The Complainant is Mobile Data Testing Services, Inc., d/b/a HealthTrac, Buffalo, New York, United States of America, represented by Algonquin Studios, United States of America.

The Respondent is Tim Synor, Sanborn, New York, United States of America, represented by Henry F. Wojtaszek, United States of America.

2. The Domain Names and Registrar

The disputed domain names <burgesshealth.com> and <healthtracinc.com> are registered with NameSecure.com (a VeriSign Co.).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2004. On October 29, 2004, the Center transmitted by email to NameSecure.com a request for registrar verification in connection with the domain names at issue. On October 29, 2004, NameSecure.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 10, 2004, asserting as a basis for the Complaint common law service mark rights in HEALTHTRAC and BURGESS HEALTH. The Center verified that the Complaint as so amended 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 “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2004. The Response was filed with the Center on December 9, 2004.

The Center appointed William R. Towns as the sole panelist in this matter on December 14, 2004. The Panel finds that it was properly constituted. 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, paragraph 7.

The Complainant originally was identified as HealthTrac, Inc. After receiving the case file, the Panel noted that the Complaint alleged that Mobile Diagnostic Testing Services, Inc. had common law rights in the service mark HEALTHTRAC, and that Burgess Health Associates LLC had common law rights in the service mark BURGESS HEALTH. The Complaint further indicated that both of these companies utilized the trade name “HealthTrac,” but the Panel could not ascertain from the pleadings the relationship between HealthTrac, Inc. and the two companies alleged to be doing business as “HealthTrac”, nor any basis upon which HealthTrac, Inc. asserted rights in the marks. Administrative Panel Order No. 1 was issued on December 20, 2004, requesting clarification on these points by the Complainant, and providing the Respondent with an opportunity to submit a reply if desired.

The Complainant submitted a supplemental statement, received by the Panel on December 27, 2004, indicating that HealthTrac, Inc. had been acquired by and merged into Mobile Diagnostic Testing Services, Inc. in 1995. No further explanation was provided. The Panel then issued Administrative Panel Order No. 2, requiring submission of documentary evidence regarding the ownership structure of the group of companies including HealthTrac, Inc., Mobile Diagnostic Testing Services, Inc., and Burgess Health Associates LLC, and identifying the individual or entity controlling these companies. The Panel further directed that the Complaint should be amended to reflect the controlling entity as the Complainant and to indicate the basis of this entity’s assertion of unregistered trademark rights. The Respondent was provided an opportunity to submit a reply.

On January 10, 2005, an Amended Complaint was received identifying Mobile Diagnostic Testing Services, Inc. as the Complainant. The Amended Complaint was accompanied by documentary evidence of the acquisition of HealthTrac, Inc. by Mobile Diagnostic Testing Services, Inc., the merger of HealthTrac, Inc. into Mobile Diagnostic Testing Services, Inc., and the acquisition of Burgess Health Associates, Inc. by Mobile Diagnostic Testing Services, Inc. Further documentary evidence was submitted regarding the registration of “HealthTrac” as an assumed business name by Mobile Diagnostic Testing Services, Inc. and Burgess Health Associates LLC, as well as the use of this trade name. The Respondent did not provide a reply.

The Panel finds that the Amended Complaint and supporting documentation satisfy the requirements of Administrative Panel Order No. 2. The Panel notes that the Respondent has not objected to the amendment of the Complaint, and has not filed a response to the complaint as amended, although afforded an opportunity to do so. In any event, the Panel notes that the Respondent’s positions, as reflected in the Response, are in no manner prejudiced by this amendment. Accordingly, the Panel will proceed to the merits of this dispute.

4. Factual Background

The Complainant is an independent diagnostic testing facility that supplies on-site diagnostic x-ray and ultrasound services in six states in the United States. In several states, Mobile Diagnostic Testing Services, Inc., the Complainant, operates under the trade name HealthTrac. In other states, the Complainant provides services as Burgess Health Associates, LLC, also using the trade name HealthTrac in one or more of these states. The record reflects that the Complainant has been using the trade names HealthTrac and Burgess Health Associates in connection with its business operations since the mid-1990s, corresponding to its acquisition of HealthTrac, Inc. and Burgess Health Associates, Inc.

The Respondent registered the disputed domain names <burgesshealth.com> and <healthtracinc.com> on January 13, 2000. Insofar as the record before this Panel reflects, the Respondent has made no use of the domain names since their registration, and had never offered to sell the domain names before discussions between the parties began sometime in 2004, regarding the transfer of the domain names to the Complainant. Although the parties dispute which of them initiated these conversations, it is clear from the record that the Complainant offered to compensate the Respondent for his domain name maintenance costs in consideration for the transfer of the domain names. It is also clear from the record that the Respondent ultimately declined to transfer the domain names to the Complainant, although the parties disagree on why this transaction was never consummated.

The Complainant’s and Respondent’s submissions provide little information regarding the relationship between the parties. According to the averments in the Complaint, the Respondent is a graphic designer who the Complainant at one time had hired to design marketing materials. The Complainant believes that the Respondent registered the disputed domain names thinking that he would be asked to develop a website for the Complainant. The Respondent offers no explanation as to how or why he came to register the domain names, but he does not dispute these allegations.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is certified by Medicare as an Independent Diagnostic Testing Facility and Portable X-ray Supplier, which provides on-site diagnostic x-rays and ultrasound services in six states. The Complainant has over 250 employees, is the second largest portable x-ray supplier in the United States, and performs 150,000 diagnostic tests annually, serving over 600 nursing homes, hospitals and physicians offices.

The Complainant acquired the company HealthTrac, Inc. in 1993, and has operated its business in New York, Pennsylvania and New Jersey since that time under the trade name HealthTrac. The Complainant asserts that both it and its predecessor in interest have continuously used HEALTHTRAC as an unregistered service mark since 1991. Since acquiring Burgess Health Associates, Inc. in 1994, the Complainant has done business under the trade name Burgess Health Associates in Connecticut, Massachusetts and Rhode Island. The Complainant asserts that it and its predecessor in interest have continuously utilized BURGESS HEALTH as an unregistered service mark since 1990. The Complainant has registered HealthTrac as an assumed business name in New York, Massachusetts and Rhode Island.

The Complainant alleges that the disputed domain names are identical or confusingly similar to these unregistered service marks in which the Complainant has common law rights. The Complainant had hired the Respondent as an independent contractor to design marketing materials, and maintains that the Respondent registered the domain names because he felt the next step of his work would be to develop the Complainant’s website. However, the Complainant never licensed the Respondent to use the HEALTHTRAC and BURGESS HEALTH names. Further, the Respondent has made no commercial or noncommercial use of the disputed domain names, and he has never been commonly known by the domain names. Accordingly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant further alleges that the Respondent registered and is using the disputed domain names in bad faith. According to the Complainant, the Respondent, after initially offering to transfer the disputed domain names to the Complainant for an amount representing his domain name maintenance costs over five years, $750.00, reneged on the agreement. Thereafter, the Respondent through his attorney attempted to negotiate with the Complainant the sale of the domain names for valuable consideration in excess of his reasonable out-of-pocket costs. Accordingly, the Complainant concludes that the Respondent registered the domain names primarily for the purpose of selling them to the Complainant for valuable consideration in excess of the stated out-of-pocket costs directly related to the domain names, which constitutes bad faith registration and use under the Policy.

In view of the foregoing, the Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondent denies any bad faith regarding his registration and use of the disputed domain names. First, he asserts that the Complainant is not the only company using “Health Trac” as a business name or trademark, and notes that the domain names <healthtrac.com> and <healthtrac-inc.com> have been registered by other entities. The Respondent concludes from this that the disputed domain names are not identical or confusingly similar to any mark in which the Complainant has rights.

The Respondent claims he is making a legitimate noncommercial or fair use of the domain names with no intent to misleadingly divert consumers or tarnish the marks at issue. He states that he did not register the domain names for the purpose of selling or transferring them for consideration in excess of his out-of-pocket costs directly related to the domain names, or to prevent the Complainant from reflecting its marks in corresponding domain names. He does not compete with the Complainant and did not register the domain names to disrupt the Complainant’s business, and he has not used the domain names to attract Internet users for commercial gain to any website by creating a likelihood of confusion with the Complainant’s marks.

The Respondent urges that he has never acted in bad faith in his dealings with the Complainant. According to the Respondent, he never solicited the Complainant or anyone else in an attempt to sell the domain names. It was the Complainant who approached him with an offer to purchase the domain names, and while the Respondent initially verbally accepted the Complainant’s monetary offer of $750.00, the Respondent did not believe the proposed agreement which the Complainant forwarded to him was fair, and the Complainant subsequently refused to negotiate with the Respondent’s attorney, instead resorting to threats and intimidation. The Respondent maintains that, while he never signed an agreement with the Complainant to sell the domain names, he never wrongfully refused to do so.

The Respondent concludes that it is the Complainant who has acted in bad faith by adopting tactics designed to intimidate, pressure and ruin the Respondent’s professional name, and that the Complaint should be denied.

6. Discussion and Findings

A. Scope of Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use.Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, Paragraphs 169 and 170. Rule 15(a) provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

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

(i) The domain name registered by the Respondent 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.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of Paragraph 4(a), a number of Panels have concluded that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <healthtracinc.com> is confusingly similar to HEALTHTRAC, and that the disputed domain name <burgesshealth.com> is identical or confusingly similar to BURGESS HEALTH. For purposes of paragraph 4(a)(i), a number of Panels have held that a domain name incorporating the complainant’s mark should be considered confusingly similar to the mark without regard to the inclusion of other terms in the domain name. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; Lockheed Martin Corporation v. Dan Parisi, WIPO Case No. D2000-1015; The Salvation Army v. Info-Bahn, Inc., WIPO Case No. D2001-0463.¹ In any event, the addition of the common abbreviation “inc” or the top level domain designation “.com” does nothing to dispel the confusing similarity of the disputed domain names with the corresponding marks.

The critical inquiry here, however, is whether the disputed domain names are identical or confusingly similar to any trademark or service mark in which the Complainant has rights. The Complainant has not registered HEALTHTRAC and BURGESS HEALTH as service marks, but it is well settled that the term “trademark or service mark” as used in paragraph 4(a)(i) encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.WIPO Case No. D2002-0005, The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.

Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). The extensive or continuous use of a designation in advertising may establish its significance as an identifier of the user’s goods or services, particularly where the designation is not merely descriptive of the goods or services. SeeRestatement (Third) of Unfair Competition § 18 (1995). Ultimately, common law rights in a trademark depend on the actual use of the mark in commerce sufficient to distinguish the trademark owners’ goods or services from those of its competitors. See T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372 (Fed.Cir. 1996).

Applying these legal principles to the circumstances of this case, the Panel concludes that the Complainant has established common law service mark rights in HEALTHTRAC and BURGESS HEALTH. The Panel’s conclusion is based on the Complainant’s continuous use of these symbols since the mid-1990’s in marketing its services to the public, coupled with evidence of the Complainant’s extensive sales and its competitive position in the market it serves. The Respondent’s choice of domain names corresponding to “HealthTrac” and “Burgess Health” for use in connection with a website he anticipated creating for the Complainant reinforces this conclusion.

Accordingly, the Panel finds for purposes of paragraph 4(a)(i) that the disputed domain names are identical, in the case of <burgesshealth.com>, or confusingly similar, in the case of <healthtracinc.com>, to common law service marks in which the Complainant has rights.

C. Rights or Legitimate Interests

The Complainant never licensed or otherwise authorized the Respondent to use HEALTHTRAC and BURGESS HEALTH or to register domain names reflecting these marks. Further, the record shows that the Respondent has never been commonly known by the domain names. Nor is there any indication of the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with any offering of goods or services before receiving notice of this dispute. Given the foregoing, the Panel finds that the Complainant has made a prima facie showing for purposes of paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain names. See, e.g.,Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Once a complainant makes a prima facie showing that a respondent lacks rights to the domain name at issue, the respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to Paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

Although the Respondent asserts that he is making a legitimate noncommercial or fair use of the domain names under paragraph 4(c)(iii), he merely tracks the language of the Policy. The Respondent offers no explanation of what this alleged noncommercial or fair use might be, nor any evidence of such use. It is a fair inference from the record that the Respondent was aware of the Complainant’s use of HEALTHTRAC and BURGESS HEALTH when he registered the disputed domain names, given that the Complainant had hired the Respondent to design marketing materials. Taken in a light most favorable to the Respondent, the record suggests that the Respondent registered the domain names in contemplation of using them to create a website for the Complainant, although that never occurred. But that could hardly be described as a noncommercial use of the domain names, any more than the Respondent’s passive holding of the domain names for the last five years could be so characterized.

The Respondent’s registration of the disputed domain names in connection with the creation of a website for the Complainant would not bestow upon the Respondent any rights or legitimate interests in the domain names. Assuming the domain names were registered for this purpose, the Respondent was acting for or on behalf of the Complainant, and had no legitimate rights or interests in the domain names. See Primedia Magazine Finance Inc. v. Next Level Productions, WIPO Case No. D2001-0616; NIKE Inc. v. Granger and Associates, WIPO No. D2000-0108.

This would be the case even had the Respondent registered the disputed domain names, reflecting the Complainant’s service marks, with the knowledge or consent of the Complainant. But as noted above, the Complainant never licensed or otherwise authorized the Respondent’s use of its service marks. Accordingly, the Panel finds that the Complainant has met its burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain names.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The examples provided in paragraph 4(b) of the Policy are not intended to be exhaustive of all circumstances evidencing bad faith registration and use of a domain name. Under certain circumstances, a respondent’s passive holding of a domain name can be indicative of bad faith. The leading decision in this area is Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Under the Telstra analysis, passive holding of a domain name can be considered as bad faith where it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would not be illegitimate.

The circumstances of this case reveal the Respondent’s passive holding of the disputed domain names for five years. There is no evidence of the Respondent’s use or demonstrable preparations to use the domain names, and under the circumstances of this case, the Panel can conceive of no plausible actual or contemplated active use of the disputed domain names by the Respondent that could be considered legitimate. At the time of registration, Respondent was clearly aware of the marks, and Complainant’s use of them, since he had worked for the Complainant. Further, the record reflects, and the Respondent acknowledges, that he refused to transfer the disputed domain names to the Complainant for an amount representing his out-of-pocket costs directly related to the domain names.

While the circumstances of this case are not identical to those in Telstra, supra, they are more than sufficient in this Panel’s judgment to establish the Respondent’s bad faith registration and use of the disputed domain names. Accordingly, the Panel finds that the Complainant has satisfied its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <burgesshealth.com> and <healthtracinc.com> be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: January 24, 2005

¹ The Panel notes that this approach is not the only one adopted in decisions under the Policy to determine when a domain name is “confusing similar” for purposes of paragraph 4(a)(i). Some Panels focus on whether an Internet user confronted with the disputed domain name would likely be confused as to the source or sponsorship of the website to which the domain name resolves or to the goods or services offered at that website. See , e.g., Red or Dead Limited v. Kid Pty Ltd (aka Kid Enterprises Pty Ltd) , WIPO Case No. D2000-0280 . This approach is of little utility in the present circumstances, however, since the domain names have not been associated with a website or with any offer of goods or services over the Internet.