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Dynamic Physical Therapy and Rehabilitation Center [2001] GENDND 515 (13 March 2001)


National Arbitration Forum

DECISION

Dynamic Physical Therapy and Rehabilitation Center

of Bear Inc. v. Pro Physical Therapy

Claim Number: FA0101000096550

PARTIES

The Complainant is Dynamic Physical Therapy and Rehabilitation Center of Bear Inc., Bear, DE, USA ("Complainant") represented by Rosanna L. Suriano, of White and Williams, LLP. The Respondent is Pro Physical Therapy, Wilmington, DE, USA ("Respondent") represented by Gretchen A. Bender, of Morris, James, Hitchens & Williams LLP.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is "dynamicphysicaltherapy.com", registered with Network Solutions.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge and has no known conflict in serving as a panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 25, 2001; the Forum received a hard copy of the Complaint on January 25, 2001.

On February 1, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "dynamicphysicaltherapy.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that the Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 21, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@dynamicphysicaltherapy.com by e-mail.

A timely response was received and determined to be complete on February 21, 2001.

On February 28, 2001, pursuant to the Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that (1) the domain name "dynamicphysicaltherapy.com" is identical to its mark DYNAMIC PHYSICAL THERAPY AND AQUATIC REHABILITATION CENTERS; (2) the Respondent has no rights or legitimate interests in the domain name; and (3) the Respondent has registered and used the domain name in bad faith.

B. Respondent

The Respondent contends (1) that it does not use the domain name and will not use the domain name in the future, and (2) that transfer of the domain name should be denied because of a pending federal lawsuit initiated by the Complainant shortly after beginning the ICANN proceeding or in the alternative, that this proceeding should be stayed because the same issues are being litigated in federal court.

FINDINGS

    1. The Complainant’s marks DYNAMIC PHYSICAL THERAPY AND ACQUATIC REHABILITATION CENTERS and DYNAMIC represent the services of physical therapy, occupational therapy, speech therapy and neuropyschology and is also used on a variety goods prescription pads, as well as mugs and T-shirts as marketing materials. In addition, the Complainant contemplates using the mark on a web site for DYNAMIC PHYSICAL THERAPY AND ACQUATIC REHABILITATION CENTERS currently in development.

    2. The Complainant has been using DYNAMIC PHYSICAL THERAPY AND ACQUATIC REHABILITATION CENTERS since 1995 to represent its services in the Physical Therapy field. The Complainant has filed for trademark protection with the United States Patent and Trademark Office for protection of the mark.

    3. On January 5, 1999, the Respondent Dynamic Physical Therapy registered the domain name "dynamicpt.com."

    4. On August 13, 1999, the Respondent registered the domain name "dynamicphysicaltherapy.com." The Respondent did not advertise or publicize this domain name.

    5. On December18, 2000, the Complainant discovered that when typing the domain name "dynamicphysicaltherapy.com" on the Internet, the site which appeared was that of the respondent, Pro Physical Therapy. The mark at use throughout the Respondent’s web site was PRO PHYSICAL THERAPY. The screen that appeared until on or about January 18, 2001 was the PROPHYSICALTHERAPY web site. The word DYNAMIC was not mentioned on the Respondent’s web site.

    6. On January 11, 2001, the Complainant mailed a letter to the Respondent requesting that the Respondent transfer the domain name "dynamicphysicaltherapy.com" to the Complainant. Despite the letter’s date of January 5, 2001, the letter was not mailed to the Respondent until January 11, 2001.

    7. On January 23, 2001, the Complainant filed the instant action in the National Arbitration Forum. On the same day, the Complainant filed an electronic application with the Patent and Trademark Office for a federal registration of the words "Dynamic Physical Therapy & Aquatic Rehabilitation Centers".

    8. On January 26, 2001, three days after filing the instant arbitration proceeding, the Complainant filed an action in the United States District Court for the District of Delaware entitled Dynamic Physical Therapy and Rehabilitation of Bear, Inc. v. Pro Physical Therapy, Inc. C.A. No. 01-52. The Complainant did not notify the Forum of the federal action until February 7, 2001. In its federal court complaint, among other things, the Complainant seeks an order requiring the Respondent to transfer the domain name to the Complainant. In addition, the Complainant claims that the Respondent acted in "bad faith" and requests an award of punitive damages and attorneys’ fees.

    9. Without admitting any liability and/or waiving defenses, on or before January 29, 2001, the Respondent instructed its web service to prevent the subject domain name from connecting to any web site. These instructions have been implemented. Counsel for both parties have represented to the federal court in Delaware that the Respondent does not use the subject name. Thus, as of approximately February 1, 2001, the domain name does not connect to any web site.

    10. In addition, during this same time, the Respondent requested that the domain name be returned to the general public. The Complainant, through counsel, objected to this action. As such, the Respondent has not finally authorized the return of the subject domain name to the general public.

    11. On or about February 7, 2001, the Chief Judge of the Delaware District Court rejected the Complainant’s request for a temporary restraining order. Later that day, the Complainant advised the Forum of the federal court litigation.

DISCUSSION

REQUEST FOR STAY

The Respondent requests that transfer of the domain name be denied or the ICANN proceedings be stayed pending resolution of the Complainant’s federal court action. Normally, a stay of the ICANN proceedings would be appropriate as the federal court is the more appropriate forum to litigate all the issues between the parties. However, since the Respondent, in both the ICANN and federal proceedings, has stated its intention to abandon the domain name to the general public, it is appropriate for the Panel to proceed to a decision. ICANN Rule 18(a).

    1. ELEMENTS

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Complainant has a pending trademark application for its common law mark DYNAMIC PHYSICAL THERAPY & REHABILITATION CENTERS. Pending trademark applications can establish rights in a mark. See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the Policy "does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names" and applying the Policy to "unregistered trademarks and service marks"); Seek America Networks Inc. v. Tariq Masood and Solo Signs, D2000-0131 (WIPO April 13, 2000) (concluding that rights in a mark can be established by pending trademark applications). The Respondent’s domain name "dynamicphysicaltherapy.com" is confusingly similar to the Complainant’s pending mark because the domain name is alike in sound, sight and meaning (or commercial impression). See Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the Complainant’s "Wellness International Network"); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the Complainant’s "Asprey & Garrard" and "Miss Asprey" marks).

Rights or Legitimate Interests

The Respondent has admitted its intention to abandon the domain name both before the Forum and in the United States District Court of the District of Delaware. Accordingly, the Respondent has no rights or legitimate interests in respect to the domain name.

Registration and Use in Bad Faith

In analyzing the totality of circumstances, it is evident that the Respondent registered and is using the domain names in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the "totality of circumstances").

The Respondent is aware of the Complainant in the marketplace. Their phone book advertisements are side by side. They are in the exact same geographic area of Delaware and Pennsylvania. The Respondent does not use DYNAMICPHYSICALTHERAPY in its phone book advertisement or on its web site. This domain name is similar to its competitor’s common-law mark. Therefore, the Respondent registered the domain name to intentionally attract, for commercial gain, Internet users to its web site, or other online location, by creating a likelihood of confusion with Complainant’s well-established mark as to the source, sponsorship, affiliation and endorsement of Respondent’s web site. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a web site that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s marks).

The Respondent no longer actually uses the domain name and has announced its intention to abandon the domain name; however, the Respondent refuses to transfer the name to the Complainant. The parties have stipulated in the federal action that the Respondent does not use the domain name. However, the passive holding of a domain name can constitute use in bad faith where the registration deprives one with rights in the domain name use of the domain name. Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). The refusal to transfer a domain name while at the same time acknowledging no rights or legitimate interests in the domain name is use in bad faith. Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO March 3, 2000).

The Respondent registered and uses the domain name in bad faith.

DECISION

Based upon the above findings and conclusions, I find in favor of the Complainant.

Therefore, the relief requested by the Complainant pursuant to Paragraph 4.i of the Policy is Granted. The Respondent shall be required to transfer to the Complainant the domain name "dynamicphysicaltherapy.com".

Honorable Charles K. McCotter, Jr.

Dated: March 13, 2001

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