[Indexed as: Massachusetts Medical Society v Michael Karle]
[Indexed as: NEWENGLANDJOURNALOFMEDICINE.COM]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0282
Commenced: 12 April 2000
Judgment: 15 June 2000
Presiding Panelist: Dana Haviland
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 competitors 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 Complainants 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 Complainants 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, Respondents offer to sell Complainant the Domain Name, the listing of the Domain Name "for sale" on the Registrars WHOIS database display, and Respondents 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 Respondents out-of-pocket costs.
Second, Complainant has submitted evidence sufficient to show that
Respondent, by using a domain name virtually identical to Complainants
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 Complainants 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
Complainants 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 IDRCs 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 Complainants 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. Havilands 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 Complainants 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 complainants marks).
(b) No legitimate interest in domain name
Respondent is not a licensee of the Complainant and is not otherwise
authorized to use the Complainants 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 Complainants
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 Respondents offer to sell the Complainant the Domain Name for $10,000, the listing of the Domain Name "for sale" on the Registrars WHOIS database display, and Respondents 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 Respondents 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 Complainants
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 Complainants 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.
Domain Name Transferred