The domain Painless.com was registered in 1996, at the dawn of the commercial internet.
Along came Benco Dental Supply Co., a medical supply company, with a registered mark for PAINLESS from 1997; they sought to get the domain via the UDRP process 27 years later. They operate painless.benco.com to demonstrate use of the PAINLESS mark.
The Complainant claimed first use of the mark in 1994. The Forum (NAF) panelist disputed the Complainant’s claims that the PAINLESS mark was well known at the time that Painless.com was registered:
“However, Complainant’s evidence consists of copies of its USPTO trademark registration certificates and a single screenshot of its own https://painless.benco.com website. While these submissions may serve as evidence that trademark rights exist, they do not speak to the reputation or scope of Complainant’s mark in the minds of consumers, particularly in 1996 when Respondent registered the disputed domain name. Policy ¶ 4(a)(iii) is stated in the conjunctive (“registered and is being used in bad faith” – emphasis added) and the Panel finds that there is insufficient evidence upon which to conclude that Complainant’s mark was highly distinctive or well-known, or that Respondent knew of or specifically targeted the mark in 1996. Thus, the Panel finds, by a preponderance of evidence, that the disputed domain name was not registered in bad faith.”
Final decision: Deny transfer of the domain name Painless.com. It could have been a case of Reverse Domain Name Hijacking, in our opinion.
The domain transfer was denied.
Benco Dental Supply Co. v. Pain Management, Inc.
Claim Number: FA2305002043044
PARTIESComplainant is Benco Dental Supply Co. (“Complainant”), represented by Erica Goven, Nebraska, USA. Respondent is Pain Management, Inc. (“Respondent”), represented by Keith A. Wagner, Nebraska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is painless.com, registered with Network Solutions, LLC.
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.
Steven M. Levy, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on May 3, 2023; Forum received payment on May 3, 2023.
On May 4, 2023, Network Solutions, LLC confirmed by e-mail to Forum that the painless.com domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 May 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2023 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@painless.com. Also on May 9, 2023, 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 May 15, 2023.
On May 17, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Benco Dental Supply Co., offers retail services for dental supplies, equipment and medicaments and computer software for ordering such products. Complainant has rights in the trademark PAINLESS through its use in commerce since December 1, 1994 and its two registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,048,240, filed on May 19, 1995 and registered on March 25, 1997). Respondent’s painless.com domain name, registered on February 9, 1996, is virtually identical and confusingly similar to Complainant’s mark because it incorporates the PAINLESS mark in its entirety and only adds the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the painless.com domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent to use the PAINLESS mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services. Instead, the disputed domain name resolves to a parked webpage hosting pay-per-click third-party links including some that lead to dental related businesses.
Respondent registered and uses the painless.com domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Further, Respondent failed to respond to cease and desist communications. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the PAINLESS mark.
B. Respondent
Respondent, Pain Management, Inc. registered the painless.com domain name on February 9, 1996 and, before any notice of the present dispute, used it in connection with a bona fide offering of medical services, specifically interventional pain management. The disputed domain name is not confusingly similar to Complainant’s mark because it is comprised of a common dictionary word. Further, Respondent’s registration of the disputed domain name predates the USPTO registration date of Complainant’s PAINLESS trademark.
Respondent contends that Respondent did not register or use the disputed domain name in bad faith. Respondent does not seek to compete with Complainant or divert users for commercial gain. The Registrar, not Respondent operates the pay-per-click links that appear at the painless.com webpage.
FINDINGS
– Complainant has rights to the PAINLESS trademark and the painless.com domain name is confusingly similar to the mark;
– Complainant has not demonstrated that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services; and
– Complainant has not demonstrated that Respondent knew of the PAINLESS mark at the time that it registered the disputed domain name or that the domain name has been registered and is being used in bad faith.
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.
Identical and/or Confusingly Similar
Complainant asserts rights in the PAINLESS mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Since Complainant provides copies of its USPTO Registration Certificates for the PAINLESS mark, the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).
Complainant further asserts rights in the PAINLESS mark based upon common law. Common law use of a mark may be a valid showing of rights pursuant to Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). However, a demonstration of common law rights in a mark requires a showing the trademark has acquired secondary meaning in the minds of consumers. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”) In demonstrating common law rights, sufficient supporting evidence must be presented and a mere statement in a complaint asserting rights or the presentation of insufficient evidence will not meet a complainant’s burden of proof. Here, as reflected in its USPTO trademark registration, Complainant contends that its first use of the PAINLESS mark was on December 1, 1994, however, it provides no evidence in support of this contention. Complainant submits copies of its USPTO registration certificates and a single, undated screenshot of its own website at https://painless.benco.com. This very limited evidence does not speak to the public perception, reputation, or scope of Complainant’s mark in 1994 or provide sufficient evidence of common law trademark rights at that time. While the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i) based on its USPTO registration, it has not been presented with sufficient evidence to determine whether Complainant also has common law rights.
Next, Complainant argues that Respondent’s painless.com domain name is identical or confusingly similar to Complainant’s PAINLESS mark. The addition of a gTLD typically fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”) Here, the entire second level of the disputed domain name consists of the PAINLESS mark and the domain name only adds the “.com” gTLD. Therefore, the Panel finds that the painless.com domain name is identical or confusingly similar to Complainant’s PAINLESS mark under Policy ¶ 4(a)(i).
While Respondent contends that the painless.com domain name is “made up of a single common dictionary word in the English language” and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel notes that such considerations are not applicable under this first element of the Policy which is rather narrowly crafted and considers only whether a complainant has rights in the asserted mark and whether the disputed domain name is identical or confusingly similar to that mark in terms of its appearance, sound, or meaning. See Mile, Inc. v. Michael Burg, D2010-2011 (WIPO Feb. 7, 2011) (confusing similarity under Policy ¶4(a)(i) “is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression.”) The fact that a disputed domain name may be comprised of a common dictionary word is more appropriately considered under other elements of the Policy. Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Finally, while Respondent argues that its registration of the painless.com domain name predates the registration date of Complainant’s earliest USPTO trademark registration, the Panel notes that is also not applicable under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. The relative timing of a domain name registration and the coming into existence of trademark rights is typically considered under Policy ¶ 4(a)(iii) relating to bad faith. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”)
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights or legitimate interests in the painless.com domain name since Respondent is not commonly known thereby and Complainant has not authorized or licensed to Respondent any rights in its PAINLESS mark. Panels frequently refer to the WHOIS information for a disputed domain name when considering whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the coppertown.com domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). In addition, a lack of authorization to use a complainant’s mark may be relevant in considering this issue. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists ‘Mohamed elkassaby’ as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”) Complainant asserts that it has not licensed or otherwise authorized Respondent to use Complainant’s PAINLESS mark.
In its defense, Respondent contends that it has rights and legitimate interests in the disputed domain name because it makes a bona fide offering of goods and services per Policy ¶ 4(c)(i) by using the disputed domain name in conjunction with the offering of pain management medical services. Here, Respondent contends that Respondent used the disputed domain name in conjunction with a medical practice that is unrelated to Complainant’s business. The Panel notes that the WHOIS record for the painless.com domain name lists the registrant as “Pain Management, Inc.” and Respondent has submitted an archived screenshot for the painless.com website, dated May 18, 2001, displaying the name “Pain Management Consultants, P.C.” listing an address in Omaha, Nebraska, the same city in which Respondent is presently located. This screenshot mentions that “Pain Management Consultants, P.C. specializes in the diagnosis and treatment of acute, chronic, and cancer pain.” While the submitted screenshot does seem to indicate that Respondent was making a bona fide offering of services under the disputed domain name in 2001, the test under Policy ¶ 4(c)(i) looks at a respondent’s use at the time the complaint was filed. See Domain Name Arbitration, 4.02-A.1.a.ii (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Having a right or legitimate interest is assessed as of the time of the filing of the complaint”). As Respondent’s submitted screenshot is dated to 2001 and Respondent does not provide evidence that it’s medical practice continues to exist as of the date on which the Complaint was filed, the Panel must consider whether any more recent and different use is made of the disputed domain name.
On this point, both parties submit undated screenshots of the painless.com website which displays classic pay-per-click content. The Panel has, itself, browsed to this domain name and found a similar style of content so it may be assumed that the submitted screenshots reflect recent website resolutions. In Complainant’s screenshot, the links include those titled “Painless Performance Products”, “Painless Wiring Harness”, and “Dental Dentist”. In Respondent’s screenshot, links appear titled “Chronic Pain Management”, “Pain Diagnosis”, and “Cancer Pain Management”, amongst others, and there is no mention of dentistry or dental products. The Panel’s own browsing attempt also did not reveal any dentistry related links.
Respondent argues that the term “painless” is a common dictionary term and therefore that the similarity between the Complainant’s trademark and the disputed domain name is purely coincidental. An illustrative example of this type of argument is found in the case of Platinum Luxury Auctions LLC v. Sherman L. Ragland, II, FA 1974395 (Forum Dec. 28, 2021), in which the Complainant asserted its LUXURY AUCTION trademark, for real estate auctions, against the domain names luxuryauction.com and luxuryauctions.com which either hosted pay-per-click links or resolved to inactive pages. The Panel noted the descriptive nature of the disputed domain names and found that “there is no indication that Respondent uses, or has ever actively used the domain name to exploit their trademark value in the category of goods and services covered by Complainant’s mark or otherwise.” Id. It went on to find that Respondent has rights or interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii). See also Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the kaleidoscope.com domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes). Here, although there is limited evidence that Respondent uses the painless.com domain name to display certain pay-per-click links relating to Complainant’s field of dentistry, the Panel considers this insufficient to overcome the “preponderance of the evidence” burden which Complainant must meet to prove that Respondent is targeting its trademark. The word “painless” is, in the present context, a descriptive term and Respondent’s name in the WHOIS record, Pain Management, Inc., does bear some relationship to this word. Further, the majority of the pay-per-click links reviewed by the Panel relate to the descriptive meaning of the word “painless” and the hosting of such a website is not, in itself, illegitimate. Airtango AG v. Privacydotlink Customer 2290723 / Gustavo Winchester, D2017-2095 (WIPO Dec. 11, 2017) (“Acquiring domain names simply in order to trade them at a profit or to exploit them for pay-per-click revenue is not, of itself, objectionable in the absence of any targeting of the complainant.”)[i]
Therefore, the Panel finds that, even if Complainant may have made out a prima facie case, this has been rebutted by Respondent. By a preponderance of the evidence, the Panel finds that Complainant has not proven that Respondent fails to use the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i).
Registration and Use in Bad Faith
Complainant argues that Respondent was aware of or at least should have been aware of Complainant’s rights in the PAINLESS mark. Although panels have not generally regarded constructive notice to be sufficient grounds upon which to base knowledge of a mark, it may be so where both parties are subject to a jurisdiction that applies this legal concept, such as the United States of America. See Overview of WIPO Panel Views on Selected UDRP Questions, (“WIPO Overview 3.0) (3d ed. 2017), at paragraph 3.2.2 (“In limited circumstances – notably where the parties are both located in the United States and the complainant has obtained a federal trademark registration predating the relevant domain name registration – panels have been prepared to apply the concept of constructive notice.”) Also see Leite’s Culinaria, Inc. v. Gary Cieara, D2014-0041 (WIPO Feb. 25, 2014) (“under 15 USC §1072, registration of Complainant’s mark constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name.”) However, it is noted that Respondent registered the painless.com domain name prior to the registration date of Complainant’s earliest USPTO trademark registration and even the WIPO Overview 3.0 notes that “[a]pplication of this concept may depend in part on the complainant’s reputation and the strength or distinctiveness of its mark, or facts that corroborate an awareness of the complainant’s mark.” Here, Complainant’s evidence that Respondent was targeting its PAINLESS mark at the time that it registered the painless.com domain name is lacking. Complainant claims that “[f]or almost thirty years, Complainant has utilized Complainant’s PAINLESS Trademarks”, that it “is the largest privately owned, full service distributor of dental supplies, dental equipment, and dental consulting and equipment services provider in the United States”, and that it “has gained a significant presence and has acquired substantial goodwill in connection with Complainant’s PAINLESS Trademarks….” However, Complainant’s evidence consists of copies of its USPTO trademark registration certificates and a single screenshot of its own https://painless.benco.com website. While these submissions may serve as evidence that trademark rights exist, they do not speak to the reputation or scope of Complainant’s mark in the minds of consumers, particularly in 1996 when Respondent registered the disputed domain name. Policy ¶ 4(a)(iii) is stated in the conjunctive (“registered and is being used in bad faith” – emphasis added) and the Panel finds that there is insufficient evidence upon which to conclude that Complainant’s mark was highly distinctive or well-known, or that Respondent knew of or specifically targeted the mark in 1996. Thus, the Panel finds, by a preponderance of evidence, that the disputed domain name was not registered in bad faith.
Further, Complainant asserts that Respondent’s painless.com domain name disrupts its business, diverts consumers, and seeks to trade on the goodwill of Complainant’s mark. Disruption of business and diversion of users and passing oneself off as a complainant through trademark confusion are grounds for a finding of bad faith under Policy ¶¶ 4(b)(iii) and (iv). LTWHP, LLC v. Kristian Faust, FA 2035977 (Forum Apr. 13, 2023) (“using a confusingly similar domain name to disrupt the business of a complainant by passing off as and competing with that complainant is sufficient evidence of bad faith to meet the requirements of Policy ¶ 4(a)(iii).”); Disney Enterprises, Inc. v. swsfiaw / iomkkwwf fezos / bilo sopz / bill Louis, FA 2039880 (Forum May 22, 2023) (“Under Policy ¶ 4(b)(iv), passing off as a complainant is evidence of bad faith registration and use.”) As noted above, there is insufficient evidence of the reputation of Complainant’s PAINLESS trademark and Respondent’s present use of the painless.com domain name appears to be for the descriptive qualities of the word “painless”. As such, the Panel cannot conclude that Respondent’s use of the disputed domain name is in bad faith under Policy¶¶ 4(b)(iii) or (b)(iv).
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the painless.com domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: May 23, 2023
[i] Respondent points out a provision in the end-use license agreement of its Registrar that monetized links may be placed on its domain name’s webpage “if such Domain Name is hosted on an Web.com Domain Name server and does not otherwise resolve to an active Web site…” This does not absolve Respondent of responsibility for the content of its site. As noted in the above language, it has the option to resolve its domain name to an active website and so it is ultimately in control of the domain name’s website content. See, e.g., StudioCanal v. Registration Private, Domains By Proxy, LLC / Sudjam Admin, Sudjam LLC, D2018-0497 (WIPO May 4, 2018) (“it is possible that it is the Registrar (GoDaddy) and not the Respondent who may have placed the parked page linking the disputed domain name to third party websites selling movies and DVDs. In that circumstance, whether the commercial gain from misled Internet users is gained by the Respondent or by the Registrar (or by another third party), it remains that the Respondent controls and cannot (absent some special circumstance) disclaim responsibility for, the content appearing on the website to which the disputed domain name resolves.”)
