WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

InMed Diagnostic Services, LLC, InMed Diagnostic Services of S.C., LLC, InMed Diagnostic Services of MA, LLC and InMed Diagnostic Services of IL, LLC v. James Harrison

Case No. D2006-1230

1. The Parties

The Complainants are InMed Diagnostic Services, LLC, InMed Diagnostic Services of S.C., LLC, InMed Diagnostic Services of MA, LLC and InMed Diagnostic Services of IL, LLC, United States of America; represented by Haynsworth Sinkler Boyd, P.A., Columbia, South Carolina, United States of America.

The Respondent is James Harrison, Emeryville, California, or Fort Worth, Texas, United States of America. Mr. Harrison has submitted a Response on his own behalf.

2. The Domain Name and Registrar

The disputed domain name <inmeddiagnostics.net> is registered with Melbourne IT trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2006. On September 26, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On September 28, 2006, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an Amended Complaint on October 11, 2006. The Center verified that the Amended Complaint¹ 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 Respondent of the Complaint, and the proceedings commenced on October 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2006. The Response was filed with the Center on November 10, 2006.²

The Center appointed Richard G. Lyon as the sole panelist in this matter on November 27, 2006. 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 Procedural Matters

Following its customary practice, the Center addressed its notification of the Complaint and Commencement of Proceedings to Respondent at the address in Emeryville, California, United States of America, set forth in the registration details for the disputed domain name, as specified in the Complaint and in the Registrar’s verification. The Center’s communications were sent by email and by courier service. The email communications were not returned as misaddressed but the courier’s tracking records indicate that delivery to California was not made successfully. After a review of the Complaint, the Center discovered an allegation (in the section of the Complaint describing Respondent’s alleged conduct, not under a description of the parties) that Respondent had a Fort Worth, Texas, United States of America, address. On November 6, 2006, the Center resent a copy of the Complaint and Notification to Respondent at that address by courier service and this time it was successfully delivered.

Two procedural issues arise from this set of facts. First, did the Center, as required by paragraph 2(a) of the Rules, employ “reasonably available means calculated to achieve actual notice to Respondent” of the commencement of this proceeding when it sent its initial couriered parcel to the California address set forth in the whois database and email communication to the email address there listed?

Plainly the Center did so. The Center’s common practice is to not to go beyond the means expressly required by paragraph 2(a) of the Rules, though if the Complaint prominently sets out alternate addresses the Center will ordinary forward a copy to each one. The Panel sees no reason why in this proceeding it should be required to do more, or why the Center is responsible for Complainants’ failure prominently to identify Respondent’s alternate address. Once the Center learned of the alternate address, it promptly sent the materials to that address as well. A domain name registrant who fails to receive timely notice because he has failed to advise the registrar of a changed address or other changed contact information, or has filed a fictitious address, can blame no one but himself for failure to receive notification sent by the Center in accordance with paragraph 2(a) of the Rules, or by Complainants in a proceeding under the Policy.³

The second procedural question is whether the Panel should consider the late-filed Response. Respondent claims not to have received the Complaint until November 8, 2006, the date that the second courier delivery was made and six days after the Response was due. Respondent does not refer to emailed notification of the proceedings, which apparently he received. Paragraph 14(a) of the Rules provides that “in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules. . . the Panel shall proceed to a decision on the Complaint” (emphasis supplied). Paragraph 5(e) of the Rules is to the same effect. Panel decisions⁴ have generally treated the issue of whether to allow an out-of-time filing as within the Panel’s discretion, either under paragraph 12 of the Rules (governing “further statements” from the parties) or under paragraph 10(b) of the Rules, which requires that “each party [be] given a fair opportunity to present its case.”

Respondent has offered nothing “exceptional” justifying his late Response; that is instead a direct consequence of his own failure to provide accurate contact information with the Registrar, as his registration agreement expressly requires. Since the delay is only one week, however, the Panel in its discretion will allow the Response in order to avoid any suggestion that Respondent was not permitted adequately to present its case. See The Knot, Inc. v. Julia Bitton, The Nest, WIPO Case No. D2006-0377 (denying request to file a response out of time but noting that such a submission will be allowed “when [it] will result in minimal prejudice to the Panel and the non-requesting party”).

5. Factual Background

Complainants provide outpatient diagnostic imaging services at facilities that they own and operate in the states of South Carolina, Massachusetts, and Illinois, United States of America. They claim to “have operated continuously since their formation” under various names incorporating the phrases InMed Diagnostics and InMed Diagnostics Services.⁵ Complainants have no registered trademark incorporating either phrase, but in September 2006 filed an application with the United States Patent and Trademark Office (PTO) seeking federal registration of “InMed Diagnostic Services” in international classes 35 and 44. Their application is pending before the PTO. In their application Complainants allege a first use in commerce of June 1998.

Respondent provides imaging technicians to diagnostic companies under the name “Quality Imaging Technologists” or “QIT.” In April or May 2006, Complainants and Respondent disputed whether a commission was due from Complainants to Respondents in connection with a Complainants’ hiring of an employee placed with it by Respondent, and the amount of the commission. This dispute engendered (among other things) email communications between the parties, a threat of litigation for breach of contract, a threat of tort litigation including punitive damages, a “demand for settlement,” and Respondent’s registration of the disputed domain name. Respondent accomplished that registration on May 2, 2006.

In a “demand for settlement” dated May 18, 2006, Respondent “promise[d] to publish on the World Wide Web the entire record of our relationship to date with [Complainants],” a promise he carried out at the website for which Respondent used the disputed domain name.

This website contains a Native American parable about never trusting a liar and Respondent’s version of his dealings with Complainants. There is no evidence, either in the pleadings or on the Panel’s own review of this website, that Respondent ever used the website for any commercial activity.

6. Parties’ Contentions

Complainants contend as follows:

Rights in a mark. Complainants have common law rights in the InMed Diagnostics mark by virtue of their continuous use of that mark from some unspecified date to the present. A common law mark is sufficient to invoke the Policy. The disputed domain name is identical to this mark.

Rights or legitimate interests. Respondent has never been authorized by Complainants to use their mark, has never been commonly known by that name, and otherwise has no rights or legitimate interests in the phrase. Anticipating Respondent’s First Amendment argument, Complainants cite authority under the Policy to the effect that Respondent’s free speech rights do not “extend to” use of Complainants’ mark as its website.

Bad faith. Characterizing Respondent’s commentary about Complainants on its website at “false” and “clearly libelous,” Complainants accuse Respondent of using the disputed domain name “to defame and harass Complainants and their chief executive officer for the purpose of extorting money from Complainants,” either for sale of the disputed domain name or as part of the contractual dispute between the parties. Complainants’ also “are informed and believe” that Respondent worked a fraud upon them in connection with the technician placement that is the subject of the parties’ dispute.

Respondent denies the charging allegations in the Complaint, and contends as follows:

Rights in a mark. Complainants have no rights in the phrase InMed Diagnostics because (a) Complainants have not shown where the phrase was used in commerce prior to their filing with the PTO, (b) Complainants filed their trademark application after Respondent registered the disputed domain name, and (c) the phrase “does not conform to the definitions of common law trademark.”

Rights or legitimate interests. “Respondent has as much right to the [disputed domain name] as free speech will allow under the First Amendment of the United States Constitution⁶ and established [precedents] within that right, with the purchase of the [disputed domain name].”

Bad faith. All factual statements on Respondent’s website are true. Respondent is using the disputed domain name for legitimate criticism, and so its registration and use cannot be considered bad faith under the Policy.

Throughout the Response Respondent denies the validity of statements and characterizations made in the Complaint and reaffirms the truth and accuracy of his own commentary about and characterizations of Complainants’ conduct.

7. Discussion and Findings

Policy Elements. Complainants must prove the elements set out in paragraph 4(a) of the Policy. These elements are as follows:

(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) Respondent’s Domain Name has been registered and is being used in bad faith.

Within these three clauses of paragraph 4(a) are five matters that Complainants must establish with competent evidence. Each of the first and third clauses has two elements. Under clause (i) Complainants must show that the disputed domain name is identical to or confusingly similar with a mark and that Complainants have rights in that mark sufficient to invoke the Policy. Under clause (iii) Complainants must prove both registration and use in bad faith.

The outcome of this proceeding turns on the Panel’s answer to two of these issues. First, have Complainants proven that they have common law rights in the InMed Diagnostics mark? If the answer to this question is “no,” the Complaint must fail, as Complainants must establish each element of the Policy. If the answer is “yes,” then the Panel must consider the second issue, whether Respondent’s use of the disputed domain name for a criticism site is “legitimate” under paragraph 4(a)(ii) of the Policy. If it is, Respondent comes within the safe harbor of paragraph 4(c)(iii) of the Policy,⁷ and the Complaint must be denied. As Respondent’s bad faith or lack of it turns upon whether this use is legitimate, if the Panel finds Respondent has no right to use Complainants’ mark for a criticism site, or otherwise finds that Complainants made out their case under paragraph 4(a)(ii), a finding of bad faith necessarily follows.

Rights in the InMed Diagnostics mark. Complainants are correct that a mark need not be registered to permit them to bring a Policy proceeding based upon it. The allegations in the Complaint, if proven, would suffice as the necessary showing to support this legal proposition. As Respondent argues, however, Complainants have offered precious little proof to support their assertion.

There is no proof, for example, of use of the InMed Diagnostics phrase in advertising, signage, consumer surveys, or any media recognition of the mark. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” (“WIPO Overview”), 1.7, and cases there cited. Unlike evidence supporting matters under clauses (ii) or (iii) of paragraph 4(a) of the Policy, this sort of proof – if it exists – is entirely within a complainant’s control. Failure to supply such proof – if it exists – is inexcusable.⁸ What evidence supports Complainants’ assertion of common law rights in InMed Diagnostics? There is first the statement submitted to the PTO in Complainants’ trademark application use in commerce since 1998. As the Panel stated in Texans for Lawsuit Reform, Inc. v. Kelly Fero, WIPO No. D2004-0778, though the statements in this application are arguably self-serving, a trademark applicant is subject to criminal and civil sanctions for false statements.

While the Panel might hesitate to hold that a sworn statement in a trademark application, standing alone, always suffices to establish common law rights, in this proceeding Respondent’s own statements show beyond any doubt that, as in Texans for Lawsuit Reform, Respondent knew very well that Complainants did business under this name. At least one of Complainants was a client of Respondent. Respondent entered into a contract with one of Complainants in January 2006 and communicated regularly with Complainants for several months afterwards. In his email communications Respondent unabashedly states that he chose the disputed domain name to take advantage of Complainants’ trade name. As in Texans for Lawsuit Reform, “this evidence suffices – just barely”– to prove Complainants’ rights in InMed Diagnostics as a common law mark sufficient to invoke the Policy.

As the disputed domain name is identical to Complainants’ mark, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Respondent’s claim of First Amendment protection for his criticism raises an issue that has continued to vex panels, particularly in matters involving a domain name owner who resides in the United States of America. The WIPO Overview, ¶2.4, identifies two opposing views, neither of which is accorded majority status. View 1 follows the “initial interest confusion” doctrine first articulated by the United States Court of Appeals for the Ninth Circuit in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F. 3d 1036 (1999), that “the right to criticize does not extend registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark.” View 2, contra, is a bright-line rule that a “respondent has legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial.” Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014, is the case most often cited in support of View 2.

In 2004 the undersigned endorsed View 1 in Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175, and in Texans for Lawsuit Reform v. Kelly Fero, supra. To quote from the first of these cases:

Decisions under the Policy focus upon a respondent’s use of another’s mark in a domain name to attract Internet users to respondent’s site. This is true in typosquatting cases and in cases where a respondent selected his domain name in anticipation of subsequent sale to the mark owner. The content of Respondent’s sites in these two categories of cases – cases in which respondents almost uniformly lose – is irrelevant to the harm to the mark owner and to the unwary consumer. That harm results from the confusion caused by the initial attraction to the site by means of borrowing Complainant’s mark. And that is exactly the harm the Policy was adopted to address.

In preparing the decision in this proceeding, the Panel has reviewed criticism cases decided subsequently to Justice for Children and Howard Jarvis, and has determined that the conflict between View 1 and View 2 remains as irreconcilable today as when the WIPO Overview was published. Some Panels have attempted to refine one test or the other. See, for example, Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case D2004-0206 (distinguishing between cases in which the disputed domain name is exactly similar or whether it contains a qualifier (such as “sucks”) that might reduce the likelihood of attracting Internet users seeking the mark owner); Ryanair Limited v. Michael Coulston, WIPO Case No. D2006-1194 (adopting Covence approach); Medimmune, Inc. v. Jason Tate, WIPO Case No. D2006-0159 (complaint denied where Complainants had offered no proof of consumer confusion, and the available evidence suggested that consumer confusion was unlikely). Other Panels have adopted a hybrid between the two views, adopting a “totality of the circumstances” test under which the Panel carefully examines facts and circumstances of a particular case, taking into account (for example) the nature of the criticism, relationship of the parties, existence and prominence of disclaimers of affiliation with the mark owner, proof of actual confusion. See, e.g., The Highland Street Connection dba Highland Street Foundation v. Chris McGrath, WIPO Case No. D2006-0516; Asset Loan Co. Pty Ltd v. Gregory Rogers, WIPO Case No. D2006-0300; CBS Broadcasting Inc, f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988.

This decision is not the place for an extended discussion of the “totality of circumstances” approach, but some comment is appropriate to explain why the Panel chooses not to follow it.⁹ With all due respect to the panelists who have articulated this test, the Panel is highly skeptical because this test vests considerable discretion in the Panel and in consequence invites a panel to judge the “equities” or other subjective factors involving an evaluation of each party’s credibility or motives. This approach tempts a panel to judge between each party’s version of the “facts,” a task that cannot be done with any confidence absent the live testimony and cross-examination that the Rules expressly prohibit. The undersigned in numerous cases has cautioned against panels’ inferences resulting from pursuing such matters in any proceeding.

The hazards of venturing into this thicket are even greater when the respondent raises free speech issues, because the panel may consider the quality or elegance of respondent’s prose, the worthiness of his cause, or his preference for hyperbole or personal invective over reasoned discussion. First Amendment rights apply with equal force however unpopular the cause and however offensive certain listeners deem the message. In this proceeding, as occurs in many of these cases, Complainants accuse Respondent of defamation. It is difficult enough for judges and juries to ascertain the point where tortious conduct trumps a Constitutional right of free expression; that task is simply impossible for a panelist in an administrative proceeding under the Policy.

Judges are government employees charged by law with interpreting the law and Constitution, and are accountable for their successes and failures to the political branches of government and to the people. Panelists are private citizens who are given a very limited brief by commercial contract between private parties, and accountable only to the private provider that has engaged them. Even if the consequences be limited to a single domain name, it is wholly inappropriate for a panelist to make a judgment with Constitutional import. A brighter line than the “totality of the circumstances” is in my view more consistent with the Policy and its underlying rationale of prompt resolution of a very limited class of cases. The Panel therefore expresses no view on any claims of defamation or fraud and considers them irrelevant to resolution of this case.

United States trademark law is similarly unsettled on the First Amendment question. Some of the United States Federal Courts of Appeals have endorsed the initial interest confusion approach while others have not. While there may be a slight trend away from this doctrine, it is not enough to allow the Panel to say that the courts have abandoned that theory entirely or likely to do so any time soon.¹⁰

In summary, there remain these two competing lines of authority. The Panel remains persuaded that View 1, the initial interest confusion approach, is appropriate under the Policy. The Panel adheres to View 1. Respondent lacks rights or legitimate interests in the disputed domain name.

Regarding Respondent’s claimed restriction on free speech, as in Justice for Children:

My decision in this proceeding no way abridges or chills Respondent’s free speech rights. He may continue his social and political commentary and attack against Complainants’ activities, on the Internet if he wishes, at another website, so long as he does not appropriate the protected mark of another as his web address. Under the Policy the most revered and thoughtful critic or political speaker may not increase his audience by taking advantage of the renown or attraction that attaches to another’s protected mark. Respondent is not entitled to use a soapbox or broadcast frequency owned by Complainants to lure Complainants’ audience to his harangue.

C. Registered and Used in Bad Faith

Without the First Amendment shield that Respondent has sought unsuccessfully, bad faith is readily apparent in both his registration and use of the disputed domain name. Respondent registered the disputed domain name in the midst of a contract dispute with Complainants and openly threatened to use, and actually used, the disputed domain name to gain leverage in that dispute. As such, while perhaps not falling neatly into one of the four non-exclusive examples of bad faith set out in paragraph 4(b) of the Policy, his conduct constitutes bad faith under a wealth of decisions.

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 disputed domain name <inmeddiagnostics.net> be transferred to Complainants.

Richard G. Lyon
Sole Panelist

Dated: December 11, 2006

¹ All references in the Panel’s opinion to the Complaint are to the Amended Complaint.

² The circumstances surrounding, and the consequences of, the late filing are discussed infra under “Procedural Matters.”

³ Given the Panel’s allowance of the Response, there is no need to address whether the Complainants, which were aware that Respondent occasionally resided in Texas, were under any obligation initially to serve the Complaint there as well as in California.

⁴ Cases discussing late filings and requests for extension are well summarized in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304.

⁵ The evidence submitted in support of this claim is discussed in Section 6, infra.

⁶ United States Constitution, Amendment 1: “Congress shall make no law . . .abridging . . .the freedom of speech. . . .”

⁷ Paragraph 4(c)(ii) states that use is legitimate if a 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.”

⁸ Although this may be stating the obvious, counsel’s allegation in the Complaint is not proof and is of no evidentiary force or effect under the Policy.

⁹ One marginal comment about this approach is appropriate. My decision in Justice for Children, supra, has occasionally been cited as resting in part on my description of the “look and feel” of respondent’s website, and that this is an appropriate criterion to consider among other circumstances of a particular case. While other Panels are of course free to cite that decision for what they read in it, the decision’s author wishes to state that this observation, made in providing the factual background of the case, was not a factor in reaching the conclusion on the Policy question discussed above.

¹⁰ Of course, the issues in an action for damages under the trademark laws may differ significantly from those in a Policy proceeding. See Justice for Children, supra.