The Complainant is Teeth Today LLC of Boca Raton, Florida, United States of America ("USA" or "US"), represented by Thomas & LoCicero PL, USA.
The Respondent is Irfan Atcha, Dyer Family Dentistry of Dyer, Indiana, USA, represented by Hartman Global IP Law, USA.
The disputed domain name <teethtodaychicago.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 16, 2016. On June 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 25, 2016.
On July 25, 2016, several hours after the Notification of Respondent Default, the Respondent submitted a request for an extension of time. The Center confirmed receipt of the Respondent's request on July 26, 2016, and the Respondent was granted an extension to July 28, 2016 in which to file a Response. On July 27, 2016, the Respondent sent an email communication in which the Respondent consented to the transfer of the Domain Name to the Complainant. The Center emailed the Parties on July 28, 2016, inviting the Complainant to request suspension of the proceeding to discuss settlement between the Parties. On August 1, 2016, the Complainant requested that the Center proceed to appoint the Panel.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 3, 2016. 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.
The Complainant is a limited liability company organized under the laws of the State of Florida, USA and headquartered in that state. According to the Complaint, for nearly twenty years, the Complainant has been providing dental implant services, and it has done so under the service mark TEETHTODAY since 2001. The Complainant currently offers services under that mark in nine US states, including offices in two suburbs of Chicago, Illinois, USA. The record demonstrates that its services are advertised with the TEETHTODAY mark in print media, social media, and Internet platforms including the Complainant's principal website at "www.teethtoday.com", registered by one of the Complainant's principals, which has been in continuous use since approximately October 2010.
The Complainant holds US trademark registration number 2525218 for TEETHTODAY as a standard character mark (registered January 1, 2002).
According to the Registrar, the Domain Name was created on May 14, 2011 and was registered to the Respondent, a dentist in Dyer, Indiana, in the Chicago metropolitan area.
In October 2013 the Complainant became aware of the Domain Name, and the Complainant's legal counsel wrote to the Respondent. Counsel for the Respondent replied on November 4, 2013, noting that the Respondent had not put the Domain Name to any use (it evidently resolved to an advertising search landing page operated by the Registrar) and stating that the Respondent had been "unaware of your client's registered trademark" when he registered the Domain Name. Counsel for the Respondent represented as follows:
"Having now been put on notice of your client's trademark, my client will not use, transfer or sell the domain name, and will not renew the domain name upon its expiration."
Despite these representations, it appears that the Respondent renewed the Domain Name registration in May 2015 and subsequently redirected the Domain Name to a website at "www.newteethchicago.com", which features the Respondent's cosmetic dentistry services through the offices of New Teeth Chicago in Chicago, Illinois. At the time of this Decision, the Domain Name resolves to this website, which offers services in competition with the Complainant's Chicago-area dental implant services.
The Complainant contends that the Domain Name is confusingly similar to its registered and common law TEETHTODAY mark and that the Respondent has no rights or legitimate interests in that name.
The Complainant argues that the Respondent had "at least" constructive notice of the Complainant's registered trademark when the Respondent registered the Domain Name in 2011 and demonstrated bad faith by using the mark in its entirety, linking to a competing website, and reneging on the undertaking not to use or renew the Domain Name.
The Respondent did not submit a formal Response replying to the Complainant's contentions. After notification of the Respondent's default, however, counsel for the Respondent submitted an email communication stating that "Dr. Irfan Atcha personally and as owner of Dyer Family Dentistry and New Teeth Today Chicago" consented to transfer the Domain Name to the Complainant.
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."
The first element of the UDRP is "essentially a standing requirement" requiring "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, Second Edition ("WIPO Overview 2.0"), paragraph 1.2. The Domain Name meets this test by comparison with the Complainant's registered trademark TEETHTODAY, considering that the Domain Name restates the mark in its entirety and adds the geographic name "Chicago," which does not serve to avoid confusion, especially given that the Complainant operates in the Chicago area.
The Panel concludes that the first element of the Policy has been established.
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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this issue shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, the Complainant has made a prima facie case by establishing trademark rights in TEETHTODAY and showing that the Respondent used a confusingly similar Domain Name to redirect Internet users to a competitor's website. The Respondent has not come forward to offer evidence of rights or legitimate interests in the Domain Name. Thus, the Complainant prevails on the second element of the Policy.
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 ("you" refers to a respondent):
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location."
The Domain Name is confusingly similar to the Complainant's TEETHTODAY trademark, and the Respondent has used it recently to redirect traffic to a website offering professional services, at least some of which compete directly with those that the Complainant offers in the Chicago area. The Panel has no difficulty finding bad faith in the recent use of a confusingly similar Domain Name to link to a competing website (especially after agreeing not to make such use of the Domain Name). It is a closer question whether bad faith can be inferred in 2011 when the Domain Name was first registered.
The Policy by its terms requires a finding of bad faith both in the registration and in the use of the Domain Name, and the consensus view is that renewal of the registration is not normally the relevant event to mark bad faith in registration. See WIPO Overview 2.0, paragraph 3.7. Thus, the Respondent's renewal of the Domain Name registration in 2015, with admitted knowledge of the Complainant's trademark following the parties' communications in 2013, does not establish the Respondent's intent in 2011 when the Respondent acquired the Domain Name. Moreover, along with most WIPO UDRP panelists, the Panel does not consider the doctrine of constructive notice in US trademark law to be consistent with the UDRP concept of bad faith (see WIPO Overview 2.0, paragraph 3.4) and therefore declines the Complainant's invitation to find bad faith simply because a trademark registration existed at the time the Domain Name was registered.
Instead, the Panel is persuaded by the following facts from the existing record in this proceeding: By May 2011 the Complainant's TEETHTODAY mark was well established and advertised, in the same field in which the Respondent is active. The Domain Name incorporates that mark in its entirety rather than comprising a string based on any of the business names used at various times by the Respondent, as shown in correspondence and on the website associated with the Domain Name: Dr. Irfan Atcha, Dyer Family Dentistry, New Teeth Dental, New Teeth Chicago, or New Teeth Indiana. The Respondent's counsel stated in a letter to the Complainant in 2013 that the Respondent was previously unaware of the Complainant's mark, but the Respondent did not come forward to make such a statement in this proceeding with the required certification of accuracy and completeness (see Rule 5(c)(viii)). The Respondent offered, instead, to transfer the Domain Name to the Complainant. On balance, the Panel considers that the available evidence points to the Respondent having targeted the Complainant's mark for commercial gain, and the Respondent's subsequent conduct is consistent with that inference.
The Panel concludes that the Complainant has established the third element of the Complaint, bad faith, for purposes of the Policy.
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 <teethtodaychicago.com> be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: August 9, 2016