DECISION

Advanced HR Solutions, Ltd. v. Pulse Healthcare Staffing

Claim Number: FA0401000230257

PARTIES

Complainant is Advanced HR Solutions, Ltd. (“Complainant”) represented by Jill McWhirter, of Howrey Simon Arnold & White, LLP, 750 Bering Drive, Houston, TX 77057.  Respondent is Pulse Healthcare Staffing (“Respondent”) represented by Mark R. Leonard, of Davis & Leonard, LLP, 451 Arden Way, Sacramento, CA 95815.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pulsestaff.com>, registered with Network Solutions, Inc.

PANEL

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

Bruce E. Meyerson as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 20, 2004; the Forum received a hard copy of the Complaint on January 21, 2004.

On January 23, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <pulsestaff.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 January 29, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 18, 2004 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@pulsestaff.com by e-mail.

A timely Response was received and determined to be complete on February 19, 2004.

A timely Additional Submission was received from Complainant and determined to be complete on February 23, 2004.  A timely Additional Submission was received from Respondent and determined to be complete on February 27, 2004.

On March 1, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant (Including Additional Submission)

Complainant, Advanced HR Solutions, Ltd. (“Complainant”), is engaged in hiring, recruiting, placement, staffing, outsourcing and career network services.  Complainant’s services are advertised and provided throughout the United States.

Complainant claims to have continuously used the mark PULSE STAFFING in commerce in connection with its medical staffing business, and claims to have prominently and extensively used, promoted, and advertised its mark. 

Complainant contends that it owns all rights in and to the common law and registered trademark PULSE STAFFING, which has a U.S. registration number 2,727,257.  Additionally, Complainant asserts that it uses the mark PULSE STAFFING as its trade name and thus, it contends that it is known to the public as PULSE STAFFING. 

Complainant contends that the domain name registered by Respondent, <pulsestaff.com>, is confusingly similar to the PULSE STAFFING mark.  Complainant contends that Respondent is using the domain name, <pulsestaff.com>, to directly compete for employment services in the healthcare industry.  According to Complainant, both parties advertise in the same trade journals and the ads run side-by-side. Complainant asserts that Respondent’s use has led to actual confusion on the part of the public as to the source or origin of the services, and it has lead to the mistaken belief that Respondent’s services are affiliated with, endorsed by, or sponsored by Complainant. 

Complainant contends that Respondent registered the domain name <pulsestaff.com> long after Complainant’s adoption and use of the PULSE STAFFING mark and trade name and long after Complainant’s registration of the domain name at issue in this proceeding. 

Complainant questions why Respondent registered the domain name <pulsestaff.com>when it does business as Pulse Healthcare Staffing.  Complainant also questions Respondent’s assertion that it was unaware of Complainant’s name when it chose its domain name.  Furthermore, Complainant observes that after Respondent received Complainant’s demand letter Respondent registered two domain names: <pulsehealthcare.com> and <pulsehealthcarestaffing.com>.

B. Respondent (Including Additional Submissions)

Respondent, Pulse Healthcare Staffing (“Respondent”), began providing its employment services in July 2001.  Its business consists of locating and placing critical care nurses primarily in three states.  Respondent claims that when it established its business and registered the disputed domain name it conducted an investigation and found no name comparable to the name it chose.  Thus, Respondent contends that before it received any notice of this dispute it registered the domain name in connection with a bona fide offering of goods or services.

Respondent denies Complainant’s allegation that Complainant continuously used the mark PULSE STAFFING in commerce.  Respondent further denies the allegation that its domain name and Complainant’s mark are confusingly similar.  Moreover, Respondent contends that the two businesses do not compete.  Respondent denies that there has been any actual confusion as a result of the use of its domain name.  Furthermore, Respondent denies that it has acted in bad faith. 

Respondent asserts that it chose the disputed domain name because it would be easier for potential customers to remember, and that it chose the additional names to ensure that potential customers who misspelled the correct name would still arrive at its website.

FINDINGS

Complainant is engaged in hiring, recruiting, placement, staffing, outsourcing and career network services.  Through a predecessor company, Complainant began using the words PULSE STAFFING as a trade name and in 2003 the words were registered as a service mark with the United States Patent and Trademark Office. 

Respondent began providing its employment services in July 2001.  Its business consists of locating and placing critical care nurses primarily in three states.  Respondent registered its domain name before Complainant obtained trademark or service mark rights in the words PULSE STAFFING.

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 to a Trademark or Service Mark in Which the Complainant Has Rights

The record indicates that Complainant, through a predecessor entity, began using PULSE STAFFING as a trade name in 1988.  It was not until 2003, however, that PULSE STAFFING was registered as a service mark with the United States Patent and Trademark Office (the “PTO”).  Two years before, Respondent registered the disputed domain name.  Thus, the question raised in this dispute is whether Complainant’s use of the trade name PULSE STAFFING, which predated the registration of the domain name in dispute, creates sufficient “rights” in a “trademark or service mark” within the meaning of the Policy.

A complaining party can establish that it has rights in a trademark or service mark by establishing that an entity such as the PTO has approved its mark, or, alternatively, that it has established rights as a common law mark. Ordinarily, to satisfy the requirements of Policy ¶ 4(a)(i), the complaining party must have trademark or service mark rights before the domain name in dispute was registered. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (under ICANN rules, a trademark must predate the domain name). On this record, Complainant has demonstrated neither registered trademark or service mark rights that predate Respondent’s domain name registration.

Alternatively, to establish common law rights, a complainant must show that the mark has acquired distinctiveness when associated with complainant’s goods or services. The record does not demonstrate that Complainant had established such distinctiveness prior to Respondent’s domain name registration.  Although the record does support Complainant’s assertion that it has been known by the words PULSE STAFFING, this merely supports a finding that the term was used as a trade name, but not that is was used as a trademark or service mark.

There is a distinction in the law between a trademark and trade name.  The Policy does not extend to the protection of trade names in which trademark or service mark rights have not been established.  E.g., Bus. Architecture Group, Inc. v. Reflex Publ’g, FA 97051 (Nat. Arb. Forum June 5, 2001); see also Baltimore Gas & Elec. Co. v. Nat’l Material Supply Co., LLC, D2001-0315 (WIPO May 17, 2001); see also Canadian Tire Corp. Ltd. v. McFadden, D2001-0383 (WIPO May 24, 2001). 

Because the record reflects that Complainant used PULSE STAFFING as a trade name, and has not established the requisite common law or trademark rights in the words PULSE STAFFING, Complainant cannot successfully prevail in its claim.

DECISION

Accordingly, the Panel concludes that relief shall be DENIED.

Bruce E. Meyerson, Panelist
Dated: March 15, 2004

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