5th Jul 2007
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nursefinders, Inc. v. Vertical Axis, Inc / NURSEFINDER.COM c/o Whois IDentity Shield
1. The Parties
The Complainant is Nursefinders, Inc., Arlington, Texas, UnitedStatesofAmerica, represented by Hunton Williams, UnitedStatesofAmerica.
The Respondents are Vertical Axis, Inc, Gyeonggi-do, RepublicofKorea, represented by ESQwire.com Law Firm, UnitedState sofAmerica, and NURSEFINDER.COM c/o Whois Identity Shield, Vancouver, Canada.
2. The Domain Name and Registrar
The disputed Domain Name <nursefinder.com> is registered with NameviewInc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on March16,2007. On March20,2007, the Center transmitted by email to the Registrar, Nameview Inc., a request for registrar verification in connection with the domain name at issue. On April20,2007, the Registrar transmitted by email to the Center its verification response indicating the registrant of the Domain Name as “Vertical Axis, Inc” and providing the contact details. In response to a notification by the Center regarding the registrant and contact details provided by the registrar, the Complainant filed an amendment to the Complaint on April18,2007. The Center verified that the Complaint together with the amendment to 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“SupplementalRules”).
In accordance with the Rules, paragraphs2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced April19,2007. Inaccordance with the Rules, paragraph5(a), the due date for Response May9,2007. The Response was filed with the Center May9,2007.
On May22,2007, both the Complainant and the Respondent submitted supplemental filings to the Center.
The Center appointed W.ScottBlackmer, DavidE.Sorkin and P.JayHines as panelists in this matter on June21,2007. The Panel finds that it was properly constituted. Each member of 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, paragraph7.
4. Factual Background
The Complainant Nursefinders, Inc. is a Texas corporation headquartered in Arlington, Texas. Established in 1974, the Complainant provides temporary nurses and other health care workers to more than 4200 hospitals, nursing homes, and clinics in the United States, as well as supervising travel nurses and home health care workers. TheComplainant operates 120 medical staffing and home care centers in the UnitedStates. Since January 1996, the Complainant has advertised its services on its website at “www.nursefinders.com.” According to its website, the Complainant is “one of the nation’s largest providers of healthcare personnel and home care” and has placed more than 3.5 million nurses since 1974.
The NURSEFINDERS mark was registered to the Complainant as a standard character mark on December24,1991 (United States Registration No.1669698), showing first use in commerce in May1975. The Complainant earlier obtained registration for a stylized rendition of the name (United States Registration Number 1222995 (1983)) and more recently for the word mark NURSEFINDERS THE TRAVELERS’ CHOICE, (United States Registration Number 3240299 (2007)) and for a design mark featuring the words NURSEFINDERS THE TRAVELERS’ CHOICE (United States Registration Number 3254076 (2007)).
According to the Registrar’s Whois directory, the Domain Name was created on June19,2001. It is at the time of drafting registered in the name of “NURSEFINDER.COM c/o Whois IDentity Shield” at the Registrar’s address in Vancouver, British Columbia, along with the notation, “This registrant uses an IDentity Shield service to keep some or all of their information private.” The website of the Registrar, Nameview, Inc., advertises “Nameview’s IDentity Shield” as a private or anonymous registration service.
The Domain Name resolves to an advertising directory website headed “Welcome to nursefinder.com” followed by the line, “For resources on Travel nurse and Nursing school”. It then lists “Sponsored Results for NURSE”, with links to third-party websites offering information about nursing schools and online nursing degree programs, job opportunities for nurses, directories to locate nurses, or discounts for nurses purchasing products and services. “Related Searches” are featured in the left frame, displaying links to more third-party websites, chiefly advertising positions for nurses and employment services catering to nurses. The home page displays a copyright notice in the name of “nursefinder.com”, but the website offers no further information about the operator of the website.
On May23,2006, and again on August31,2006, counsel for the Complainant sent cease-and-desist letters to the registrant’s contact address as shown in the Registrar’s WHOIS database as the time of the letters. The first letter was addressed to “Domain Administrator, Nameview, Inc.”, and the second letter was addressed to “Domain Administrator, Hitfarm.com”, since there were indications that Hitfarm.com hosted or operated the website to which the Domain Name resolved. There was no response to these letters, and the registration of the Domain Name was renewed in 2006.
It appears that the Registrar forwarded the Complaint in this proceeding to the real party in interest, Vertical Axis, Inc., because that party filed a Response with the Center1. “NURSEFINDER.COM c/o Whois Identity Shield” is presumably nothing more than the fictitious name supplied by the Registrar as part of its private registration service; there is no evidence in the record of a legal entity by that name. The Response explains the parties and their relationships as follows:
“The registrant of the domain name <nursefinder.com> is Vertical Axis, Inc. Nameview, Inc. is the registrar of the domain name and Hitfarm.com is a domain name affiliate program that hosts the domain name.”
Thus, in this Decision the term “Respondent” will be used to refer to the Respondent VerticalAxis,Inc.
Based on the Response and factual determinations made in earlier UDRP proceedings, it appears that Vertical Axis, Inc. is a company currently based in the Republic of Korea that purchases expired domain names and uses them “to generate advertising revenue” by displaying pay-per-click advertising directory websites hosted by a third party. The Respondent states that it chooses only “generic” domain names that do not infringe trademarks.
In this case, at least, the hosting service is provided by Hitfarm.com. According to its website at “www.hitfarm.com”, Hitfarm.com prepares “custom designed landing pages with relevant, sponsored links intelligently placed by our industry-leading Proprietary Keyword System”. In an FAQ on its website, Hitfarm.com states that it provides such services for domain names that “generate a minimum of 5000 unique visitors per day”. Hitfarm.com summarizes the benefits of its service as follows: “If you have domains that you presently own but are not using, Hitfarm can park those domains for you. Parking your domains gives you the opportunity to earn revenue without committing any of your resources to them.” The Hitfarm.com FAQs refer to the following standards:
“What domain names are allowed in your program?
Any domain names that consist of generic keywords that do not infringe on trademarks are generally accepted. We also do not serve adult or gambling oriented domain names and such domains should be pointed elsewhere to those services that do cater to such domain name traffic.”
“Are mistypes or misspellings of domain names allowed?
Any mistypes or misspellings of domains names that are of allowed domain names are accepted.
Any domain names that are mistypes or misspellings of inappropriate domain names described below are not allowed in our program.”
It is undisputed that the Respondent parks the Domain Name with a third-party hosting service that automatically displays sponsored advertising links based on search engine results, and that the hosting service pays the Respondent a portion of the pay-per-click revenues received from advertisers. The Respondent chose to register the Domain Name and point it to the Hitfarm.com nameserver, but the Respondent does not directly control the automated display of sponsored advertising links on the website to which the Domain Name resolves.
5. Parties’ Contentions
The Complainant argues that the Domain Name is confusingly similar to its NURSEFINDERS mark and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant asserts that the registration and use of the Domain Name represent a bad-faith effort to mislead Internet users for commercial gain, trading on the Complainant’s “well-known”, registered marks. The Complainant contends that the Respondent had constructive and/or actual notice of the Complainant’s marks because they were registered and “widely” used and because the Respondent is a “sophisticated” entity that presumably performed a trademark search before registering the Domain Name. The Complainant argues that not conducting such a search would also amount to bad faith.
The Complainant finds further support for an inference of bad faith in the fact that the Respondent has engaged in a “pattern of appropriating well-known trademarks in confusingly similar domain names to generate commercial gain”, citing several UDRP decisions.
The Complainant’s supplemental filing contests the Respondent’s view that the registration of the NURSEFINDERS mark under section 2(f) of the United States Trademark Act should be taken as an admission of descriptiveness.
The Respondent argues that the Domain Name is descriptive, comprised of two common English words, and that “nurse finder” is a phrase used online by many third parties. The Respondent argues that the Complainant’s NURSEFINDERS mark is not inherently distinctive and that the Domain Name is neither identical nor confusingly similar to the mark.
The Respondent contends that it has a legitimate interest in using descriptive terms for relevant third-party advertising, where the Complainant does not have exclusive rights to use those terms.
The Respondent denies any prior knowledge of the Complainant’s mark. The Respondent claims that it registered the Domain Name simply because it was descriptive and the registration had expired. According to the Respondent, this suggested not only that the Domain Name was available, but also that any related trademark claims had been abandoned.
Finally, the Respondent seeks a declaration that the Complaint represents an attempt at Reverse Domain Name Hijacking.
The Respondent’s supplemental filing replies to the Complainant’s supplemental filing and reasserts the inherent descriptiveness of the Complainant’s NURSEFINDERS mark.
6. Discussion and Findings
Paragraph4(a) of the Policy provides that in order to divest the Respondent of the disputed Domain Name, the Complainant must demonstrate each of the following:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph15(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. Supplemental Filings
The Rules do not explicitly provide for supplemental filings in a Policy proceeding. Paragraph10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence”. Therefore, UDRP Panels are reluctant to encourage delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments.
The parties’ supplemental filings in this proceeding offer further argument on the issue of the descriptive nature of the Complainant’s NURSEFINDERS marks. Although these filings add little that is new to the initial pleadings, they have not delayed the proceedings. Accordingly, the Panel accepts the supplemental filings as part of the record in this proceeding.
B. Identical or Confusingly Similar
The Complainant indisputably holds the registered trademark NURSEFINDERS. TheDomain Name is identical to the Complainant’s mark except for the addition of the plural “s”.
The test for confusing similarity under the first UDRP element is simply an objective test, a comparison between the Domain Name and the Complainant’s trademark. Here, as in Referral Experts LLC v. Integrated Medical Solutions Corporation, WIPO Case No.D2007-0231, the textual differences between the Domain Name and the Complainant’s mark are slight; they are visually and phonetically similar, and their meaning in English is nearly identical.
The Panel finds, therefore, that the Complainant has established the first element of the Policy.
C. Rights or Legitimate Interests
The Policy, paragraph4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Complainant states that it never gave the Respondent permission to use the Complainant’s NURSEFINDERS mark in the Domain Name, and the Respondent does not challenge that statement.
Instead, the Respondent relies on paragraph4(c)(i) of the Policy, contending that it has a legitimate interest in using a domain name based on descriptive English words to display pay-per-click third-party advertising links. The Panel accepts that using a descriptive domain name to present sponsored advertising links may represent, in some cases, a “bona fide offering of goods and services”. The record includes evidence that the Respondent does in fact register numerous descriptive terms as domain names, and that it regularly parks them with a hosting service that shares pay-per-click advertising revenues. It appears that the hosting service generates links to advertising relevant to the descriptive words that comprise the Domain Name, and that the hosting service makes a policy of discouraging trademark infringement and avoiding advertising links to pornographic and gambling websites (which may be more likely to tarnish the reputation associated with a mark). These facts tend to support the “legitimacy” of the Respondent’s commercial practices relative to the Domain Name.
However, the Respondent’s use of the Domain Name would not be deemed to be in connection with a bona fide commercial offering if the evidence indicated that the Respondent selected generic words that were identical or confusingly similar to a trademark of which the Respondent was or should have been aware, with the likely effect of misleading Internet users as to the source of the website associated with the Domain Name. See, e.g., Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No.D2006-0964; The Landmark Group v. DigiMedia.com, L.P., NAF Claim No.FA0406000285459. Because that question goes to the heart of the Complainant’s bad-faith argument, it is addressed below in connection with the third UDRP element.
D. Registered and Used in Bad Faith
The Complainant asserts that this proceeding involves one of the instances of bad faith described (without limitation) in the Policy, paragraph4(b):
“(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.”
As there is no clear indication of the Respondent’s intent to trade on the reputation associated with the Complainant’s NURSEFINDERS mark (an intent that the Respondent expressly denies), the Complainant cites the theory of constructive notice, based on its United States trademark registration, and also asserts that the Respondent must have had actual notice of the mark because of its fame and because of the likelihood that the Respondent conducted a trademark search prior to registering the Domain Name. The Complainant argues further that it would be bad faith not to conduct such a trademark search. The Complainant also cites UDRP decisions finding that this Respondent acted in bad faith by registering domain names confusingly similar to established marks.
The Panel is unwilling to follow the Complainant in making such presumptions about the Respondent’s bad faith in this instance, however, because (a) the mark is not identical to the Domain Name, (b) the mark is inherently descriptive, being comprised of common English words, (c) the Respondent has a regular business practice of registering expired domain names that are based on descriptive words and phrases, and (d) the Complainant’s mark has demonstrably acquired a distinctive secondary meaning only in the United States where there Respondent is not located. Although a respondent’s location per se may be insufficient in an Internet context to shield it from a finding of bad faith (see ,e.g., Geopack v. Name Administration Inc. (BVI), WIPO Case No. D2006-1590), the facts in the present case support the credibility of the Respondent’s contention that it was not aware of the Complainant’s mark and did not register the Domain Name in an effort to trade on the Complainant’s reputation.
It is true that the Respondent’s credibility is not above doubt. The Respondent asserts that it registers only generic names that do not infringe trademarks, but earlier UDRP panels have ordered the Respondent to transfer domain names such as <mbnaaccess.com>, <harveys-tahoe.com>, and <pearljams.com>, finding that the Respondent more likely than not was aware that these domain names were confusingly similar to famous and distinctive marks. See, respectively, MBNA Bank America, N.A. v. Vertical Axis, Inc., NAF Claim No.FA133632; Harveys Casino Resorts v. Vertical Axis, Inc., NAF Claim No.FA117320; Pearl Jam v. Vertical Axis, Inc., NAF Claim No.FA593325. (Some of the decisions cited by the Complainant identify the Respondent at the same Korean address given in this proceeding, while earlier decisions list a Hong Kong address, but the Respondent does not deny that it was involved in the proceedings cited above.)
On the other hand, each case must be judged on its own merits, and UDRP panels have found in favor of the Respondent when it registered domain names based on generic words or short strings of letters. See, e.g., HSM Argentina S.A. v. Vertical Axis, Inc, WIPO Case No.D2007-0017; Jet Marques v. Vertical Axis, Inc, WIPO Case No.D2006-0250; Shoulderdoc Limited v. Vertical Axis, Inc, WIPO Case No.D2006-0625; Intune Media Group LLC v. Vertical Axis, Inc., NAF Claim No.FA385881; Aquascape Designs, Inc. v. Vertical Axis, Inc c/o Domain Adminstrator, NAF Claim No.629222; Vernons Pools Limited v. Vertical Axis, Inc, WIPO Case No.D2003-0041.
The Panel concludes that the circumstances in the present case are more similar to those in the latter decisions. There is simply insufficient evidence to warrant the Complainant’s conclusion that the Respondent is more probably than not equivocating when it declares its ignorance of a mark that is based on common English words and is used in commerce only in the United States. Moreover, the Panel does not find in the Policy a basis for articulating a general principle that a respondent with apparently clean hands must in all cases conduct a trademark search before registering a domain name comprised of dictionary words, in order to avoid an inference of bad faith.
The Panel concludes that the Complainant has not established the third Policy element.
E. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Paragraph15(e) of the Rules provides as follows:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
As the Rules do not provide for monetary remedies or specific relief in such a case, a finding of reverse domain name hijacking would be of limited value to the Respondent.
In any event, the Complainant holds registered marks that are nearly identical to the Domain Name and has used the NURSEFINDERS mark for more than thirty years. The Complaint was advanced with ultimately unpersuasive claims, but there is no indication that the Complaint was brought to harass the Respondent as a competitor. Moreover, this Respondent was found to have acted in bad faith in some of the earlier UDRP proceedings in which it was involved.
Thus, while the Complainant has failed to establish all of the elements of a Policy complaint, the Panel does not conclude that the Complainant initiated this proceeding in bad faith. The Panel therefore declines to characterize the Complaint as an instance of reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied, and the Respondent’s request for a declaration of Reverse Domain Name Hijacking is also denied.
W. Scott Blackmer
David E. Sorkin
P. Jay Hines
Dated: July 5,2007
1 The Panel further notes that the Complaint was notified to the authorized representative of the Respondent Vertical Axis, Inc, in accordance with an email request received by the Center from said representative on March 24, 2007.