heartstart.com

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Laerdal Medical Corporation vs. Locks Computer Supply

Case No. D2002-0063

The Complainant is Laerdal Medical Corporation, a corporation organized under the laws of the State of New York with its principle place of business in Wappingers Falls, New York 12590, United States of America (the "Complainant"). The Complainant is represented by Gary Kibel, Esq., Davis & Gilbert LLP, 1740 Broadway, New York, New York 10019, United States of America ("USA").

The Respondent is Locks Computer Supply, with a address at 329 Jericho Turnpike, Smithtown, New York 11787, USA (the "Respondent").

The domain name subject to this Complaint is <heartstart.com> (the "Disputed Domain Name"). The registrar of the Disputed Domain Name is Network Solutions, Inc., of Herndon, Virginia, USA (the "Registrar").

Complainant filed a complaint (the "Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by e-mail on January 23, 2002, and was assigned case number D2002-0063.

The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules"), and the WIPO Center Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), in accordance with Paragraph 4(a) of the Uniform Rules, and Paragraph 5 of the Supplemental Rules. The Administrative Panelist (the "Panel") is satisfied that the Complaint satisfied the Rules and Supplemental Rules.

A request for registrar verification was issued by the Center to the Registrar on January 28, 2002, and a response by the Registrar was received by the Center on January 30, 2002.

A Formal Notification of the Complaint and Commencement of the Administrative Proceeding (the "Commencement Notification") was communicated by the Center to the Registrar by email and the Respondent by courier and email on January 30, 2002. The Panel is satisfied that the delivery of the Commencement Notification is in conformity with the relevant requirements under Paragraph 2 and Paragraph 4 of the Uniform Rules and the relevant provisions of the Supplemental Rules.

On February 15, 2002, Respondent filed its Response to the Complaint by e-mail. In its Response, the Respondent elected to designate a single-member Administrative Panel in accordance with paragraph 3(b)(iv) of the Uniform Rules. The Center sent an Acknowledgment of Receipt of Response on February 19, 2002.

Based on a Statement of Acceptance and Declaration of Impartiality and Independence, duly signed by the Panel and dated March 22, 2002, the Panel was duly appointed by the Center on March 25, 2002. A Notification of Appointment of the Panel and Projected Decision Date was communicated by the Center to both Complainant and Respondent on March 25, 2002.

The Panel has not received any additional requests from Complainant or Respondent regarding further submissions, waivers, or extensions of deadlines. The Panel has not found it necessary to request any further information from the parties. The date scheduled for the issuance of the Panel’s decision was April 8, 2002, and was extended to April 15, 2002, by the Panel.

(i)The Complainant is Laerdal Medical Corporation. The Complainant provides products (including defibrillators), services, education and training in the fields of emergency medical services, pre-hospital emergency care, and basic and advanced life support training solutions.

(ii)The Complainant holds a United States Patent and Trademark Office ("USPTO") Registration in International Class 10 for HEARTSTART, U.S. Reg. 1,454,082 ("Trademark"), for defibrillators. (See Annex 3 of Complaint).

(i)The Respondent is Locks Computer Supply doing business under the assumed name of "Heart Start" since May 17, 2001. (See Annex 1 of Response). The Respondent sells the Heartstream FR2 automated external defibrillator ("AED").

(ii)Philips Medical is the supplier of AED’s to Respondent and is also the registered owner of two similar domain names with different extensions: http://www.heartstart.net and http://www.heartstart.info. (See Annex 2 and 3 of Response).

Complainant asserts:

(i)The Disputed Domain Name is identical and confusingly similar to Complainant's Trademark. Both contain an essential, unique, and unmistakable element: HEARTSTART. The second level domain name is identical to the Trademark.

Complainant states that it has continually used the Trademark publicly in connection with the sale of Complainant’s AED products since 1986. (See Annex 3, 6-8 of Complaint).

Complainant states that through fifteen and a half years of consistent and continuous advertising, marketing and extensive use, the Trademark has gained a secondary meaning and has come to be associated exclusively with Complainant’s AED product. Customers identify the mark HEARTSTART specifically with Complainant’s products and services. (See Annex 6-8 of Complaint).

(ii)Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Respondent has maintained the Disputed Domain Name website for less than one year and has never been commonly known by the Trademark. Telephone callers to the Respondent are greeted with the message "thank you for calling Heart 60."

Complainant states that Respondent’s use of the Disputed Domain Name is not a fair use. The Disputed Domain Name is used to intentionally deceive the potential consumers of Complainant and divert their Internet traffic to Respondent’s website, for Respondent’s own financial gain, at the expense of Complainant. Complainant asserts it has established a market and a reputation for itself, and Respondent is using bad faith business practices to take advantage of its hard-earned, and well-deserved, public trust. Complainant submits that Internet users are similarly harmed through Respondent’s misleading practices designed to piggyback on the good name and reputation of Complainant.

(iii)The Disputed Domain Name has been registered by Respondent in bad faith. The Respondent is a business competitor of Complainant’s, with respect to the sale of AEDs, and has access to Complainant’s product line, marketing practices, promotional themes, and catalogs. (See Annex 9 of Complaint). Further, Respondent is a member of the same cohesive business community as Complainant. Respondent is always keenly aware of Complainant’s products, services, and business activities, has easy access to Complainant’s complete product line and would find it unavoidable not to have notice of Complainant’s products, services, or business activities using the mark.

The Disputed Domain Name is being used by Respondent in bad faith. The Respondent is using the Disputed Domain Name to attract, for commercial gain, Internet users, including Complainant’s customers and potential customers, to Respondent’s website by creating a likelihood of confusion with Complainant’s Trademark. When an Internet user enters the address of the Disputed Domain Name, the first visual image they see is a product virtually identical to Complainant’s product, which is prominently displayed with Complainant’s Trademark. (See Annex 4-5 of Complaint). Once at the Respondent’s website, there is no indication to the Internet user that they have not reached Complainant’s product line or that they have been misleadingly diverted to a different website.

Complainant asserts that the use of the Disputed Domain Name in this fashion is clearly for the purpose of confusing Internet users, who may be searching for Complainant’s products, to falsely connote an affiliation or sponsorship between Respondent and Complainant or Complainant’s products, to divert traffic of unsuspecting Internet users and to dilute Complainant’s Trademark. This use is disruptive to Complainant’s business and is misdirecting Complainant’s potential customers to Respondent’s website for Respondent’s commercial gain. Complainant contends it is suffering a loss of potential business because Respondent is improperly diverting, deceiving and confusing Internet users. Internet users and Complainant are both adversely affected by Respondent’s bad faith use of the Disputed Domain Name.

Complainant states that Internet users tend to be highly skeptical about purchasing medical products over the Internet. Therefore, when such users see Complainant’s recognized Trademark used in connection with Respondent’s website, it falsely creates a sense of legitimacy and good will that in fact does not exist with Respondent.

The Complainant requests that the Administrative Panel issue a decision that the Disputed Domain Name be transferred to Complainant.

Respondent asserts:

(i)The Complainant’s trademark "Heartstart" is one word, not identical to the Respondent’s registered company name of "Heart Start" two words. Since the HEARTSTART.COM domain name cannot reflect the design elements of the Respondent’s logo and company name, it does not represent the Respondent’s use of the one word term "Heartstart."

Respondent states the Trademark has gained a secondary meaning. The meaning is associated with AEDs in general, and not the Complainant’s specific AED unit. The Respondent’s supplier of the Heartstream FR2 AED, Philips Medical, is the registered owner of two similar domain names with different extensions: HEARTSTART.NET and HEARTSTART.INFO. (See Annex 2 and 3).

(ii)Respondent states it has a legitimate interest in the Disputed Domain Name since it is almost identical to Respondent’s registered company name. Respondent submits its company name "Heart Start" is two words commonly used when referring to AEDs and its use of delivering measured electric shock to arrest fibrillation of the HEART and to START the HEART beating at a normal rhythm. A synonym for "Heart Start" is to "Jump Start" the heart. The Respondent contends it had no knowledge that the Disputed Domain Name was previously owned, registered, or being pursued by the Complainant, when it was acquired in May 2001 as the official website of the "Heart Start" company for the sole purpose of selling Heartstream FR2 AEDs. The Respondent claims it has displayed a bona fide use of the Heart Start company name in the jurisdiction where registered.

Respondent states that "Heart Start" and variations thereof have been commonly used throughout the fields of emergency medical products and services as a descriptive or generic term for defibrillation. Respondent refers to Annex 2-10 of the Response, which demonstrates the common use of the words "Heart Start" in domain names, company names, and project titles. Respondent submits the USPTO has issued the trademark "Heartstart" to the Complainant and it has issued the trademark "Heart Start" to Pacific Packaging Concepts. Though the trademarks are almost identical, the USPTO is able to distinguish the difference between a one word and two word term.

(iii)The Disputed Domain Name was not registered and is not being used in bad faith. The Respondent has not tried to suggest any sort of affiliation between the Disputed Domain Name and Complainant’s trademark and the Disputed Domain Name has never been advertised or marketed as being associated with the Complainant.

Respondent contends that if Internet users were searching terms identical or similar to Complainant’s trademark, they would be directed to a long list of websites in the emergency medical field, including the Complainant’s website but Respondent’s website address would not be seen among this list. Respondent claims its domain name is publicized to a specific target market and is in no way marketed to mislead consumers, as it is stated on the homepage of the Disputed Domain Name that the company is a distributor of AEDs. Respondent states that Heart Start appears as the company name of the website and has never been displayed to imply that Heart Start manufactures AEDs.

Respondent alleges that it is not a competitor of Complainant since the Complainant does not currently sell AEDs on their website. The AED that bears the Complainant’s trademark, cannot be ordered from their website. (See Annex 11 of Response). Respondent states any loss of potential business is due directly to the poor structure of the Complainant’s website, and has nothing to do with the advertising or marketing of the Disputed Domain Name.

Respondent submits that research has confirmed that Complainant has severed its relationship with two AED manufactures and Respondent has received confirmations that Complainant is no longer distributing the Heartstart FR2. Respondent alleges that it is general knowledge in this field that paid consultants advised Complainants to leave this low profit margin AED-defibrillator industry and the Complainant followed the consultant’s recommendation and departed the industry on January 1, 2002.

Respondent asserts that its supplier of the Heartstream FR2 AED, Philips Medical, is the registered owner of two similar domain names with different extensions: http://www.heartstart.net and http://www.heartstart.info. (See Annex 2 and 3 of Response).

Respondent concludes that it is not duplicating the Trademark in which the Complainant has rights, it has legitimate interests in respect of the Disputed Domain Name, and the Disputed Domain Name was registered and is being used in good faith.

Paragraph 4(a)(i) of the Uniform Policy asks whether the Disputed Domain Name is identical or confusingly similar to the Trademark in which Complainant has rights.

The Disputed Domain Name fully incorporates Complainant’s trademark. The addition of the gTLD <.com> is irrelevant for purposes of evaluating the similarities between the trademark and the domain name in this instance. The use of one word or two words in a trademark or a domain name is also irrelevant as long as the two words forming the one word are the same. The USPTO did not draw a distinction between the trademark cited by Respondent and the Complainant’s trademark because one trademark used two words and the other only used one, as suggested by Respondent. The USPTO approved the registration of the other trademark because it was used in a completely different class of goods from Complainant’s trademark. Complainant has rights in the trademark in the United States for defibrillators dating as far back as 1986, and has possessed a registered trademark since 1987. Complainant clearly has rights to the HEARTSTART trademark.

The Respondent argues that "Heart Start" and variations thereof have been commonly used throughout the fields of emergency medical products and services as a generic term for defibrillation. Respondent argues that this proves that the HEARTSTART trademark has gained a secondary meaning. Rather than arguing that Complainant’s mark has acquired "secondary meaning," which would actually benefit the Complainant, the Panel assumes the Respondent really intended to argue that the HEARTSTART trademark has become generic. A generic mark is not capable of identifying the single source of a good or service and can therefore no longer be protected as a trademark. While this would be a good argument on Respondent’s part, were the facts there to support it, Respondent has failed to provide sufficient evidence to support a finding that Complainant’s mark has become generic. Complainant’s trademark, with the filing of Section 8 and 15 affidavits, has become incontestable and is presumed valid. This creates a higher burden for Respondent’s evidence of genericness to overcome. While Respondent has provided examples of "heart" and "start" being used in a variety of ways, there is no evidence that the terms "heartstart" or "heart start" have become synonymous to the term "defibrillators," which is required for a finding of genericness. Although the Panel has considered Respondent’s claim that the HEARTSTART trademark is generic for defibrillator and therefore not a trademark of Complainant, Respondent has not prevailed on this point.

The Complainant has shown that is has rights in the HEARTSTART trademark and that the Disputed Domain Name is identical to the Trademark. The Panel therefore finds that the Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.

(ii)Respondent has no rights or legitimate interests in respect of the Disputed DomainName.

Paragraph 4(a)(ii) of the Uniform Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the domain name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.

Complainant contends that through fifteen and a half years of continuous and extensive use of its Trademark, Complainant has established a market and reputation for itself. By using Complainant’s trademark as a domain name associated with a web site that sells defibrillators, Respondent is using bad faith business practices to take advantage of Complainant’s hard-earned public trust. Complainant alleges that Internet users are similarly harmed through Respondent’s misleading practices designed to piggyback on the good name and reputation of Complainant.

Respondent is using Complainant’s trademark as a domain name to attract customers for its competing defibrillator product. This would normally constitute infringement of Complainant’s trademark and therefore cannot be considered a bona fide use. Respondent’s assertion, that its grant of a DBA in New York is evidence of its legitimate business objective, is without merit. Most states, including New York, do not perform trademark clearance searches before granting a DBA request. The DBA laws in most states are designed to protect consumers from deceptive business practices. The granting of a DBA request is not an authorization to use the DBA under the trademark laws. Respondent’s use is clearly commercial and cannot be said to constitute a fair use.

Under the facts as presented in this case, and in accordance with the Uniform Policy paragraph 4(a)(ii) as stated above, Respondent does not have any rights or legitimate interest in the Disputed Domain Name. Therefore, the Panel finds that Complainant has satisfied the requirements of Paragraph 4(a)(ii) and (c).

The Panel finds that the Respondent has registered the Disputed Domain Name with the primary purpose of diverting Complainant’s potential customers to Respondent’s web site, thereby disrupting the business of its competitor, the Complainant. The Respondent registered the Disputed Domain Name on May 30, 2001, long after the Complainant established its trademark rights in the trademark HEARTSTART. Respondent is considered to have been on notice of Complainant’s rights by virtue of Complainant’s federally registered trademark. Hence, Respondent did not need to know that Complainant had a trademark that was the same as the Disputed Domain Name. The Panel finds Respondent’s assertion of ignorance difficult to believe, especially given the fact that both parties are active competitors for the same products.

The close resemblance of Respondent’s business to Complainant’s business increases the likelihood that the Respondent will divert the Complainant's clients. (See Christie's Inc. v. Tiffany's Jewelry Auction, Inc., WIPO Case No. D2001-0075, March 6, 2001), and FaceTime Communications, Inc. v. Live Person, Inc., NAF Case No. FA0001000092048, February 18, 2000).

The Panel also finds that Respondent has intentionally used the domain name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion between the Disputed Domain Name and Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name. It is obvious to the Panel that the Respondent believes the mark HEARTSTART has goodwill and that the Respondent intends to exploit this goodwill by attracting potential customers to its web site to buy defibrillators. The Panel finds unconvincing, Respondent’s submissions that Complainant is no longer in the field of selling defibrillators, since a cursory review of Complainant’s web site reveals that Complainant is still marketing defibrillators on its site. Respondent further asserts that Complainant’s failure to actually sell the defibrillators from its web site is indicative of its change in business strategy and Complainant’s intention to leave the defibrillator business. Again, a review of Complainant’s site indicates that Complainant, , along with other companies marketing defibrillators, such as Philips Medical Systems, Respondent’s supplier, are prohibited from selling such devices to retail customers in the United States without a prescription. Whether this is an actual restriction within the United States is unknown to the Panel, but it makes little sense for Complainant and other companies to market, but not sell defibrillators on their sites if otherwise legally permitted to do so.

The Panel notes Respondent’s awareness that Philips Medical Systems has also registered domain names encompassing Complainant’s trademark. Why Complainant has not done anything about the use of these domain names is a good question, but not dispositive to its case against Respondent. Respondent is on notice of Complainant’s trademark rights by virtue of the trademark registration and clearly knew of Complainant as they are in the same line of work.

Therefore, the Panel finds that the Complainant has established that the Respondent registered and is using the Disputed Domain Name in bad faith, pursuant the Policy.

In light of the foregoing, the Panel has decided that the Disputed Domain Name registered by Respondent is identical to the Trademark of Complainant, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that Respondent’s Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the Panel concludes that the Disputed Domain Name should be transferred to the Complainant.