screen-shot-2013-05-14-at-1.31.39-pm-150x104On May 1, 2013, a three-member Panel of the National Arbitration Forum (“NAF”) denied a UDRP claim brought on April 1, 2013 by Dr. Daniel Taheri of the LA Laser Center, P.C. (“Complainant”) against an entity listed as EMC2 (“Respondent”) over the domain name <taheridermatology.com>.  This case is of particular interest because the decision was made on the determination that Complainant did not satisfy the first of three requirements for a prima facie case which is unusual.

In order for a Complainant to obtain a disputed domain name in a UDRP proceeding, three requirements must be met: (1) the domain name must be “Identical and/or Confusingly Similar” to the trade or service mark used by Complainant; (2) Respondent cannot have any “Rights or Legitimate Interests” in the domain name; and (3) the domain name must have been “Registered and Used in Bad Faith.”

In this case, Complainant was a practicing dermatologist who claimed to have been using the name TAHERI DERMATOLOGY in connection with his practice since 2002 and that he was the only physician with the surname “Taheri” practicing dermatology. Complainant filed a federal trademark application for TAHERI DERMATOLOGY which is still pending before the USPTO.

Respondent was a former medical malpractice attorney named Mr. Sean Erenstoft who registered the domain name <taheridermatology.com> on January 4, 2007 and had previously brought a number of non-UDRP cases against Complainant. According to both parties, Respondent’s intention in using the disputed domain name was to develop a “gripe site” that would help him gather complaints from Dr. Taheri’s patients and also gather evidence of patent infringement by Complainant. To date, however, the website has no content and thereby no “gripes” against Complainant.

Even so, Respondent unsuccessfully attempted to sell the domain name to Complainant on September 10, 2012 and March 25, 2013 for $11,290.00. Complainant further alleged that bad faith could be inferred by the fact that Respondent owned 321 domain names not related to his business. Despite this seemingly persuasive evidence the Panel did not go into a discussion of any notions of bad faith, which in this case seemed to warrant at least a certain level of suspicion, because it found that the Complainant simply didn’t provide evidence of trademark rights in the TAHERI DERMATOLOGY mark.

The fact that the case turned on the first element is important because in most cases “rights” are almost presumed because the bar for establishing “rights” is low:

“[t]he first element of the UDRP has been found by Panels to serve essentially as a low-threshold, standing requirement; although the UDRP requires trade or service mark rights, it does not impose a high-bar, trademark confusion test as such.”

The Uniform Domain Name Dispute Resolution Process and WIPO, August 2011, Pg 7.

However, the NAF will not simply gloss over this element. Specifically, the Panel noted that even though it is not required for Complainant to have a registered trademark in a disputed domain name, there must at least be sufficient evidence to prove exclusive rights to the name:

“[t]he only evidence submitted of Complainant’s use of the TAHERI DERMATOLOGY mark is at the last page of a brochure where it says ‘Copyright © 2002, Taheri Dermatology’. No relevant evidence, such as length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition has been presented by Complainant. Therefore, the Panel finds that Complainant has not met its burden in showing that TAHERI DERMATOLOGY has become a distinctive identifier associated with Complainant’s goods or services and thereby acquired secondary meaning.”

Thus, because Complainant relied solely on the fact that he was the only practicing dermatologist with his last name, but did not sufficiently provide evidence that he had been using the TAHERI DERMATOLOGY mark in a public way, the Panel ruled against him...