DECISION

TriHealth, Inc. v. Brad McNulty

Claim Number: FA0307000169054

PARTIES

Complainant is TriHealth, Inc., Cincinnati, OH (“Complainant”) represented by Susan D. Rector of Schottenstein, Zox, & Dunn Co., L.P.A. Respondent is Brad McNulty, Covington, GA (“Respondent”) represented by Mark P. Groves of Groves Counsel, P.A.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <trihealth.net> registered with Register.com.

PANEL

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

R. Glen Ayers served as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 15, 2003; the Forum received a hard copy of the Complaint on July 17, 2003.

On July 15, 2003, Register.com confirmed by e-mail to the Forum that the domain name <trihealth.net> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 July 22, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 11, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@trihealth.net by e-mail.

A timely Response was received and determined to be complete on August 11, 2003.

On August 20, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed R. Glen Ayers as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it has registered TriHealth as 3 separate marks with the U.S. Patent and Trademark Office.  Complainant alleges that Respondent’s domain name, <trihealth.net>, is identical to the registered mark.

Complainant states that it has spent significant sums promoting the TriHealth mark to create public recognition “in and outside of the tri-state area of Ohio, Indiana and Kentucky....”

Complainant goes on to state that Respondent has no rights or legitimate interest in the domain name.  Complainant asserts that Respondent originally held a domain name known as <mcnultychiropractic.com>.  Complainant asserts that, when it learned that Respondent was in the process of changing its name to TRI-Health Wellness Centers of America, it contacted Respondent.  There were settlement discussions, but Complainant states that the settlement discussions were never consummated.  Under those settlement discussions, Respondent created an “interim web page” at <trihealth.net>, and then transferred the website to the domain name  <truheath.us>.  The Complainant states that it finds the interim page objectionable because it is unprofessional and because it contains advertising.  Complainant goes on to point out that Respondent had not acquired a service mark or had been commonly known by the domain name <trihealth.net> and that Respondent was not making any non-commercial use or fair use of the domain name.

As to bad faith, Complainant states that Respondent has intentionally attempted to attract, for commercial gain, internet users.

B. Respondent

Respondent contends that it thought that it had settled this matter with Complainant.  Respondent also contends that it also operates a small chiropractic clinic in Georgia and that it was not aware of the Cincinnati Trihealth service or trade marks at the time it registered its domain name.

After attempting to settle, Complainant has withdrawn the settlement.  Respondent contends that the Respondent fails on the first prong of the ICANN test because the use of “trihealth” cannot be exclusive.  Respondent contends that it had rights in the name because of its first use of the “.net” domain.

Finally, Respondent contends that it did not behave in bad faith.  Respondent contends that its practice is limited to central Georgia and has nothing to do with the tri-state area around Cincinnati, Ohio and that there could be no “likelihood of confusion.”

Further, Respondent asserts that the exchange of e-mails would strongly indicate that Respondent behaved in an appropriate manner to settle this issue.

FINDINGS

It is without question that the trademark and domain name are identical.  It is not necessary, however to consider Respondent’s issues of use or rights in the name. 

Whether Respondent made use of the domain name prior to learning of the existence of the trademark is ultimately irrelevant to resolution of this case.

The first two (2) issues are irrelevant because there is absolutely no bad faith here.  Complainant has overreached.  It is really quite impossible to find that there can be any bad faith involved here.  Respondent is a chiropractor in Central Georgia.  This chiropractor does not compete in any way, or injure in any way, the business of Complainant, which is located in the Cincinnati, Ohio area.  It is impossible for any thinking person to confuse a chiropractor in Central Georgia with a large medical center in the Cincinnati area.

Further, it would appear from the exchange of correspondence and e-mail, that Respondent had taken all necessary steps to compromise and settle this matter.

DISCUSSION

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 mark and domain name are identical.

Rights or Legitimate Interests

Respondent probably had no rights or legitimate interest in the domain name. 

Registration and Use in Bad Faith

However, there was certainly no registration or use in bad faith.  Not one of the elements suggested in the ICANN Policy or Rules for the determination of bad faith is present.  Complainant is overreaching.  It is clear from the correspondence that this matter was and should have been settled amicably between the parties.  However, this Panelist has no authority to enforce a settlement agreement.  Complainant having failed to establish all three (3) elements required under the ICANN  Policy, the Panelist concludes that the relief must and shall be denied.

DECISION

Complainant having failed to establish all three elements required under the ICANN Policy, the Panelist concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <trihealth.net> domain name SHALL NOT BE TRANSFERRED from Respondent to Complainant.

R. Glen Ayers, Panelist

Dated: September 3, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/890.html