Domain Name - Domain Name Registration - Bad Faith - No Legitimate Interests - Commercial Gain - Offer of Sale - Confusingly Similar - Addition of “the” in domain name inconsequential - Effect of default for non-response - Redirects to competitor’s site.

Complainant is the Massachusetts Medical Society, a not-for-profit corporation. Complainant was established as a professional association of physicians by the Commonwealth of Massachusetts in 1781.  Complainant holds United States registered trademarks in the design and style of The New England Journal of Medicine logo.  Complainant has also provided evidence of its registration of trademarks or pending applications for registered trademarks in the mark THE NEW ENGLAND JOURNAL OF MEDICINE in several countries.  Complainant uses its U.S. trademarks in the logo for its medical publication, and has invested extensive resources to publicize its marks.  Respondent registered newenglandjournalofmedicine.com. 

Held, Name Transferred to Complainant

The domain name registered by Respondent is identical to or confusingly similar to Complainant’s trademark, The New England Journal of Medicine. The article "the" is inconsequential and does not prevent a finding that the names are identical or confusingly similar.

Respondent is not a licensee of Complainant and is not otherwise authorized to use  Complainant’s mark. By failing to submit a Response to the Complaint, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.

Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith." Complainant has presented evidence sufficient to establish bad faith registration and use of the Domain Name by Respondent on two grounds. First, Respondent’s offer to sell Complainant the Domain Name, the listing of the Domain Name "for sale" on the Registrar’s WHOIS database display, and Respondent’s failure to submit evidence documenting out-of-pocket costs in connection with the Domain Name permit an inference that Respondent registered and used the Domain Name with the primary purpose of selling it to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs. 

Second, Complainant has submitted evidence sufficient to show that Respondent, by using a domain name virtually identical to Complainant’s trademark, for a website advertising the sale of medical and health care related publications, intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark. The evidence therefore also shows bad faith use of the Domain Name under Paragraph 4(b)(iv) of the Policy.
 
Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Registration Agreements referred to

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Cases referred to

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Panel Decision referred to

Bennett Coleman & Co. Ltd. V. Steven S. Lalwani and Bennett Coleman & Co. Ltd. V. Long Distance Telephone Company, ICANN Cases Nos. D2000-0014 and 2000-0015.

World Wrestling Federation Entertainment, Inc. v. Michael Bosman, ICANN Case No. D99-0001. 

Parfums Christian Dior v. QTR Corporation, ICANN Case No. D2000-0023.
 

Haviland, Panelist - 

1. The Parties
The Complainant is the Massachusetts Medical Society, a not-for-profit corporation organized under the laws of the Massachusetts, United States of America, with its principal place of business in Waltham, Massachusetts, USA. 
The Respondent is Michael Karle, an individual resident in McAllen, Texas, USA, according to the records of the Registrar.
 
2. The Domain Name and Registrar
The domain name at issue is <newenglandjournalofmedicine.com> (the Domain Name). The registrar with which the Domain Name is registered is Internet Domain Registrars Corp., doing business as Registrars.com (the Registrar or IDRC).
 
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s Complaint by email on April 12, 2000 and in hardcopy on April 14, 2000. On April 17, 2000, the Center sent the Complainant an Acknowledgment of Receipt of the Complaint.

On April 17, 2000, the Center sent via email to the Registrar, IDRC, a Request for Registrar Verification. On April 19, 2000, IDRC transmitted via email to the Center a Registrar Verification Response confirming that the Domain Name is registered with IDRC and that the Respondent is the current registrant of the Domain Name as well as the administrative, billing and technical contact’ IDRC’s Response set forth contact information for the Respondent, including email and mailing addresses.

The Center completed a Formalities Compliance Review and verified that the Complaint satisfied the formal requirements of the ICANN Uniform Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Dispute Resolution Policy (the Uniform Rules), and the Supplemental Rules for Uniform Domain Dispute Resolution Policy (the WIPO Supplemental Rules). Complainant made the required payment to the Center. Upon independent review, the Administrative Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Uniform Rules, and the Supplemental Rules.
On April 20, 2000, the Center transmitted to the parties, with copies to IDRC and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of May 9, 2000, by which the Respondent could file a Response to the Complaint. This Notification was sent to the Respondent via post/courier to the address provided by the Registrar, 2208 Camellia, McAllen, Texas 78501, United States, and via email to the email address provided by the Registrar, <[email protected]>. The Center also sent the Notification to the email address <[email protected]>, for which the Center received a notice of undeliverable email on April 20, 2000. The Administrative Panel has reviewed the file records of communications to Respondent and finds that the Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
No Response having been received from Respondent by May 9, 2000, the Center then sent the Respondent on May 11, 2000, a Notification of Respondent Default, via the email address provided by the Registrar, advising the Respondent that the Administrative Panel would be appointed and advised of the default. A copy was transmitted to the Complainant.

In view of the Complainant’s designation of a single panelist (but without prejudice to any election to be made by the Respondent), the Center invited Dana Haviland to serve as the panelist. On May 29, 2000, after having received Ms. Haviland’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties via email a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Dana Haviland was formally appointed as the sole panelist. The Projected Decision Date was June 11, 2000. The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules. The date for submission of the draft Decision to the Center was subsequently extended until June 15, 2000.

In view of the default of the Respondent, the Administrative Panel shall issue its Decision based on the Complaint, the file documents, the evidence presented, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from the Respondent.
 
4. Factual Background
The Complainant, Massachusetts Medical Society, was established as a professional association of physicians by the Commonwealth of Massachusetts in 1781. Complaint, page 5, para. 13. The Complainant has been affiliated with The New England Journal of Medicine since the early nineteenth century and has owned and published The New England Journal of Medicine, which it characterizes as "the premier medical publication in the world," for over 70 years. (Id.)

The Complainant holds United States registered trademarks in the design and style of The New England Journal of Medicine logo. Complaint, Annex D. The Complainant has also provided evidence of its registration of trademarks or pending applications for registered trademarks in the mark THE NEW ENGLAND JOURNAL OF MEDICINE in thirteen countries and the European Community. Complaint, Annex E. The Complainant uses its U.S. trademarks in the logo for its medical publication, and has invested extensive resources to publicize its marks, using them "widely in a manner designed to insure ...identification in the minds of consumers with The New England Journal of Medicine and its extremely high standards and reputation." Complaint, page 6, para.17.

On February 27, 2000, the Respondent registered the domain name <newenglandjournalofmedicine.com> with IDRC. Complaint, Annex A. The website for the <newenglandjournalofmedicine.com> domain name identifies itself as <physiciansdeskreference.com> and purports to sell medical and health care publications, including a book, Physicians Desk Reference 2000. Complaint, Annex G. 
The website for the domain name <newenglandjournalofmedicine.com> is identical to the website for <physiciansdeskreference.com>. Complaint, Annex I. Respondent is the administrative, technical and billing contact for a Big Value, the registrant of both the <physiciansdeskreference.com> website and a website at the domain name <abigvalue.com>, which provides casino and sports wagering services and is connected with <cybersportsbook.com>, another Internet gambling services provider. Complaint, Annexes H, J and K. The homepage of the <newenglandjournalofmedicine.com> website provides three links to <cybersportsbook.com>. Complaint, Annex G.

The Complainant demanded that the Respondent ceases and desists from use of the Domain Name. The Respondent then offered to sell the Domain Name to the Complainant for $10,000. Complaint, page 8, para. 25 and Annex L. The IDRC Whoops database record for the Domain Name indicates "Domain for Sale" next to the name of the registrant, Respondent Michael Karle. Complaint, Annex A. 
 
5. Parties’ Contentions
The Complainant contends that the Domain Name registered by the Respondent is confusingly similar to the trademarks registered and used by Complainant, differing only in the omission of the word "the". Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent has registered and is using the Domain Name in bad faith.

The Respondent has not submitted any Response contesting the allegations of the Complaint.
 
6. Discussion and Findings
Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in Paragraph 4(a) of the Policy:
- that 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
- that the respondent has no rights or legitimate interests in respect of the domain name; and 
- that the domain name has been registered and is being used in bad faith.
Under Paragraph 15 (a) of the Uniform Rules, the Panel is to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Uniform Rules and "any rules and principles of law that it deems applicable." 

(a) Identity or confusing similarity of domain name and trademark
The domain name <newenglandjournalofmedicine.com.> registered by the Respondent is identical or confusingly similar to Complainant’s trademark, The New England Journal of Medicine. The article "the" is inconsequential and does not prevent a finding that the names are identical or confusingly similar. See Bennett Coleman & Co. Ltd. V. Steven S. Lalwani and Bennett Coleman & Co. Ltd. V. Long Distance Telephone Company, ICANN Cases Nos. D2000-0014 and 2000-0015 (domain names that differed only by the incorporation of the definite article "the" at the beginning of the domain name found to be ‘exactly the same’ as the complainant’s marks).

(b) No legitimate interest in domain name
Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainant’s mark. Complaint, page 9. By failing to submit a Response to the Complaint, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.

(c)  Bad faith registration and use of the domain name
Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith":
(i)  circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii)  you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your website or location."

The Panel finds that the Complainant has presented evidence sufficient to establish bad faith registration and use of the Domain Name by Respondent on two grounds. First, the Respondent’s offer to sell the Complainant the Domain Name for $10,000, the listing of the Domain Name "for sale" on the Registrar’s WHOIS database display, and Respondent’s failure to submit evidence documenting out-of-pocket costs in any amount in connection with the Domain Name permit an inference that Respondent registered and used the Domain Name with the primary purpose of selling it to the Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs. This evidence shows bad faith registration and use of the Domain Dame under Paragraph 4(b) (i) of the Policy. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, ICANN Case No. D99-0001 (offer to sell domain name for valuable consideration in excess of any out-of-pocket costs directly related to the domain name constitutes bad faith use of the name); Parfums Christian Dior v. QTR Corporation, ICANN Case No. D2000-0023 (listing of domain name for sale in WHOIS record is evidence of bad faith).

Second, the Complainant has submitted evidence sufficient to show that the Respondent, by using a domain name virtually identical to the Complainant’s well known medical journal trademark, for a website advertising the sale of medical and health care related publications, intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his web site or the products offered. The evidence therefore also shows bad faith use of the Domain Name under Paragraph 4(b)(iv) of the Policy 1. 
 
7. Decision
For all of the foregoing reasons, the Panel decides that the Domain Name registered by Respondent is identical or confusingly similar to the trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent has registered and used the Domain Name in bad faith. The Panel therefore requires, pursuant to Paragraph 4(i) of the Policy, that the registration of the domain name <newenglandjournalofmedicine.com> be transferred to the Complainant.
  Dana Haviland
Presiding Panelist
Dated: June 15, 2000

Footnotes:
1. The evidence also indicates that the <newenglandjournalofmedicine.com> website is being used for commercial gain through advertising links to an online gambling website, but the Panelist confesses to total bafflement as to the marketing rationale for this linkage.