 2005, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the domain name at issue. On December 21, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on January 5, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2006. The Response was filed with the Center on that date.

The Center appointed Richard G. Lyon as the sole panelist in this matter on February 10, 2006. The Panel finds that it was properly constituted and has jurisdiction over this dispute. The Panel has submitted his 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 Parties. Complainant is a privately owned medical center providing outpatient treatment of venous disease, including treatment for varicose and spider veins, liposuction, laser hair removal, and facial rejuvenation services. It has been in business continuously since 1996 and generates substantial revenues from its services. Complainant’s medical center is located in Concord, Massachusetts, a suburb of Boston. Complainant has maintained a presence on the Internet since 1997. Its principal website is now “www.veinhairaway.com”.

Respondent manages and operates a network of surgeons who dedicate their practice to the treatment of venous diseases, under the name “Vein Centers for Excellence.” According to Respondent’s principal website at “www.veincenters.com”, its network physicians are located in sixteen states of the United States. One of Respondent’s network physicians – the only one in the New England states¹ - maintains his office in Salem, New Hampshire, located on the New Hampshire-Massachusetts border, about forty miles from Complainant’s medical center. Respondent, or least Respondent’s network physician in Salem, New Hampshire, is therefore a direct competitor of Complainant.

Complainant’s Marks. Complainant owns the following service marks that are registered with the Commonwealth of Massachusetts:

Mark	Registration. Date	Date of First Use	Services
THE NEW ENGLAND VEIN CENTER	1/29/97	August 1996	Treatment of varicose and spider veins
THE NEW ENGLAND VEIN AND LASER CENTER	2/13/97	August 1996	Treatment of varicose and spider veins, and laser treatment used in a variety of medical applications.
THE NEW ENGLAND VEIN & LIPO CENTER	1/16/04	October 2003	Laser hair removal services, microdermabrasion services, cosmetic services, namely, liposuction, laser, micro-incision, phlebectomy and scerotherapy treatment of spider and varicose veins.

Complainant has also applied for U.S. federal registration of its New England Vein & Lipo Center mark, in an application filed October 21, 2005, based upon use of this mark in commerce since November 2003. This application is currently pending.

Communications between the parties. In April 2004, Respondent invited Steven Margolis, Complainant’s principal physician, to attend a conference in Boston. Respondent’s invitation was addressed to Dr. Margolis, care of New England Vein & Laser Center in Concord, Massachusetts. The purpose of the conference was to invite surgeons in the New England area who provide treatment of venous disease to join Respondent’s network of physicians. Dr. Margolis attended the conference but decided not to join Respondent’s network.

The disputed domain name. Respondent registered the disputed domain name on April 20, 2005. As an Internet user entering this domain name reaches a page captioned “www.newenglandveincenter.com”, with the name and address of Respondent network physician in Salem, New Hampshire. The banner headline of this webpage is “Vein Centers for Excellence of New England.”

5. Parties’ Contentions

A. Complainant

The Panel summarizes Complainant’s contentions as follows:

Rights in a mark. Complainant has rights in its three marks by reason of its Massachusetts registrations, its pending federal registration for one mark, and its continuous use of these marks in commerce. The disputed domain name is identical to Complainant’s “New England Vein Center” mark and confusingly similar to its other two marks.

Respondent lacks rights or legitimate interests in the disputed domain name. Respondent lacks rights or legitimate interests because:

- There is no evidence that Respondent is commonly known by the disputed domain name. Rather, it and its member physicians are known by the name “Vein Centers for Excellence.”

- Respondent had no domain name, trademark, or service mark corresponding to the disputed domain name.

- Respondent, Complainant’s direct competitor, is using the disputed domain name for commercial purposes.

- Respondent was aware of Complainant and its service marks prior to registering the disputed domain name and using it for competing services. Respondent’s invitation to Complainant’s principal to join Respondent’s network, addressed to Complainant’s business name and address, evidences Respondent’s knowledge.

- Complainant has never authorized Respondent to use Complainant’s service marks.

In these circumstances, Respondent’s use of the disputed domain name is not legitimate under the Policy.

Bad faith. In addition to the circumstances cited for lack of legitimate interest, the following evidences Respondent’s bad faith in registration and use.

- Respondent was aware “actively or constructively” of Complainant’s trademarks when it registered the disputed domain name.

- Respondent’s registration and use of the disputed domain name has had the effect of diverting customers or prospective customers to Respondent’s website.

Respondent’s conduct thus comes within paragraph 4(b)(iv) of the Policy.

B. Respondent

Respondent draws a distinction between Complainant’s registered marks that underlies Respondent’s opposition to Complainant’s contentions under each of the three operative paragraphs of the Policy. For purposes of this proceeding Respondent does not contest Complainant’s rights to “New England Vein & Laser Center” or “New England Vein & Lipo Center,” but denies many of Complainant’s contentions in respect to the shorter “New England Vein Center” mark.

Rights in a mark. Respondent denies that Complainant has enforceable rights in the phrase “New England Vein Center” for several reasons:

- This is not the name that Complainant has used in its advertising, and it is not the name used to refer to Complainant in the newspaper articles and other publicity about Complainant attached to the complaint. The news media, and Complainant itself in its own advertising, use the full name: either New England Vein & Laser Center or New England Vein & Lipo Center.

- The shorter phrase is merely descriptive and Complainant has shown no “secondary meaning” attaching to it.

- Respondent acknowledges inviting Dr. Margolis to its seminar and asking him to join Respondent’s network, but points out that he addressed its invitation to Dr. Margolis at “New England Vein and Lipo Center,” not “New England Vein Center.”

Respondent thus denies that Complainant has enforceable rights in its New England Vein Center mark. The mark consists of two descriptive phrases that in the case of both Complainant and Respondent describe their geographic location and the services they provide. Because of this, Respondent suggests, the mark is unenforceable under United States trademark law and may not be used to invoke the Policy.

Any similarity between the disputed domain name and Respondent’s longer marks is permitted because Respondent has done no more than incorporate these two distinctive terms (“New England” and “Vein Center”) into a domain name at which it conducts a legitimate business.

Rights or legitimate interests. Respondent has rights in the disputed domain name because:

- Respondent has used it in connection with a bona fide offering of goods and services, its member physician’s medical practice in Salem, New Hampshire.

- The disputed domain name is descriptive of the services provided by Respondent’s New Hampshire member physician and is made up of two descriptive phrases that are not, at least separately, entitled to trademark protection.

- An Internet search for “vein center” or for “New England” yields countless sites for businesses unconnected to Complainant. An Internet search for the combined terms yields two other Massachusetts medical facilities in addition to Complainant and Respondent.

- Respondent’s use is “fair use” under United States trademark law and the Policy. (See Policy, paragraph 4(c)(iii))

- Respondent’s use of the disputed domain name is consistent with similar uses for other medical centers run by its member physicians.

Bad faith. Respondent denies bad faith in registration or use of the disputed domain name.

- It claims (without evidentiary support) that Respondent searched the “whois” database and the United States Patent and Trademark Office database prior to registering the disputed domain name and found nothing. Respondent is not responsible for searching the registry of states other than the state in which its own business is located, in this case New Hampshire.

- There was no intentional attempt to create a likelihood of confusion with Complainant, since Respondent merely selected a generic and geographically descriptive term, indicating only the type of service provided and the location of those services. There is no evidence that Complainant alone is known by the generic or descriptive terms of the disputed domain name. In fact, the evidence is to the contrary.

- The disputed domain name has not acquired “secondary meaning,” contrary to Complainant’s contentions.

Reverse domain name hijacking. Respondent asserts that “Complainant is certainly aware of the lack of merit in its argument,” and that “the Complainant’s real motive in this case is to eliminate competition rather to protect a valid mark.” Respondent additionally cites several alleged misstatements in Complainant’s presentation to the Panel. All of these relate to the distinction drawn between Complainant’s identity as “New England Vein & Laser Center” or “New England Vein & Lipo Center” rather than “New England Vein Center.”

6. Standards for Decision

The Complainant must prove the elements set out in paragraph 4(a) of the Policy:

(i) Respondents’ Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondents have no rights or legitimate interests in respect to the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

Complainant bears the burden of proof on each of these elements.

7. Discussion and Findings

A. Identical or Confusingly Similar to a Mark in which Complainant has Rights.

Complainant has made out its case under paragraph 4(a)(i) of the Policy. First, the disputed domain name is identical to Complainant’s New England Vein Center mark. Complainant has provided proof of a validly registered trademark, albeit registered with a state rather than nationally. A state registration may be sufficient for purposes of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”), §1.1; see also, e.g., Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro d/b/a Weber’s Mackinac Island Florist, WIPO Case No. D2001-0653.

Unlike some states, Massachusetts does not treat the mere filing of a business name as the equivalent of trademark registration; the Secretary of the Commonwealth notes that business designations “that are ‘merely descriptive’ of the applicant’s products or services are unregistrable under the trademark statute.”² The Secretary’s having allowed registration of Complainant’s “The New England Vein Center” mark under this standard, under an almost uniform line of decision under the Policy³ the Panel lacks authority to set it aside based on Respondent’s argument that it is merely descriptive and should not have been registered. The Panel will address the extent to which Complainant may preclude others from using a domain name incorporating a mark consisting of two descriptive phrases under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.

The disputed domain name is also confusingly similar to Complainant’s other two registered marks, the adequacy of which Respondent does not contest.⁴ Just as adding descriptive words to a registered mark to a domain name does not obviate confusion under the Policy, neither does incorporating less than all of a registered mark if the domain name incorporates the dominant feature or features of the mark. See, e.g., Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827. Here Respondent selected a domain name with four of the six words, including the first three words in the same order, of two marks it acknowledges are sufficient to invoke the Policy (and of which it was aware when it registered the domain name). Similarity there plainly is, and confusion is likely.

Particularly is that so in light of Internet searching protocols. An Internet user seeking Complainant’s website will likely use the words “New England Vein Center” (and perhaps others) as the search term. The initial interest confusion⁵ resulting from another name incorporating the dominant words of the mark prompts cybersquatters to select domain names that vary only slightly from the marks of others, to allow “accidental” diversion of the mark owners’ customers. Overview, §1.2 and cases there cited.

B. Rights or Legitimate Interests

The business of Respondent’s New Hampshire physician that is described at the site to which the disputed domain name resolves is certainly “legitimate” in the sense that it is permitted by law, it pays its taxes, it engages in competition, and so forth. But if that were the only standard for determining whether a business was within the safe harbor of paragraph 4(c)(i) of the Policy any cybersquatter that conducted such a lawful business could always find refuge. A panel examining the legitimacy or bona fides of a respondent’s business looks rather to the respondent’s entitlement to the domain name it has selected. Use of one party’s mark by a competitor is especially suspect because of the likelihood of competitive injury.

The record in this proceeding contains no evidence at all that Respondent or its New Hampshire physician was known by the phrase “New England Vein Center” prior to selecting the disputed domain name (Policy, paragraph 4(c)(ii)).⁶ And when it did so Respondent was aware of Complainant, Complainant’s marks, Complainant’s business, and the proximity of its New Hampshire physician to Complainant.

These circumstances closely mirror those in Mackinac Island Florist, supra. As in this case, complainant there held a state-registered mark consisting of a geographic area and a description of its services. Respondent, which was well aware of the complainant, its mark, and its business name, selected a close variant of complainant’s name and mark rather than respondent’s own business name for a business competing directly with complainant in the same geographic area. The panel in that case held, in language equally applicable here:

Respondent does not use a name corresponding to the Domain Names, is not commonly known by the Domain Names, and is not making a legitimate noncommercial or fair use of the Domain Names. The evidence shows that the Respondent is a competitor of the Complainant and well aware of the Complainant’s use of the mark in question, and, as discussed below, gives rise to a conclusion that the Respondent’s use of the mark was not fair use but in bad faith.⁷

As in Julie & Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the Winds Blow, WIPO Case No. D2005-0073, another case with very similar operative facts, Respondent’s claim to entitlement to the domain name it has chosen depends upon its claim that the operative phrase is descriptive, and that Complainant has failed to establish that mark sufficiently to invoke the Policy. That claim similarly fails with the Panel’s holding that Complainant has rights in its marks under the Policy. A respondent that elects the mark of a known competitor for its domain name runs the risk that a panel will not share its views on invalidity or will find that it is not empowered to set aside a duly issued mark.

C. Registered and Used in Bad Faith

Respondent appears to acknowledge that it has some duty to ensure that it is not treading on the trademark rights of another. According to its counsel’s unsubstantiated assertion, Respondent conducted searches of federal trademarks and the “WhoIs” database prior to registering the disputed domain name. With admitted knowledge of its nearby competitor’s business name and mark it is nothing short of disingenuous for Respondent now (Response, ¶41) to disclaim any duty to investigate that competitor’s trademark rights in its home state. What Respondent did was to presume, solely on its own authority, that it was free to use a similar name, perhaps because of a belief that it was free to use any “common-phrase” or “descriptive term” or because of the happenstance of being just across the border from the state in which Complainant had registered its marks. Whatever the reason, on any objective basis Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [its] web site . . ., by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site. . . “ Policy, paragraph 4(a)(iv). Or as stated by the panel in Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453, bad faith is established by Respondent’s decision deliberately to “free ride” on the goodwill associated with Complainant’s marks.

8. Decision

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 be transferred to the Complainant. The Panel need not consider Respondent’s charges of reverse domain name hijacking.

Richard G. Lyon
Sole Panelist

Date: February 22, 2006

¹ New England is a geographic region in the northeastern part of the United States, comprising the contiguous states of Connecticut, Rhode Island, Massachusetts, Vermont, New Hampshire, and Maine.

² “About Trademarks and Service Marks, “ website of the Secretary of the Commonwealth of Massachusetts, http://www.sec.state.ma.us/cor/corpweb/cortmsm/tmsminf.htm.

³ Overview, §1.1, Consensus View; see also Christie v. Porcaro, WIPO Case No. D2001-0653; Hola S. A. v. Idealab, WIPO Case No. D2002-0089.

⁴ Respondent’s acknowledgment that these marks are sufficient to invoke the Policy is understandable. As well as state registration, Complainant has furnished ample evidence of common law rights in these two marks, including advertising material and an affidavit from its principal attesting to substantial expenditures to develop the business and marks. In these circumstances Complainant has common law rights in these two marks that are sufficient to invoke the Policy. Overview, §1.7.

⁵ The term in the Internet context comes from Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F. 3d 1036 (9th Cir. 1999)

⁶ While Respondent does use comparable domain names (a geographic identifier followed by “vein center”) for some (but not all or most) of its other centers, that practice does not in any way show that Respondent had been known by the disputed domain name prior to registering it.

⁷ Respondent seeks to distinguish Mackinac Island Florist on the basis that the respondent in that case on the basis that “ In Mackinac Island Florist, Respondent used the exact name of a competing business, and misleadingly indicated the location of Respondent business.” (Response, ¶38). The first claimed distinction is irrelevant as the Policy permits a complainant to act when the disputed domain name is confusingly similar to its mark, and inaccurate since the disputed domain name is identical to one of Complainant’s marks except for the definite article the and a top-level domain designation. The second distinction may bear on bad faith, but as discussed below the Panel in this case finds Respondent’s bad faith on other grounds.