Thewoodlandsdermatology.com

The timeline behind thewoodlandsdermatology.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION The Woodlands Dermatology Associates, P.A. v. Anthony Perri Claim Number: FA1110001410742 PARTIES Complainant is The Woodlands Dermatology Associates, P.A. (“Complainant”), represented by Mary J. Gaskin of Annelin and Gaskin, Texas, USA. Respondent is Anthony Perri (“Respondent”), represented by Albert A. Carrion of Brown McCarroll, L.L.P., Texas, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <thewoodlandsdermatology.com>, registered with GoDaddy.com, 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. David A. Einhorn appointed as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2011; the National Arbitration Forum received payment on October 7, 2011. On October 10, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <thewoodlandsdermatology.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On October 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@thewoodlandsdermatology.com. Also on October 14, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts. A timely Response was received and determined to be complete on November 1, 2011. A timely Additional Submission was received from Complainant on November 4, 2011 and determined to be compliant on November 7, 2011. A timely Additional Submission was received from Respondent on November 9, 2011 and determined to be compliant on November 10, 2011. On November 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant [a] Complainant owns the trade name “The Woodland Dermatology Associates, P.A.” Complainant also owns the domain name <woodlandsdermatology.com>. [b] Respondent’s registered domain name <thewoodlandsdermatology.com> is confusingly similar to Complainant’s trade name and domain name. [c] Respondent has no right or legitimate interest in the domain name <thewoodlandsdermatology.com>. [d] Respondent has registered and is using this domain name in bad faith. B. Respondent The existence of a trade name does not provide Complainant with any rights under the Policy. C. Additional Submissions In its Additional Submission, Complainant contends that its trade name rights are established under Texas common law. In Respondent’s Additional Submission, Respondent states that the Texas Secretary of State’s acceptance of Complainant’s change of corporate name to The Woodlands Dermatology Associates, P.A. did not grant Complainant any trademark rights to that name. FINDINGS AND DISCUSSION Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) 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. The use of the trade name “The Woodlands Dermatology Associates, P.A.” by Complainant is insufficient to establish rights under ¶ 4(a)(i) of the Policy. See, Diversified Mortgage, Inc. v. World Financial Partners, FA 118308 (Nat. Arb. Forum Oct. 30, 2002)(finding that the Policy makes clear that its rules are intended only to protect trademarks, and not mere trade names). The Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to “a trademark or service mark in which the Complainant has rights”. Policy ¶ 4(a)(i). Here, Complainant has made no claim that it holds any trademark or service mark rights in the term “The Woodlands Dermatology Associates, P.A.”. Nor does Complainant’s domain name constitute such a trademark or service mark. This finding does not necessarily mean that Complainant is without a legal remedy with respect to its trade name under Texas state law. However, this Panel has no authority to apply any such Texas cause of action, since it is a specialized tribunal drawing its authority in this proceeding from ICANN’s Uniform Domain Name Dispute Resolution Policy. Because this Panel has determined that Complainant has not satisfied Policy ¶ 4(a)(i), there is no need for this Panel to determine whether Respondent has rights or legitimate interests in the domain name or whether Registrant registered or used the domain name in bad faith. DECISION Having failed to establish a necessary element under the ICANN Policy, the Panel concludes that the requested relief shall be DENIED. Accordingly, it is Ordered that the <thewoodlandsdermatology.com> domain name NOT be transferred from Respondent to Complainant. David A. Einhorn, Panelist Dated: November 28, 2011 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.